| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87396901 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87396901/mark.png |
| LITERAL ELEMENT | PREMIER |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
1. Regarding the refusal under Section 2(d), Applicant respectfully traverses in view of the following. Comparison of Marks: Applicant respectfully submits that the marks are distinct as the spelling of the marks is different. Applicant further submits that the different spelling implemented by the marks cited by the Examiner and the use of the spelling “Premiere” in the context of hot tubs suggests that these marks are not the same. Comparison of Goods: Applicant has amended the Identification of Goods to more specifically relate the descriptions to use of heaters, and further describe saunas that use heaters, such as infrared heaters. In view of the amendments, Applicant respectfully submits that potential similarity between Applicant’s marks and the marks cited by the Examiner has been removed as the description focuses on heat treatment using heaters and infrared heating modalities, and is not related to hot tubs. 2. Regarding the refusal under Section 2(e)(1), Applicant respectfully submits that Applicant’s mark is distinct and is not a descriptive mark. Applicant respectfully submits that Applicant’s mark does not immediately convey specific knowledge or information about particular features or characteristics of saunas as it is not immediately apparent what characteristics “Premier” would be describing. To the extent that information is conveyed, Applicant respectfully submits that such information is suggested, and Applicant’s mark may be interpreted as a suggestive mark. Applicant further notes that while there may be a thin line of distinction between a suggestive and a merely descriptive term, any doubts regarding whether a mark is suggestive, as opposed to merely descriptive, are to be resolved in favor of the applicant, and more specifically, in favor of a finding of suggestiveness and registrability. See In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1986). 3. Applicant has submitted additional specimens which illustrate the mark “PREMIER” in use in commerce in connection with goods and/or services. As illustrated in the specimens, the mark “PREMIER” appears on goods being sold commercially and on display on a floor model. Accordingly, Applicant respectfully submits that use has been demonstrated, and registration is respectfully requested. |
|
| GOODS AND/OR SERVICES SECTION (011)(current) | |
| INTERNATIONAL CLASS | 011 |
| DESCRIPTION | Saunas; heaters associated with saunas |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/28/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 02/28/2011 |
| GOODS AND/OR SERVICES SECTION (011)(proposed) | |
| INTERNATIONAL CLASS | 011 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Saunas utilizing heaters, such as infrared heaters associated with saunas. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/28/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 02/28/2011 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\873\969\87396901\xml5\ ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT 17\873\969\87396901\xml5\ ROA0003.JPG | |
| SPECIMEN DESCRIPTION | The evidence submitted includes two specimens that show the mark ?PREMIER? appearing on a sauna on display as a floor model. The first specimen shows the mark ?PREMIER? as it appears on a control panel of the sauna. The second specimen shows a more zoomed out version of the sauna to provide additional context. |
| GOODS AND/OR SERVICES SECTION (035)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Retail store and online retail store services for saunas and associated accessories, as well as heaters such as infrared heaters used with saunas | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/28/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 02/28/2011 |
| GOODS AND/OR SERVICES SECTION (035)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Retail store and online retail store for saunas utilizing heaters, such as infrared heaters. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/28/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 02/28/2011 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\873\969\87396901\xml5\ ROA0004.JPG |
| \\TICRS\EXPORT17\IMAGEOUT 17\873\969\87396901\xml5\ ROA0005.JPG | |
| SPECIMEN DESCRIPTION | The evidence submitted includes two specimens that show the mark ?PREMIER? appearing on a sauna on display as a floor model. The first specimen shows the mark ?PREMIER? as it appears on a control panel of the sauna. The second specimen shows a more zoomed out version of the sauna to provide additional context. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Nirav Thakor/ |
| SIGNATORY'S NAME | Nirav Thakor |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| SIGNATORY'S PHONE NUMBER | 510-900-9501 |
| DATE SIGNED | 12/27/2017 |
| RESPONSE SIGNATURE | /Nirav Thakor/ |
| SIGNATORY'S NAME | Nirav Thakor |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| SIGNATORY'S PHONE NUMBER | 510-900-9501 |
| DATE SIGNED | 12/27/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 27 22:33:22 EST 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0171227223322570661-87396 901-510eb022d09a3e8dbd807 b18dfe0beb512625892e48745 b47577438ba6d628-N/A-N/A- 20171227211245169131 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
1. Regarding the refusal under Section 2(d), Applicant respectfully traverses in view of the following.
Comparison of Marks:
Applicant respectfully submits that the marks are distinct as the spelling of the marks is different. Applicant further submits that the different spelling implemented by the marks cited by the Examiner and the use of the spelling “Premiere” in the context of hot tubs suggests that these marks are not the same.
Comparison of Goods:
Applicant has amended the Identification of Goods to more specifically relate the descriptions to use of heaters, and further describe saunas that use heaters, such as infrared heaters. In view of the amendments, Applicant respectfully submits that potential similarity between Applicant’s marks and the marks cited by the Examiner has been removed as the description focuses on heat treatment using heaters and infrared heating modalities, and is not related to hot tubs.
2. Regarding the refusal under Section 2(e)(1), Applicant respectfully submits that Applicant’s mark is distinct and is not a descriptive mark. Applicant respectfully submits that Applicant’s mark does not immediately convey specific knowledge or information about particular features or characteristics of saunas as it is not immediately apparent what characteristics “Premier” would be describing. To the extent that information is conveyed, Applicant respectfully submits that such information is suggested, and Applicant’s mark may be interpreted as a suggestive mark. Applicant further notes that while there may be a thin line of distinction between a suggestive and a merely descriptive term, any doubts regarding whether a mark is suggestive, as opposed to merely descriptive, are to be resolved in favor of the applicant, and more specifically, in favor of a finding of suggestiveness and registrability. See In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1986).
3. Applicant has submitted additional specimens which illustrate the mark “PREMIER” in use in commerce in connection with goods and/or services. As illustrated in the specimens, the mark “PREMIER” appears on goods being sold commercially and on display on a floor model. Accordingly, Applicant respectfully submits that use has been demonstrated, and registration is respectfully requested.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
