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 | 88148342 |
LAW OFFICE ASSIGNED | LAW OFFICE 125 |
MARK SECTION | |
MARK | http://uspto.report/TM/88148342/mark.png |
LITERAL ELEMENT | VAPORSEAL |
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) | |
Section 2(d) Refusal Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3830172 (the Cited Registration). The Cited Registration is owned by STO SE & CO. KGAA (Registrant). Applicant Sto Corp. is a wholly owned subsidiary of Registrant. According to TMEP §1201.07(b)(i), “if either the applicant or the registrant owns all of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source, and no likelihood of confusion. This would apply… to a corporation and a wholly owned subsidiary… In this circumstance, additional representations or declarations should generally not be required, absent contradictory evidence.” Since Registrant owns 100% of Applicant, there is unity of control, and the entities constitute a single source for trademark purposes. Accordingly, applicant requests that the examiner withdraw the Section 2(d) refusal. Section 2(e)(1) Refusal In response to the Section 2(e)(1) refusal, applicant herein submits a Declaration of Acquired Distinctiveness under Section 2(f). In view of the submitted declaration, applicant requests that the examiner withdraw the Section 2(e)(1) refusal. |
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ADDITIONAL STATEMENTS SECTION | |
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /Erica L. Tritt/ |
SIGNATORY'S NAME | Erica L. Tritt |
SIGNATORY'S POSITION | Attorney of Record, Georgia Bar Member |
SIGNATORY'S PHONE NUMBER | 404-252-0900 |
DATE SIGNED | 01/30/2019 |
RESPONSE SIGNATURE | /Erica L. Tritt/ |
SIGNATORY'S NAME | Erica L. Tritt |
SIGNATORY'S POSITION | Attorney of Record, Georgia Bar Member |
SIGNATORY'S PHONE NUMBER | 404-252-0900 |
DATE SIGNED | 01/30/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Jan 30 16:49:24 EST 2019 |
TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0190130164924299757-88148 342-620e7fac83131ee638ce6 9f4b66affd6d97289bc0d6aed 838aa29a2e6baab562b19-N/A -N/A-20190130164634292797 |
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) |
Section 2(d) Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3830172 (the Cited Registration). The Cited Registration is owned by STO SE & CO. KGAA (Registrant). Applicant Sto Corp. is a wholly owned subsidiary of Registrant. According to TMEP §1201.07(b)(i), “if either the applicant or the registrant owns all of the other entity, and there is no contradictory evidence, then the examining attorney should conclude that there is unity of control, a single source, and no likelihood of confusion. This would apply… to a corporation and a wholly owned subsidiary… In this circumstance, additional representations or declarations should generally not be required, absent contradictory evidence.”
Since Registrant owns 100% of Applicant, there is unity of control, and the entities constitute a single source for trademark purposes. Accordingly, applicant requests that the examiner withdraw the Section 2(d) refusal.
Section 2(e)(1) Refusal
In response to the Section 2(e)(1) refusal, applicant herein submits a Declaration of Acquired Distinctiveness under Section 2(f). In view of the submitted declaration, applicant requests that the examiner withdraw the Section 2(e)(1) refusal.
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.