To: | DIGILENS INC. (tess@kppb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88266351 - CRYSTAL - D26-05964 |
Sent: | 4/5/2019 5:18:30 PM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88266351
MARK: CRYSTAL
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: DIGILENS INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 4/5/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Of the Office Records
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Applicant’s mark and the Registered Marks are Similar
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Applicant's mark is “CRYSTAL”. The registered marks are “CRISTAL LASER” and design of crystal and laser, U.S. Registration No. 5499779, “CRYSTAL ADVANCED”, U.S. Registration No. 5403823, “SUMI CRYSTAL”, U.S. Registration No. 4322642, “SYNERY CRYSTAL”, U.S. Registration No. 3686441 and “CRYSTAL PHOTONICS”, U.S. Registration No. 2667984, respectively. Applicant’s mark is similar in appearance and sound to the registered marks in that they all share the common term CRYSTAL or phonetically identical term CRISTAL.
Accordingly, the marks are confusingly similar.
The Goods Are Related
Applicant’s goods are identified as “optical components, namely, holographic optical elements for shaping and transmitting light in a variety of applications; lenses, namely, holographic lenses and optical lenses, excluding contact lenses for vision correction; virtual reality goggles and glasses; augmented reality goggles and glasses; reference designs for virtual reality goggles and glasses; reference designs for augmented reality goggles and glasses.”
The goods for Registration No. 5499779 are identified as “Optical glasses; optical frequency converter; optical, electro-optical, acousto-optical apparatus, namely, laser optical components in the nature of laser diodes, laser crystals, and nonlinear laser crystals; optical, electro-optical, acousto-optical apparatus, namely, nonlinear optic crystals for frequency conversion.”
The goods for Registration No. 5403823 are identified as “Photovoltaic apparatus and installations for generating solar electricity; Photovoltaic plates, modules and cells; electric inverters; electric accumulators; electric batteries; electric collectors for conducting, switching, and transforming electricity; electric condensers, optical condensers, electrical connectors, electrical connection boxes, connection boards, electric connections, electric contacts, electric converters, current rectifiers; Computer monitors; Computer programs for the management and the functioning of photovoltaic apparatus; Glass coated with a conducting deposit, namely, glass covered with an electrical conductor; special glass for photovoltaic cells, namely, glass covered with an electrical conductor that ensures thermal protection, mechanical protection, and electrical insulation.”
The goods for Registration No. 4322642 are identified as “Laboratory instruments, namely, microtome knives; laboratory instruments, namely, compression cells for Fourier transform infrared (FT-IR) spectrophotometers; laboratory equipment in the nature of diamond anvils using ultrahigh pressure for scientific research in laboratories; measurement apparatus, namely, pin gauges, plug gauges; metal hardness testing machines; electronic measuring instruments, namely, indenters for hardness testing machines for the purpose of measuring mechanical properties of metallic structures and samples, namely, structural integrity, flow properties and fracture toughness; radiation measuring apparatus and instruments; laser equipment for non-medical purposes; heat sinks for conducting heat away from electrical components; optical inspection apparatus for industrial use; lasers for industrial use; optical lenses; optical filters; scientific and technical apparatus, namely, optical mirrors; beam splitters, namely, signal splitters for electronic apparatus; optical windows; optical apparatus and instruments, namely, beam homogenizers; optical apparatus and instruments, namely, laser beam expanders; laser beam scanners.”
The goods for Registration No. 3686441 are identified as “Optical lenses.”
The goods for Registration No. 2667984 are identified as “Electrical and scientific apparatus and materials, namely, optical crystals, optical devices, solid state lasers, semiconductor lasers, optical filters, surface acoustic wave devices, and nonlinear optical devices, all for use with lasers..”
The applicant's optical goods are closely related to the registrant's various optical goods because the goods overlap in uses or the applicant’s goods are so indefinitely identified the goods could encompass the narrower identifications in the registered marks. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application use(s) broad wording to describe “optical components, namely, holographic optical elements for shaping and transmitting light in a variety of applications; lenses, namely, holographic lenses and optical lenses, excluding contact lenses for vision correction; reference designs for virtual reality goggles and glasses; reference designs for augmented reality goggles and glasses”, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow goods. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Thus, upon encountering the CRYSTAL mark used on “optical components, namely, holographic optical elements for shaping and transmitting light in a variety of applications; lenses, namely, holographic lenses and optical lenses, excluding contact lenses for vision correction; virtual reality goggles and glasses; augmented reality goggles and glasses; reference designs for virtual reality goggles and glasses; reference designs for augmented reality goggles and glasses” and the various registered marks used on the respective goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Accordingly, registration is refused under Trademark Act Section 2 (d) based on a likelihood of confusion.
Prior Pending Applications
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must address the following additional grounds for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose, function of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
Specifically, applicant seeks registration of “CRYSTAL” for “optical components, namely, holographic optical elements for shaping and transmitting light in a variety of applications; lenses, namely, holographic lenses and optical lenses, excluding contact lenses for vision correction; virtual reality goggles and glasses; augmented reality goggles and glasses; reference designs for virtual reality goggles and glasses; reference designs for augmented reality goggles and glasses.” The term “CRYSTAL” is defined as a “A piece of a homogeneous solid substance having a natural geometrically regular form with symmetrically arranged plane faces.” See the attached definition.
The attached website evidence (emphasis added) from a Google.com search indicates that in the optics industry, CRYSTAL refers to and describes an ingredient in optical goods:
1. “What do pilots, train operators, and mountain climbers have in common? All three were some of the groups that Persol was problem solving for when they created their first specialty lenses in the 1920s. Persol invented lenses to meet the specific needs of these disparate groups who all face different optical challenges while on the job. Their trademark yellow-brown lenses, made from crystal, were used in the famous Protector glasses - adopted by the Swiss military and protected by international patents. These special lenses, crafted from pure silica, offered previously unseen sun protection. By the 60's American astronauts were wearing Persol, and the innovative, durable shades were accompanying famous explorers and adventurers on their treks, keeping their eyes safe even in the most extreme climates and conditions.”
2. “Hyperion Optics provides optical components, including laser crystals for a wide range of laser, semiconductor, military, space and fiber optics applications. We work on high power visible and UV light generation by delivering high quality nonlinear products reaching our customer specifications.”
3. “Sapphire crystal (Al2O3) is an excellent substrate for a range of rugged applications.
It has high transmission from 150nm up to around 5µm therefore ideal for UV, Visible and IR applications. Sapphire lenses have excellent mechanical strength and hardness. With sapphire having superb thermal and chemical resistance and being scratch resistant, sapphire is a perfect choice for lens applications. Sapphire is inert and resistant to attack from most processing environments, such as hydrofluoric acid.
We supply a range of sapphire lens solutions and offer plano convex, biconvex and concave sapphire lens solutions. Our sapphire lenses can also be antireflective coated to increase efficiency in UV and IR applications. Sapphire grades we offer are Random, C-Cut, Z-Cut and fluorescence free sapphire.”
Therefore, the proposed mark merely describes ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Possibly Generic
Applicant must address the following requirements.
Identification of Goods –Indefinite Wording
International Class 009: “optical components, namely, holographic optical elements for shaping and transmitting light in a variety of applications; lenses, namely, holographic lenses and optical lenses, excluding contact lenses for vision correction; virtual reality goggles and glasses; augmented reality goggles and glasses; reference designs for virtual reality goggles and glasses; reference designs for augmented reality goggles and glasses”
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).
Applicant may change this wording to following if accurate;
International Class 009: “Optical components, namely, holographic optical elements, namely, {specify} for shaping and transmitting light for {specify fields of use}; lenses, namely, holographic lenses and optical lenses for {specify fields of use}, excluding contact lenses for vision correction; virtual reality goggles and glasses; augmented reality goggles and glasses; reference designs comprising virtual reality goggles and glasses for assisting product developers to design new virtual reality goggles and glasses products; reference designs comprising augmented reality goggles and glasses for assisting product developers to design new augmented reality goggles and glasses products”
See TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Response Requirements
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Anthony Rinker/
Examinng Attorney
Law Office 102
U.S. Trademark Office
Ph. 571-272-5491
anthony.rinker@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.