To: | LYONS, MARK JACK (mjl.matrix@yahoo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88287380 - SOLAR SHUTTERS - N/A |
Sent: | 5/20/2019 11:17:18 AM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88287380
MARK: SOLAR SHUTTERS
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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: LYONS, MARK JACK
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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: 5/20/2019
THIS IS A FINAL ACTION.
This Final Office action is in response to applicant’s communication filed on April 25, 2019.
In a previous Office action dated April 24, 2019, the trademark examining attorney required applicant to satisfy the following requirements: amend identification to bring it within the scope of the provided foreign registration certificate clarify the mark description and color claim, and disclaim descriptive wording.
Based on applicant’s response, the trademark examining attorney notes that the following requirement have been satisfied: disclaim descriptive wording. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION
In this case, the U.S. application identifies the particular goods as follows: “Solar panels for production of electricity; Solar panels for the production of electricity; Solar batteries; Solar cells; Solar wafers; Solar-powered battery chargers; Solar-powered rechargeable batteries; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic solar hybrid modules; Apparatus for converting electronic radiation to electrical energy, namely, photovoltaic solar modules; Automatic solar tracking sensors; Crystalline silicon solar cells; Photovoltaic installation apparatus, namely, solar modules for production of electricity, solar thermal and electric receivers, tracking mechanisms and concentrating optics, and control algorithms; Programmable controllers and actuators that track the sun enabling concentrating optics to maximize solar energy input; Silicon solar cell material for electricity generation incorporated into pavement materials; Thin-film solar (TFS), vertical axis wind turbine (VAWT) and Hybrid TFS VAWT off-grid power and deep cycle battery storage systems composed of batteries, charge controllers and inverters with integrated LED bulbs and LED light fixtures”
However, the foreign registration identifies the following goods: “Solar panels for production of electricity; Solar panels for the production of electricity”
These goods in the U.S. application exceed the scope of the goods in the foreign registration because the additional goods in the U.S. application are merely related to the goods in the foreign registration certificate, though not encompassed by them . Thus, these goods in the U.S. application are not acceptable and may not be amended to correspond with the goods in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application to correspond to the goods in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
AMENDED MARK DESCRIPTION AND COLOR CLAIM
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Specifically, applicant’s description does not describe the black circles on the sun’s rays, nor the nature of the color white in the mark. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq. As such, applicant must either describe the nature of the color white in the mark, or, if the white portion of the mark is intended to indicate background, outlining, shading, and/or transparent areas, applicant must specify that as well. TMEP §807.07(d); see 37 C.F.R. §2.61(b).
If the color white is intended to be a part of the mark, the following description and color claim are suggested, if accurate:
The mark consists of an orange sun design in the top left hand corner, the rays of the sun are shaped as shutter blades and feature open black circles at the center of each blade, next to the sun design are the words “SOLAR SHUTTERS” in black stylized font, the capital letters have horizontal stripes in the letters so that the letters appear to have clear horizontal gaps in each letter. All of the aforementioned appears before a white background.
The color(s) black, white, and orange is/are claimed as a feature of the mark.
In the alternative, if the color white is intended to represented background, outlining, shading, and/or transparent areas, the following description is suggested, if accurate:
The mark consists of an orange sun design in the top left hand corner, the rays of the sun are shaped as shutter blades and feature open black circles at the center of each blade, next to the sun design are the words “SOLAR SHUTTERS” in black stylized font, the capital letters have horizontal stripes in the letters so that the letters appear to have clear horizontal gaps in each letter. The color white represents background, outlining, shading, and/or transparent, and is not claimed as a feature of the mark.
The color(s) black and orange is/are claimed as a feature of the mark.
RESPONSE OPTIONS
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
/Justin Berlin/
Justin Berlin
Trademark Examining Attorney
Law Office 125
(571) 272-5544
justin.berlin@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.