To: | VANESSA RESEARCH, INC. (dilworthip@dilworthip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88350585 - SOLAWARE - 301-010US |
Sent: | 6/7/2019 9:43:36 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88350585
Mark: SOLAWARE
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Correspondence Address: |
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Applicant: VANESSA RESEARCH, INC.
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Reference/Docket No. 301-010US
Correspondence Email Address: |
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PRIORITY ACTION
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: 6/7/2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On June 6, 2019, the examining attorney and Frederick Spaeth discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Refusal – Failure to Function as a Trademark
The applied-for mark, as shown on the specimen, does not function as a trademark because it appears on the right portion of the sign as part of the phrase “SOLAWARE index,” which is directly above a box displaying the time “45 MINUTES.” The left portion of the sign features a UV index with the “moderate” level illuminated. Thus, consumers encountering the applied-for mark appearing on the specimen would perceive it as merely identifying, or referring to, one of the two indices displayed on the sign, i.e., the time index shown below the mark, rather than as a source identifier for the sign itself.
Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)). A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods. See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.
RESPONSE OPTIONS
Submitting a substitute specimen: Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a trademark for the goods in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, applicant should (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, do the following for each relevant class for which a substitute specimen is being submitted: (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement, “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe what the specimen consists of; and (5) select the following statement: “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]. Note: When submitting a verified substitute specimen, the TEAS online response form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Amending to Section 1(b): If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will likely issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
To amend to Section 1(b) online using the TEAS response form, applicant should (1) answer “Yes” to form wizard question #2, and then, after proceeding to the next page in the form, do the following for each relevant class for which the basis is being amended: (2) under “Classification and Listing of Goods/Services/Collective Membership Organization,” select the following statement: “Check here to modify the current classification number; listing of goods/services; dates of use; and/or filing basis; or to submit a substitute specimen or foreign registration certificate. If not checked, the changes will be ignored.”; (3) under “Filing Basis Section 1(a),” uncheck the box for “Filing Basis Section 1(a)”and delete the information appearing in the Date of First Use of Mark Anywhere and Date of First Use of Mark in Commerce textboxes; and (4) check the box for “Filing Basis Section 1(b).” Note: When amending to Section 1(b), the TEAS online response form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
IDENTIFICATION OF GOODS
Applicant’s goods are identified as “Display unit for providing information about the effect of sunlight on skin” in International Class 5.
ID Manual Online
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.
How to respond. Click to file a response to this nonfinal Office action.
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.
/Amy L. Kertgate/
Examining Attorney
Law Office 113
Tel: (571) 272-1943
Email: amy.kertgate@uspto.gov
RESPONSE GUIDANCE