To: | Oakley, Inc. (karen.gaunt@dinsmore.com) |
Subject: | U.S. Trademark Application Serial No. 88404858 - OPERAM OPTICA - 114805-310 |
Sent: | July 09, 2019 07:29:55 AM |
Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88404858
Mark: OPERAM OPTICA
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Correspondence Address: 255 EAST FIFTH STREET, SUITE 1900
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Applicant: Oakley, Inc.
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Reference/Docket No. 114805-310
Correspondence Email Address: |
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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: July 09, 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 RESULTS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes the purpose, subject or use of applicant’s goods featured in the services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
In this case, the applicant’s mark is OPERAM OPTICA for “Retail, wholesale and distributorship services; sales promotional and marketing services; import and export services; buying and selling services; selection and procurement of goods; provision of business information; all the aforesaid services in respect of cleaning and polishing preparations for use with eyewear, spectacles and contact lenses, solutions for contact lenses and eye wash, scientific and optical apparatus and instruments and parts, spectacle glass, frames and cases, spectacles, contact lenses and containers for contact lenses, eye glasses and cases, chains, cords and frames thereof, eye pieces and instruments containing eye pieces, eye shades, optical lanterns, optical glass, lens hoods, lenses, magnifying glasses, optical fibres, pince-nez and cases, chains, cords and mountings thereof, surgical and medical apparatus and instruments, wearable devices”
The English translation of OPERAM OPTICA is optic surgery (See attached) and the applicant’s services feature products such as optical fibres and surgical and medical apparatuses.
See the attached 3rd party evidence of fiber optic surgery instruments/supplies: http://www.alibaba.com/showroom/fiber-optic-surgery.html
http://www.surgicalinstruments.com/specialty-scopes/fiber-optic-surgical-cables
Thus, the evidence establishes that the applicant’s services feature instruments and tools used in optic surgery.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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, the mark fails to create a new or unique meaning.
Based on the above, the mark is refused registration 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. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
AMENDMENT TO SUPPLEMENTAL REGISTER NOT PERMITTED
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified to identify the nature of the services. For example, “buying and selling” identifies “arranging of buying and selling contracts for third parties” in Class 35 and “Business brokerage services and related consulting pertaining to procurement, buying, selling and tendering information and opportunities” in Class 36. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may adopt the following wording, if accurate:
Class 35 – Retail and wholesale store and distributorship
services featuring cleaning and polishing preparations for use with eyewear, spectacles and contact lenses, solutions for contact lenses and eye wash, scientific and optical
apparatus and instruments and parts, spectacle glass, frames and cases, spectacles, contact lenses and containers for contact lenses, eye glasses and cases, chains, cords and frames thereof, eye
pieces and instruments containing eye pieces, eye shades, optical lanterns, optical glass, lens hoods, lenses, magnifying glasses, optical fibres, pince-nez and cases, chains, cords and mountings
thereof, surgical and medical apparatus and instruments, wearable devices; sales promotional promotion for others and marketing services; import and export
services agencies; [clarify “buying and selling services” e.g., Providing information pertaining to procurement, buying, selling and tendering information and opportunities relating to goods, services via
computer]; [clarify “selection and procurement of goods” e.g.,
“procurement, namely, purchasing {specify goods or services, e.g., optical surgical and medical apparatuses and instruments} for others”];
provision of business information; all the aforesaid services in respect of featuring cleaning and polishing preparations for use with eyewear, spectacles and contact
lenses, solutions for contact lenses and eye wash, scientific and optical apparatus and instruments and parts, spectacle glass, frames and cases, spectacles, contact lenses and containers for contact
lenses, eye glasses and cases, chains, cords and frames thereof, eye pieces and instruments containing eye pieces, eye shades, optical lanterns, optical glass, lens hoods, lenses, magnifying glasses,
optical fibres, pince-nez and cases, chains, cords and mountings thereof, surgical and medical apparatus and instruments, wearable devices
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
Applicant must list the goods and/or services by international class. TMEP §§801.01(b), 1403.01.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ENGLISH TRANSLATION REQUIRED
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
How to respond. Click to file a response to this nonfinal Office action
/Andrea D. Saunders/
Trademark Attorney
Law Office 117
571-270-3856
Andrea.Saunders@uspto.gov
RESPONSE GUIDANCE