To: | Solstice E-comm LLC (prsak@aya.yale.edu) |
Subject: | U.S. Trademark Application Serial No. 90179607 - SOLSTICE - N/A |
Sent: | February 03, 2021 07:55:00 AM |
Sent As: | ecom113@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90179607
Mark: SOLSTICE
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Correspondence Address: LAW OFFICES OF PHILIP A KANTOR PC 1781 VILLAGE CENTER CIR STE 120
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Applicant: Solstice E-comm LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: February 03, 2021
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.
The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In regard to applicant’s “optical services” only, registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2404845 and 3396949. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations. Applicant’s consent agreement with registrant as to online retail store services for eyewear and sunglasses is noted.
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.
Comparison of the Marks
In the present case, applicant’s mark is SOLSTICE and registrant’s mark in Reg. No. 2404845 is SOLSTICE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applying the above analysis, in regard to Reg. No. 3396949, the marks are substantially similar in appearance, sound, connotation, and commercial impression.
In particular, applicant's mark is identical to the first part and recognizable and dominant portion of the registered mark, namely, the word “SOLSTICE”.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In the instant case, it is appropriate to give more weight to the "SOLTICE" portion of registrant's mark because of the descriptive nature of the disclaimed wording "SUNGLASS BOUTIQUE."
Comparison of the Services
Applicant’s services include “optical services”.
Registrant’s services in Reg. No. 2404845 are “retail store services featuring sunglasses”.
Registrant’s services in Reg. No. 3396949 are “retail store services featuring sunglasses and parts and accessories therefor”.
Applicant’s services are closely related to registrant’s services because companies offering optical services often offer store services featuring eyewear and sunglasses and these services are marketed in the same or similar channels of trade to the same class of consumers.
For the above reasons, there is a likelihood of confusion, and registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
THIS REFUSAL APPLIES TO PARTICULAR SERVICES ONLY
(1) Deleting the services to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
REQUIREMENTS
If applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF THE SERVICES
The underlined wording “On-line retail store services featuring eyewear, sunglasses and optical services” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, it would encompass optician services in International Class 44. Services in different classes must be separately listed in the proper class.
For example, applicant may substitute any or all of the following wording, if accurate:
On-line retail store services featuring eyewear and sunglasses [in International Class 35]
Optician services [properly in International Class 44]
An applicant may only amend an identification to clarify or limit the goods and/or services, but may not broaden or expand the goods and/or services beyond those in the original application and as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
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.
CLASSIFICATION
MULTIPLE CLASS REQUIREMENTS
The application identifies services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Plus application is $250 per class. See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04. For more information about adding classes to an application, see the Multiple-class Application webpage.
(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 services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
CLOSING
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 113
U.S. Patent and Trademark Office
571-272-9343
douglas.lee4@uspto.gov
RESPONSE GUIDANCE