| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 97672843 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | SOLARIS |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Amendment to Goods Description In connection with this Response, Applicant has amended its description of goods from “boats” to “pontoon boats.” Likelihood of Confusion Refusal The Trademark Office initially refused registration of applicant’s mark on the basis of a likelihood of confusion with Reg. No. 6881793 for the SOLARIS and Design mark registered for yachts. The refusal was based on the fact that “the application use broad wording to describe "boats," which presumably encompasses all boats, including registrant’s more narrow "yachts.” Due to the potential overlap in goods, the Office Action did not contain any evidence with respect to establishing that Applicant’s goods and “yachts” are related, or any other evidence regarding the duPont factors. In light of Applicant’s amendment, Applicant respectfully requests that the Trademark Office reconsider the Office Action. Given that the sophistication of consumers, expense of the goods, and normal channels of trade for pontoon boats compared to yachts, Applicant believes that it is reasonable for the Trademark Office to conclude that no confusion is likely and withdraw the refusal. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | Boats |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/2011 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 012 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Pontoon boats |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/2011 |
| WEBPAGE URL | None Provided |
| WEBPAGE DATE OF ACCESS | None Provided |
| CORRESPONDENCE INFORMATION | |
| NAME | TIMOTHY D. SITZMANN |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademark@winthrop.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | jbriley@winthrop.com; tsitzmann@winthrop.com; 24379.57.imanage@file.winthrop.com |
| DOCKET/REFERENCE NUMBER | 24379.57 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /tds/ |
| SIGNATORY'S NAME | Timothy D. Sitzmann |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 6126046689 |
| DATE SIGNED | 11/30/2023 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Signed directly within the form |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Nov 30 17:05:07 ET 2023 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.X-20 231130170507771574-976728 43-850c9fe32f7bbc1749c547 bf0f68c62306a7b3d538edbf1 dee1c62259ecc719d78-N/A-N /A-20231130165936296670 |
| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Amendment to Goods Description
In connection with this Response, Applicant has amended its description of goods from “boats” to “pontoon boats.”
Likelihood of Confusion Refusal
The Trademark Office initially refused registration of applicant’s mark on the basis of a likelihood of confusion with Reg. No. 6881793 for the SOLARIS and Design mark registered for yachts.
The refusal was based on the fact that “the application use broad wording to describe "boats," which presumably encompasses all boats, including registrant’s more narrow "yachts.” Due to the potential overlap in goods, the Office Action did not contain any evidence with respect to establishing that Applicant’s goods and “yachts” are related, or any other evidence regarding the duPont factors.
In light of Applicant’s amendment, Applicant respectfully requests that the Trademark Office reconsider the Office Action. Given that the sophistication of consumers, expense of the goods, and normal channels of trade for pontoon boats compared to yachts, Applicant believes that it is reasonable for the Trademark Office to conclude that no confusion is likely and withdraw the refusal.