LAURIE ANN MAYES
`
`Serial No.: 77635586
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`Law Office 101
`
`I iling Date: 2008-12-18
`
`Attorney Docket No.
`3793 34-999007
`
`d.light
`
`ark:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Trademark Application of
`ID .LIGHT Design, Inc.
`
`Trademark Examining Attorney
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`04-22-2010
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`3'2
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`3 Palm 1 Trllflit T" 915;;
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`:.;Fx_ rt
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`RE UEST FOR RECONSIDERATION AFTER FINAL ACTION
`
`This responds to the Final Office Action dated October 21, 2009.
`
`AMENDMENTS
`
`Please delete the identification of good in Class 011 in its entirety, and replace it with:
`
`LIGHT FIXTURES AND LAMPS INTENDED FOR USE WITHOUT
`
`REGULAR ACCESS TO AN ELECTRIC GRID AND NOT FOR USE IN
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`POOLS, SPAS AND LANDSCAPE LIGHTING; ELECTRIC FANS;
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`REFRIGERATORS
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`CERTIFICATION UNDER 37 C.F.R. 1.10
`
`I hereby certify that this paper is being deposited with the United States Postal Service as Express Mail, Label No.
`EMl9803l890US in the envelope addressed to: Commissioner for Trademarks, PO. Box 1451, Alexandria, VA 22313-1451
`on April 21, 2010.
`
`Stephen F. Kampmeier
`(Name)
`
`(Signature)
`
`April 21, 2010
`(Date of Signature)
`
`

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`Serial No.: 77635586
`
`Filing Date: 2008-12-18
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`RESPONSE
`
`Reg. Nos. 3213915 and 3272795
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`The Examiner indicated in her final office action that the refusal as to Reg. Nos. 3213915
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`and 3272795 was limited to applicant’s light fixtures and lamps and that this refusal could be
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`overcome through an appropriate amendment to the identification of those goods. By this
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`response, those goods now explicitly exclude any “use in pools, spas and landscape lighting.”
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`This amendment makes explicit that there is no overlap or relation between the goods as
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`described in the application and the two cited registrations. Additionally, the two identifications
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`now also reflect the marked differences in intended consumers and likely-to-continue charmels of
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`trade. The careful, sophisticated purchasing required with regard to an electric light intended for
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`use in a pool or spa is also a relevant factor in a likelihood of confusion analysis. See e.g., “Do
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`not operate unit for more than ten (10) seconds out of the water as submersion is required for
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`cooling,” in “Polaris D’Light: Installation and Operation Instructions” available on April 21,
`
`2010 at http://www.polarispool.com/technicalsupport.aspx (attached as Exhibit A). These
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`factors, separately and collectively, speak against a finding of a likelihood of confusion. TMEP
`
`§ 1207.01.
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`Reg. No. 2,777,467
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`The Examining Attorney has refused registration of this mark as to “batteries, battery
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`chargers” due to a perceived likelihood of confusion with DLIGHT (Reg. No. 2,777,467).
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`Applicant notes:
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`NYl~4272298vl
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`

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`Serial No.2 77635586
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`Filing Date: 2008-12-18
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`1. No Affidavit or Declaration of Use (15 U.S.C. §§ 1058) was timely filed on or
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`before 2009-10-28 for DLIGHT (Reg. No. 2,777,467);
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`2. No appropriate remedial filing has been made to date;
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`3. The registration will be cancelled, if the owner of said registration does not file
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`an affidavit or declaration of use or excusable nonuse before the end of the grace
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`period. 37 C.F.R. §§2.l60(a) and 2.l64(b).
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`Applicant respectfully requests that the examining attorney confirm the status of the cited
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`registration before issuing any final refusal of registration under Trademark Act §2(d). TMEP §
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`716.02(e).
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`Based on this submission and the amendment made in this office action response,
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`Applicant respectfully requests that the Examiner withdraw her objections and permit this
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`application pass to publication.
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`Respectfully submitted,
`
`By:
`
`2 5 4
`
`Brett A. ovejoy
`Stephen F. Karnpmeier
`JONES DAY
`222 East 41 st Street
`
`New York, New York 10017-6702
`
`(212) 326-3939
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`ATTORNEYS FOR APPLICANT
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`Date: April 21, 2010
`
`NYl—1272298vl
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`

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`EXHIBIT A
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`

`
`Polaris D’Light
`Installation and Operation Instructions
`
`Important Information
`
`The Polaris D’Light“ is designed for installation in
`an approved niche enclosure. (Sold separately.)
`
`The D’Light meets National Electric Code (NEC)
`and Canadian Electrical Code requirements.
`Installation should be performed by a licensed
`electrician, and conlorm to all national, state and
`local codes.
`
`WARNING: To reduce risk of electrical shock:
`-
`Read and follow all installation
`instructions. Improper installation could
`result in personal injury and/or property
`damage. and can void the warranty.
`
`-
`
`-
`
`-
`
`-
`
`-
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`Install D’Light so top of fixture is at least
`18" (45.7 cm) below the normal water
`level. Total submersion is required
`for cooling.
`
`Do not operate unit for more than ten (10)
`seconds out of the water as submersion is
`required for cooling.
`
`Use a Class A ground fault circuit interrupter
`(GFCI) in the branch circuit. Do not use
`extension cords.
`
`Power transformer for 12VAC lights should
`be the isolated winding type with a metal
`barrier between the primary and secondary
`windings. Output rating must be: 12VAC. 300
`Watt lamp maximum.
`
`Use solid copper bonding conductor, no
`smaller than No. 8 AWG (8.4 mm’), 6 AWG
`(13.3 mmz) in Canada, to connect the D’Light
`to the pool/spa structure.
`
`Permanently ground the light in accordance
`with NEC or Canadian Electrical Code, and
`all applicable local code requirements.
`
`Install the D’Light in a vertically oriented wall only.
`Do not install In pool or spa floors.
`
`Install the electrical junction box at least 8" (20.23
`cm) above the pool water level and no less than
`4“ (10.16 cm) above the deck or ground. The box
`must be at least 4' (1.2 m) from the perimeter of
`the pool unless separated from the pool by a wall
`or other permanent barrier. Check all applicable
`codes to ensure compliance.
`
`4 Fl. Min. ‘——-l
`
`Junction
`30*/
`
`
`
`Multiple D’Light units can be synchronized if wired
`to the same AC power circuit.
`
`Installation
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`Warning: Disconnect electrical power before
`Installation or repairs.
`
`Niche
`
`The D’Light is designed for installation in an
`approved niche enclosure (sold separately).
`The niche must be installed so the upper most
`portion of the D’Light fixture is at least 18"
`(45.7 cm) below the normal water level.
`Install and bond conduit to the niche according
`to NEC or Canadian Electrical Code. and comply
`with local code requirements.