UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  78/418790

 

This letter responds to the applicant’s communication filed on June 14, 2005.

 

The amended recitation of services is acceptable.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No. 2,585,613.  37 C.F.R. §2.64(a).

 

The word portions of the marks are identical.  The slight design features of the registrant’s mark, which include displaying it as two words - JUMP START – fail to distinguish the marks from each other.  The applicant’s JUMPSTART is nearly identical.  When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  TMEP §1207.01(b). 

 

The registrant’s services are identified as:  “EDUCATIONAL SERVICES, NAMELY PROVIDING ON-LINE LESSONS AND INSTRUCTION IN READING, MATH, VOCABULARY, SPELLING AND PROBLEM-SOLVING DIRECTED TO CHILDREN, AND ONLINE LESSONS AND INSTRUCTION IN HISTORY, SCIENCE, SOCIAL STUDIES, LITERATURE, SPELLING, GRAMMAR, MATHEMATICS, VOCABULARY, FOREIGN LANGUAGES AND GEOGRAPHY DIRECTED TO ADULTS, AND ALL EXCLUSIVE OF MUSIC INSTRUCTION; ENTERTAINMENT IN THE NATURE OF ON-GOING CHILDREN'S EDUCATIONAL TELEVISION SHOWS NOT ON THE SUBJECT OF MUSIC INSTRUCTION.”  The applicant’s services are identified as:  “education services, namely, providing tutoring and one-on-one mentoring for children in the fields of language, literacy, social, and initiative skills.”  The applicant’s “language” and “literacy” encompass the registrant’s “vocabulary, spelling, problem-solving, literature” and “grammar.”  Both marks identify educational services for children, and the registrant’s television shows appear to cover the same subject matter.  There is no restriction in either service description which limits the services by income level of the consumers (or any other limitation), so they must be determined to reach the same consumers under circumstance leading to a false impression that the services come from the same source, or from related parties.

 

Likelihood of confusion is determined on the basis of the services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s services is very broad, it is presumed that the application encompasses all services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all services identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified services.  In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-5 (TTAB 1980).

 

Any services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s services are related to the applicant’s identified services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the service is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

The applicant’s contention that the marks are weak and therefore entitled to a limited scope of protection is not supported by the registrations referenced to buttress that argument.  Only the cited registration and this application identify educational services for children.  The other marks are for distinctly different services.  Besides, third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion.  In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).  Third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks.  In re Comexa Ltda, 60 USPQ2d 1118 (TTAB 2001); National Aeronautics and Space Admin. v. Record Chem. Co., 185 USPQ 563 (TTAB 1975); TMEP §1207.01(d)(iii).  Further, existence on the register of other confusingly similar marks would not assist applicant in registering yet another mark which so resembles the cited registered mark that confusion is likely.  In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).

 

Proper response to final

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/Ira Goodsaid/

/Ira Goodsaid/

Law Office 101

571-272-9166

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.