| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85482623 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85482623 |
| LITERAL ELEMENT | JUMPSTART |
| 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) | |
|
This correspondence is in response to the Office Action e-mailed on January 27, 2012 (the “Office Action”) in the above-identified service mark application (the “Application”). Identification of Services In the Office Action, the Examining Attorney objected to Applicant’s identification of Class 38 services as indefinite. Please amend the identification of Class 38 services to read as follows: Telecommunications services, namely, providing transmission of converged data, address location information, text, pictures, and streaming media, all for use in emergency communications.
Applicant has amended the identification of services in accordance with the suggestion made in the Office Action. This amendment clarifies, but does not broaden the scope of services identified in the original Application. Likelihood of Confusion – Section 2(d) In the Office Action, the Examining Attorney has refused registration under Trademark Act §2(d), 15 U.S.C. §1052(d), because according to the Examining Attorney, Applicant’s mark so resembles the mark in U.S. Registration No. 3041040 (the ‘040 Registration) so as to be likely to cause confusion, or to cause mistake, or to deceive. Applicant respectfully disagrees with the Examining Attorney’s assertions regarding the likelihood of confusion between Applicant’s mark and the cited mark. REMARKS The phrase “likely to cause confusion” may be restated as: Likely means probable; it is irrelevant that confusion is “possible.” See Westchester Media v. PRL USA, 214 F.3d 658, 663-64, 55 U.S.P.Q.2d 1255 (5th Cir. 2000) (“likelihood of confusion is synonymous with a probability of confusion, which is more than a mere possibility of confusion.”); See also Bongrain Int’l (Am.) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1486, 1 U.S.P.Q.2d 1175 (Fed. Cir. 1987). In requiring proof of a “substantial likelihood of confusion,” one court said that [t]his is more than mere semantics” and declined “to speculate as to any imaginable confusion…” Church of Larger Fellowship Unitarian Universalist v. Conservation Law Fund of New England, Inc., 221 U.S.P.Q. 869, 871 (D. Mass. 1983). The determination of whether there is a likelihood of confusion is a multifaceted test. The thirteen factors that make up this test were clearly articulated by the Federal Circuit Court of Appeals in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The thirteen DuPont factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity in the nature of the goods/services described in the application or registration of the mark, or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and the buyers to whom sales are made; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the applicant and the owner of a prior mark; (11) the extent to which the applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; and (13) any other established fact probative of the effect of use. DuPont, 476 F.2d at 1361. Some of these factors which were not discussed by the Examining Attorney are examined herein. Trademark Manual of Examining Procedure (“TMEP”) §1207.01. Turning to the relevant DuPont factors with regard to this case, Applicant respectfully asserts that although the marks are identical, the nature of Applicant’s services and the services of the ‘040 Registration is different. Applicant’s proposed mark “JumpStart” is for services, specifically (as amended) “telecommunications services, namely, providing transmission of converged data, address location information, text, pictures, and streaming media, all for use in emergency communications,” in International Class 38. While the ‘040 Registration is also for telecommunications services, those services are specifically limited to “transportation and travel reservations and information”. Applicant respectfully contends that the Examining Attorney’s determination that the services of the ‘040 Registration extend to emergency communications is a leap. Applicant’s emergency telecommunications services in Class 38 are clearly distinguished from the transportation and travel reservations and information services in Classes 38 and 39 of the ‘040 Registration. A precise reading of the description of Class 38 services in both Applicant’s Application and the ‘040 Registration reveals the distinction between them. The owner of the ‘040 Registration and the Applicant are providing distinctly different services for distinctly different consumers who are not likely to be confused with respect to the source of the services. The ‘040 Registration provides access to computer databases in the field of transportation and travel reservations and information. Applicant’s emergency communications services allow public safety answering points (PSAPs) to be more in control of their next generation strategy by allowing them to decide when to implement specific 911 services to better respond to citizen text messages, multimedia files, data and wireless caller locations. (See the attached July 15, 2011 press release announcing the introduction of Applicant’s JumpStart services.) It is too far-reaching to read the description of Class 38 services in the ‘040 Registration to include emergency communications. And it is too far-reaching to read the description of Class 38 services in Applicant’s mark to include transportation and travel reservation information. Applicant asserts that the Trademark Office was correct in determining that the marks are identical in appearance and sound. However, the expansion of the services set forth in the ‘040 Registration to come within the purview of the present Application would unfairly expand the services of the ‘040 Registration beyond the expressed description of services. As the Examining Attorney is aware, the language used in the identification of goods or services in a trademark application or registration is not determinative of the likelihood of confusion between two or more marks. Rather, it is the similarities or dissimilarities of the marks as they are used in commerce in combination with the similarities or dissimilarities of their respective goods or services that determine the likelihood of confusion. Trademark law resists flat rules that would require finding certain types of goods and services to be related for purposes of likelihood of confusion. In any case, actual consumer perception is the ultimate issue, and argument or speculation cannot serve as proof. CPC In’l, Inc. v. Seven-Up Co., 218 U.S.P.Q. 379, 380 (T.T.A.B. 1983). Applicant respectfully asserts that the ‘040 Registration should not block registration of Applicant’s mark because the services in each instance are very clearly distinguished. The ‘040 Registration should not afford the registrant exclusive rights to all similar marks for all telecommunications services, and particularly not for emergency telecommunications services, but rather those telecommunications services “in the field of transportation and travel” only. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_9622644162-101621768_._Intrado_Introduces_Jumpstart.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\854\826\85482623\xml1\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\854\826\85482623\xml1\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\854\826\85482623\xml1\ROA0004.JPG | |
| DESCRIPTION OF EVIDENCE FILE | July 15, 2011 press release announcing Applicant's JumpStart services |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 038 |
| DESCRIPTION | |
| Telecommunications services, namely, converged data, address location information, text, pictures, and streaming media | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/07/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/07/2011 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 038 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Telecommunications services, namely, providing transmission of converged data, address location information, text, pictures, and streaming media, all for use in emergency communications | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/07/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/07/2011 |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | In conclusion, Applicant contends that no likelihood of confusion exists. Therefore, Applicant respectfully requests reconsideration and allowance of this Application and publication of the proposed mark. In light of the foregoing remarks, if any outstanding issues remain, or if the Examining Attorney has any further suggestions for expediting allowance of this Application, Applicant respectfully invites the Examining Attorney to contact the undersigned at (972) 378-9111 or at kferguson@dallasbusinesslaw.com. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /L. Kyle Ferguson/ |
| SIGNATORY'S NAME | L. Kyle Ferguson |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | (972) 378-9111 |
| DATE SIGNED | 07/27/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jul 27 10:23:45 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0120727102345078709-85482 623-490d82ff4326e6de5b85e 072fc90dc4a18-N/A-N/A-201 20727101621768016 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This correspondence is in response to the Office Action e-mailed on January 27, 2012 (the “Office Action”) in the above-identified service mark application (the “Application”).
Identification of Services
In the Office Action, the Examining Attorney objected to Applicant’s identification of Class 38 services as indefinite. Please amend the identification of Class 38 services to read as follows:
Telecommunications services, namely, providing transmission of converged data, address location information, text, pictures, and streaming media, all for use in emergency communications.
Applicant has amended the identification of services in accordance with the suggestion made in the Office Action. This amendment clarifies, but does not broaden the scope of services identified in the original Application.
Likelihood of Confusion – Section 2(d)
In the Office Action, the Examining Attorney has refused registration under Trademark Act §2(d), 15 U.S.C. §1052(d), because according to the Examining Attorney, Applicant’s mark so resembles the mark in U.S. Registration No. 3041040 (the ‘040 Registration) so as to be likely to cause confusion, or to cause mistake, or to deceive. Applicant respectfully disagrees with the Examining Attorney’s assertions regarding the likelihood of confusion between Applicant’s mark and the cited mark.
REMARKS
The phrase “likely to cause confusion” may be restated as: Likely means probable; it is irrelevant that confusion is “possible.” See Westchester Media v. PRL USA, 214 F.3d 658, 663-64, 55 U.S.P.Q.2d 1255 (5th Cir. 2000) (“likelihood of confusion is synonymous with a probability of confusion, which is more than a mere possibility of confusion.”); See also Bongrain Int’l (Am.) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1486, 1 U.S.P.Q.2d 1175 (Fed. Cir. 1987). In requiring proof of a “substantial likelihood of confusion,” one court said that [t]his is more than mere semantics” and declined “to speculate as to any imaginable confusion…” Church of Larger Fellowship Unitarian Universalist v. Conservation Law Fund of New England, Inc., 221 U.S.P.Q. 869, 871 (D. Mass. 1983).
The determination of whether there is a likelihood of confusion is a multifaceted test. The thirteen factors that make up this test were clearly articulated by the Federal Circuit Court of Appeals in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The thirteen DuPont factors are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity in the nature of the goods/services described in the application or registration of the mark, or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely-to-continue trade channels; (4) the conditions under which and the buyers to whom sales are made; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the applicant and the owner of a prior mark; (11) the extent to which the applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; and (13) any other established fact probative of the effect of use. DuPont, 476 F.2d at 1361. Some of these factors which were not discussed by the Examining Attorney are examined herein. Trademark Manual of Examining Procedure (“TMEP”) §1207.01.
Turning to the relevant DuPont factors with regard to this case, Applicant respectfully asserts that although the marks are identical, the nature of Applicant’s services and the services of the ‘040 Registration is different.
Applicant’s proposed mark “JumpStart” is for services, specifically (as amended) “telecommunications services, namely, providing transmission of converged data, address location information, text, pictures, and streaming media, all for use in emergency communications,” in International Class 38. While the ‘040 Registration is also for telecommunications services, those services are specifically limited to “transportation and travel reservations and information”. Applicant respectfully contends that the Examining Attorney’s determination that the services of the ‘040 Registration extend to emergency communications is a leap. Applicant’s emergency telecommunications services in Class 38 are clearly distinguished from the transportation and travel reservations and information services in Classes 38 and 39 of the ‘040 Registration.
A precise reading of the description of Class 38 services in both Applicant’s Application and the ‘040 Registration reveals the distinction between them. The owner of the ‘040 Registration and the Applicant are providing distinctly different services for distinctly different consumers who are not likely to be confused with respect to the source of the services. The ‘040 Registration provides access to computer databases in the field of transportation and travel reservations and information. Applicant’s emergency communications services allow public safety answering points (PSAPs) to be more in control of their next generation strategy by allowing them to decide when to implement specific 911 services to better respond to citizen text messages, multimedia files, data and wireless caller locations. (See the attached July 15, 2011 press release announcing the introduction of Applicant’s JumpStart services.)
It is too far-reaching to read the description of Class 38 services in the ‘040 Registration to include emergency communications. And it is too far-reaching to read the description of Class 38 services in Applicant’s mark to include transportation and travel reservation information. Applicant asserts that the Trademark Office was correct in determining that the marks are identical in appearance and sound. However, the expansion of the services set forth in the ‘040 Registration to come within the purview of the present Application would unfairly expand the services of the ‘040 Registration beyond the expressed description of services.
As the Examining Attorney is aware, the language used in the identification of goods or services in a trademark application or registration is not determinative of the likelihood of confusion between two or more marks. Rather, it is the similarities or dissimilarities of the marks as they are used in commerce in combination with the similarities or dissimilarities of their respective goods or services that determine the likelihood of confusion.
Trademark law resists flat rules that would require finding certain types of goods and services to be related for purposes of likelihood of confusion. In any case, actual consumer perception is the ultimate issue, and argument or speculation cannot serve as proof. CPC In’l, Inc. v. Seven-Up Co., 218 U.S.P.Q. 379, 380 (T.T.A.B. 1983).
Applicant respectfully asserts that the ‘040 Registration should not block registration of Applicant’s mark because the services in each instance are very clearly distinguished. The ‘040 Registration should not afford the registrant exclusive rights to all similar marks for all telecommunications services, and particularly not for emergency telecommunications services, but rather those telecommunications services “in the field of transportation and travel” only.
