To: | Jason Incorporated (docketing@boylefred.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86906449 - JASON - 1358.009 |
Sent: | 6/10/2016 11:56:44 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86906449
MARK: JASON
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Jason Incorporated
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 6/10/2016
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
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.
Search of the Office Records and Action on Merits Deferred
Refusal to Register under Trademark Act Section 2(d) – Likelihood of Confusion
The term, JASON, is dominant and identical in appearance, sound and meaning in the marks. Both marks consist entirely of the name JASON, in standard characters with no distinguishing literal or design features. In addition, the marks are used with structural parts for automobiles and vehicles that are sold in the same trade channels. Given the similarity of the marks, goods, and trade channels for the goods, confusion as to source is likely.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification of Goods and Services Amendment Required
The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to 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.
Applicant may substitute the following wording, if accurate.
Please note that the wording shown in BOLD format either replaces indefinite wording or indicates wording that would be acceptable. The remaining terms not shown in BOLD are acceptable as submitted.
Class 12: Vehicle seats; seats for off-road vehicles, namely, (“turf care equipment” is indefinite – specify by common commercial name); seats for industrial equipment, namely, lift trucks, telehandlers and cargo handlers; seats for agricultural equipment, namely, tractors, combines, harvesting equipment and (“applicators” is indefinite - specify by common commercial name); seats for construction equipment, namely, seats for skid steer loaders, wheel loaders, compact wheel loaders, excavators, mini excavators, bulldozers, (“road equipment” is indefinite – specify by common commercial name), and backhoe loaders, and parts and attachments therefore, namely, vehicle seat frames, vehicle seat cushions, arm rests for vehicle seats, backrests for vehicle seats, head-rests for vehicle seats, vehicle seat head-rest extensions, vehicle seat suspensions, vehicle seat positioning slide rails, vehicle seats with adjustable dampers, vehicle seat position adjusting mechanisms, vehicle seat swivels, leather, vinyl and fabric seat covers, vehicle seats with integrated storage, vehicle seat arm rests featuring integrated controllers for adjusting seat position; seat belts for use in vehicle seats; “Vehicle sound insulators” is indefinite – specify by common commercial name; land vehicle parts, namely, underbody panels, wheel liners, trunk trim, floor carpets, dash insulators, storage bins, load floors, instrument panel “closeouts” is indefinite – specify by common commercial name;
The following goods are indefinite and classified in classes other that International Class 12, including Classes 1 (industrial chemicals), 2 (sealants), 3 (buffs, buffers, etc.), 7, 8, 21 (brushes of various types as included in the identification of goods of record), 7 for machine parts, 9 (speaker grills is indefinite, but appears to be a part for audio speakers), 11 (kitchen filter assemblies is indefinite, but appears to be a kitchen appliance part), 6 and 19 (depending on the type of fencing), 20 (outdoor furniture), 41 (recreational park services – “parks and recreational” is indefinite), 7, 9, 12 or other classes depending on the identification of “rails”; etc.
Applicant is encouraged to consult the online Acceptable Identification of Goods and Services Manual for assistance with identifying the goods and services in the application clearly.
U.S. Acceptable Identification of Goods and Services Manual.
These goods and or services are indefinite: Liquid buffing compounds and solid buffing compounds, excluding household cleaners, for buffing and finishing metal and plastic machine parts and pieces, manufacturing equipment, industrial machine and equipment parts and pieces; Conventional buffs and Bias buffs for use in surface finishing and polishing of metal, plastic and wood surfaces; finger buffs, wave ring buffs, pleated buffs, airway buffs, meter buffs; Heavy-duty idler rollers and rails for high-capacity precision load handling; Industrial chemicals for use as a welding anti-splatter, belt dressing; Industrial chemicals for use as a sealant, namely, a mildew resistant sealant, heat resistant sealant and electrical corrosion sealant; Industrial chemicals for use as a mold release agents, lubricants and rust preventatives; Brushes being parts of surface treatment and finishing machines, namely, abrasive nylon brushes, wheel brushes, disc brushes, internal finishing and cleaning brushes, cup brushes, end brushes, wide face brushes, wire brushes, fineblanking brushes, grit wheel brushes, tube brushes, scrubber brushes, printed circuit brushes, strip brushes, scratch brushes, knotted wire brushes and stringer bead brushes; Brush adapters for use as machine parts; Brush components and replacement parts for brushes for machines; Brushes being parts of brushing machines for cleaning conveyor systems; brushes for machines, namely, abrasive nylon brushes, wheel brushes, disc brushes, internal finishing and cleaning brushes, cup brushes, end brushes, wide face brushes, wire brushes, fineblanking brushes, grit wheel brushes, tube brushes, scrubber brushes, printed circuit brushes, strip brushes, scratch brushes, knotted wire brushes and stringer bead brushes; machine parts, namely, flap discs, cutoff wheels, wheel brushes, and grinding wheels for power-operated grinders, punched brushes; Brushes and equipment for the oil and gas industry such as transport and cut-back brushes, well-bore brushes, oil-skimming brushes, drill pipe cleaning brushes, brush segments, custom engineered pencil brushes and assemblies, coil brushes, arc-style brushes, pigging brushes; Paint brushes; Paint rollers; Wire brushes, not being machine parts; Scrubbing bushes; Materials for brush making; hand tools, namely, tube brushes for cleaning and deburring holes and crevasses in machinery, motors, engine parts, pipes, and flues; cleaning brushes; Machinery, motors, engine parts and construction parts for the cleaning of solar installations including monitoring devices for measuring, outputting and collecting of data; Ovens for heat treating items; metal cutting discs, stone cutting discs, grinding discs, flap discs, cleaning and polishing tools, diamond cutting discs, diamond tools, flexible and semi-flexible abrasives, vitrified bonded abrasives, technical brushes; Insulating, sealing, barrier and shielding brushes, primarily non-metallic; brushes for cleaning, scraping, abrading and wiping; Custom manufacture of precision metal pieces for others; prototyping; assembly of products for others; product development; Coated and non-coated expanded metal products, speaker grills, kitchen filter assemblies, perforated custom metal tubing; Stamped, formed, expanded and perforated metal components and subassemblies, safety grating and rail products, air and fluid filtration, home and automotive speaker grilles, fencing, parks and recreational, outdoor furniture, lighting
Multiple Class Requirements
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 10-11 classes; however, applicant submitted a fee sufficient for only 1 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
/Barbara A. Gold, Esq./
U.S. Patent and Trademark Office
Law Office 106
571/ 272-9165
571/ 273-9106 (fax)
barbara.gold@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.