Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 11, 2020

 

On June 21, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87/298248.  The referenced prior-pending application has since registered.  Therefore, registration is refused as follows.

 

The Section 2(d) refusal in view of Registration Nos. 5260630 and 5583247 is continued and maintained.

 

The requirement for deletion of the duplicate listing of “electric food blenders” in International Class 7 is also continued and maintained.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5970005.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

Comparison of Marks

 

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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Applicant’s mark is JIMMY in stylized form.

 

Registrant’s mark is JIMI in stylized form.

 

The registered mark “JIMI” is phonetically and connotatively identical to applicant’s mark “JIMMY.” Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

The use of different stylizations in connection with applicant’s mark and the cited registered mark is not sufficient to distinguish the marks.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although 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 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Applicant’s mark and the cited registered mark create similar commercial impressions.

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Comparison of Goods

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).

 

Applicant’s goods are:

 

Brushes for vacuum cleaners; Centrifugal mills; Cleaning appliances utilizing steam; Electric food blenders; Food processors, electric; Fruit presses, electric, for household purposes; Grating machines for vegetables; Mixing machines; Parquet wax-polishers, electric; Suction nozzles for vacuum cleaners; Vacuum cleaner attachments for disseminating perfumes and disinfectants; Vacuum cleaner bags; Vacuum cleaner hoses; Vacuum cleaners; Electric food blenders; Electric food choppers; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric food slicers; Electric meat grinders; Electric mixers; Electric wax-polishing machines for household purposes; Electric wax-polishing machines for industrial purposes; Electric garlic peeling machines; Electric hand-held mixers for household purposes; Electric machines and apparatus for carpet shampooing; Food peeling machines for commercial use; Industrial mixer for mixing liquids in the pharmaceutical and chemical industries; in International Class 7;

 

Apparatus for DNA and RNA testing for medical purposes; Dental apparatus, namely, apex locator; Dental apparatus, namely, intra-oral light systems; Dental bridges; Dental chairs; Dental crowns; Dental drills; Dental examination chairs; Dental excavators; Dental mirrors; Dental operating lamps; Dental picks; Dental syringes; Electric acupuncture instruments; Electric blankets for medical purposes; Electric foot spa massagers; Electric massage appliances, namely, electric vibrating massager; Electric massage chairs; Hearing aids; Massage apparatus and instruments; Massage apparatus for massaging necks and backs, feet, face, arms, legs; Medical apparatus and instruments for use in orthopedic surgery; Medical apparatus and instruments for use in surgery; Medical instruments, namely, orthopedic apparatus and instruments; Therapeutic saunas; Belts, electric, for medical purposes; Blankets, electric, for medical purposes; Diagnostic kits consisting primarily of probes, buffers and reagents for use in microbial testing; Electric massage apparatus for household use; Electromagnetic medical diagnostic imaging apparatus; Electrotherapy devices for providing transcutaneous electrical nerve stimulation, infrared heat and compression; External orthopedic devices using electrical signals to stimulate bone growth; Heating cushions, electric, for medical purposes; Implant bridges for dental purposes; Medical apparatus and instruments for diagnostic radiopharmaceutical use; Medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; Medical testing devices for measuring hearing loss in patients, namely, audiometers; Medical apparatus, namely, electric vaporizer for upper respiratory conditions; Medical diagnostic apparatus for testing DNA and RNA samples; Medical diagnostic apparatus for testing blood sugar levels, cancer cells, DNA; Medical specimen bags for holding body tissue samples for testing purposes; Organoleptic diagnostic testing apparatus for medical, dental or cosmetic use; Programmable milling apparatus for dental purposes; Static electric therapy apparatus; Surgical apparatus and instruments for medical, dental or veterinary use; Surgical and medical apparatus and instruments for use in general surgery; Surgical and medical apparatus and instruments for use in orthopedic surgery; Surgical and medical apparatus and instruments for use in spinal, general, orthopedic surgery; Ultrasound diagnostic apparatus; X-ray apparatus for dental imaging; X-ray diagnostic apparatus; in International Class 10;

 

Air purifying apparatus and machines; Air sterilizers; Drying apparatus for chemical processing; Drying apparatus for use in heating, ventilation systems, air conditioning systems and refrigeration systems; Drying machines for agriculture; Electric fans for personal use; Fabric steamers; Fans for air conditioning apparatus; Hair dryers; Ionization apparatus for the treatment of air; Ionization apparatus for the treatment of liquids and gases for industrial, commercial or agricultural use; Reheating furnaces for industrial purposes; Water filtering apparatus; Water purification installations; Water purifying apparatus and machines; Water softening apparatus and installations; Commercial dryers and warewashers sold as a unit for washing and drying food plates, bowls, pots, pans and food preparation and cookwares, glasses and utensils; Electric air dryers; Laundry drying machines; Touchless hand drying apparatus; Ventilating fans for industrial purposes; in International Class 11.

 

Registrant’s goods are:

 

Air purifying apparatus and machines; Fireplaces, domestic; Lamps; Sinks; Sterilizers; Taps; Water purifying apparatus and machines; Water filtering apparatus; Bathroom heaters; Non-electric pocket warmers, namely, chemically-activated heating packets for warming hands; in International Class 11.

 

Applicant’s and registrant’s International Class 11 goods directly overlap in some instances (air purifying apparatus and machines, water purifying apparatus and machines, water filtering apparatus).

 

Applicant’s other goods are closely related to registrant’s International Class 11 goods, as demonstrated by applicant’s inclusion of a number of the same type of goods in its identification of goods.

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely items such as the type found in the cited registered mark (water purifying apparatus, water filtering apparatus, fireplaces, lamps, sinks, taps) and items such as those found in applicant’s International Class 7 and 10 identifications of goods (vacuum cleaners, vegetable grating machines, fruit presses, hearing aids, electric fans, hair dryers, etc.), are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 11, 2020 for

U.S. Trademark Application Serial No. 88122530

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”