To: | Jet.com, Inc. (ustm@walmartlegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88322815 - JET - N/A |
Sent: | 5/10/2019 10:38:23 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88322815
MARK: JET
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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: Jet.com, Inc.
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/10/2019
The assigned examining attorney has reviewed the referenced application and determined the following.
Summary of Issues That Must Be Addressed
• Likelihood of Confusion – Class 39 Only
Likelihood of Confusion – Class 39 Only
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0995489 and 4483001. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Comparison of the 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)); TMEP §1207.01(b).
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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
The applicant’s proposed mark is “Jet” with a smile design comprising the letter “J” for Warehousing and distribution of the wares of others; warehousing services; storage, shipping and delivery of wares.
The registrant’s marks are “Jet” and the design of a star for Aircraft chartering; passenger transport and air cargo transport services, the aforementioned not including transport of fuel; air transportation; booking and reservation services for holidays and tours; providing information and data relating to the transport of goods and people; travel and transport reservation services; providing travel management services; checking of baggage; tourist offices providing tourist information in relation to travel and transport; travel agency services in particular consultancy and booking services for travel and transport; arranging and operation of tours; courier services; vehicle hire services for travelers; chauffeur services; airport parking for non-commercial vehicles; car parking valet services; freight services, namely, air freight services, not including fuel freight; packaging and storage of goods, not including fuel; storage and warehousing services not including storage and warehousing of fuel; information services in relation to travel and transport; bonus, loyalty and reward programs, namely, the supply of travel benefits, travel incentives, travel services and travel schemes; information, advisory and consultancy services relating to travel and transport; advisory services in relation to transport and travel management AND “Jet Delivery” for delivery of items of all sizes by vehicle, e.g., truck, motorcycle or bicycle.
The respective marks are comprised in either whole or significant part of the term “Jet”.
Consequently, the marks share the same over-all sound, appearance and commercial impression.
Comparison of the Goods/Services
Since the respective marks both consist primarily of the term “Jet”, the only issue before the examining attorney is whether the applicant’s services are so related to the registrant’s services that confusion as to source of origin or sponsorship is likely to occur. The examining attorney must conclude that they are so related, for it is foreseeable that customers of the applicant might encounter the registrant’s respective services and mark in the marketplace given similar channels of trade within which the identified services travel and/or are offered. Specifically, it is likely that the applicant’s warehousing and distribution of the wares of others; warehousing services; storage, shipping and delivery of wares and the registrant’s warehousing and storage services and delivery services will be marketed, advertised and ultimately sold or offered in the same or similar fashions.
Confusion as to source of origin or sponsorship is extremely likely if the applicant’s proposed mark is allowed to register. Registration is therefore refused by the examining attorney.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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 $125 per 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 or e-mail without incurring this additional fee.
Giancarlo Castro
/Giancarlo Castro/
Trademark Examining Attorney
Law Office 110
giancarlo.castro@uspto.gov
571-272-9357
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.