UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUPPLEMENTAL OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/20/2019

 

This Office action supersedes the previously mailed action.  The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Mark is Likely to Cause Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration Nos. 5470002, 5277077, 5096710, 4418762, 4973691, 2463774, 4351610 and 2650945 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983);  In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978);   Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

Analysis of Applicant’s Mark and Registered Mark

 

First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term “JUMP.”  Accordingly, the applicant’s mark, “JUMP,” is similar in sound, appearance, connotation and commercial impression to Registration No. 5470002’s mark “JUMP,” Registration No. 5277077’s stylized mark “JUMP,” Registration No. 5096710’s mark “JUMP,” Registration No. 4418762’s mark “JUMP,” Registration No. 4351610’s mark “JUMP TECHNOLOGIES,” Registration No. 4973691’s mark “JUMP,” Registration No. 2650945’s mark “JUMP” and Registration No. 2463774’s mark “JUMP.”   Similarity in any one of these elements alone is sufficient to find a likelihood of confusion.   In re Mack, 197 USPQ 755 (TTAB 1977).

 

It is well settled that in some circumstances, it is appropriate to recognize that one component of a particular mark may, for some reason, have more significance than other components in determining the commercial impression which is generated by the mark.  In re National Data Corp.,  753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).  Although the determination of whether or not confusion is likely must be based on a comparison of the marks in their entireties, the dominance of such a significant element must be taken into account in resolving this issue.  Ceccato v. Manifattura Lane Gaetano Morzotto Figli S.p.A., 32 USPQ 1192 (TTAB 1994).  Disclaimed matter is typically less significant or less dominant.

 

Registration No. 4351610’s mark is “JUMP TECHNOLOGIES.”  In the comparison above, the mark was viewed and considered as a whole. “Technologies,” however, is descriptive of the goods and services and is of less trademark significance than “JUMP.”

 

Analysis of Goods and Services

 

Second, a comparison of the applicant’s goods and services including “scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; vehicles; apparatus for locomotion by land, air, or water; conveyances; bicycles; ,” to the registrants’ goods and services shows the relationship between them.  Registration No. 5470002 and 5277077’s mark is for goods and services including “computer software for assembling and compiling virtual reality media” and “providing software as a service, namely, software to assemble and compile virtual reality media over the internet.” Registration No. 5096710’s mark is for “computer hardware and software systems for protecting online security in Internet browsing” and “software as a service (SAAS) services featuring software for protecting online security in Internet browsing.” Registration No. 4418762’s mark is for “computer software, namely, computer software for use in accessing, using and controlling remote computer systems and software.” Registration No. 4973691’s mark is for “remotely piloted vertical take-off and landing (VTOL) aircraft not in the nature of remote controlled toy model aircraft; structural parts for vertical take-off and landing (VTOL) airplanes, propellers for vertical take-off and landing (VTOL) aircraft.” Registration No. 2463774’s mark is for “transportation of passengers by bus.” Registration No. 2650945’s mark is for “product development consulting, namely, design, strategy, product planning, product design, industrial design, and design planning” and “product development consulting, namely, design, strategy, product planning, product design, industrial design, and design planning.”  Registration No. 4351610 is for “computer software for use in business management, namely, for supply chain management including purchasing, replenishment, inventory management, warehouse management, demand forecasting, and proof-of-delivery” and “providing on-line non-downloadable software for use in business management, namely, for supply chain management including purchasing, replenishment, inventory management, warehouse management, demand forecasting, and proof-of-delivery.”

 

The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods and services identified in the application and registration.  If the application or cited registration describes the goods and services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application and registration encompass all goods and services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co., v. Johnson Publishing Co., Inc., 473 F.2d  901, 177 USPQ 76 (CCPA 1973); In re Elbaum, 211 USPQ 639 (TTAB 1981).  The applicant’s broad identification of software, vehicles, transport services and industrial research services is seen to include the registrants’ more specific software goods, vehicles such as VTOL aircraft, transport of passengers by bus and industrial design services.

 

Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

 

The examining attorney must consider any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  Accordingly, the mark is likely to cause consumer confusion as to source.

 

Prior Pending Applications

 

The filing date of pending U.S. Application Serial Nos. 87-748823, 88-165290 and 87-503611 precedes applicant’s filing date.  See attached referenced applications.  If the mark in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Other Considerations

 

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.  If applicant chooses to respond to the refusal to register, the following issue must also be addressed.

 

The Identification of Goods and Services is Indefinite

 

The identification of goods is indefinite and must be clarified because it is unclear from the current wording exactly what goods and services are used in conjunction with the mark.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.   For example, “scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments” must specify the goods used in conjunction with the mark, e.g. “. . . life-saving and teaching apparatus and instruments, namely, cameras.” 

 

The wording “hoverboard” in the identification of goods is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration Nos. 3685723. 

 

Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may replace such wording with the following, if appropriate:  “two wheeled motorized scooter.”

 

The wording “e-bicycles; e-scooters” in the identification of goods is indefinite and must be clarified because it is not clear exactly what goods are used in conjunction with the mark.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may adopt the following identification, if accurate (suggested wording appears italicized print): 

 

Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments, namely, _____ (identify specific goods, e.g. cameras); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity, namely, _____ (identify specific goods, e.g. electric voltage transformers); apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data, namely, _____ (identify specific goods, e.g. portable sound reproducing apparatus); recorded and downloadable media, namely,  _______ (identify goods, e.g. downloadable video recordings featuring music); blank digital storage media and black analogue recording and storage media, namely, cassette tapes sold blank; mechanisms for coin-operated apparatus; cash registers, calculators; computers and computer peripheral devices; diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, diving equipment, namely, gloves for divers, breathing apparatus for underwater swimming; fire-extinguishing apparatus; computer software for ______ (indicate specific function, e.g. inventory record keeping) in the field of _____ (indicate specific field, e.g. law); batteries in Class 9.

-and-

Vehicles, namely, land vehicles; apparatus for locomotion by land, air, or water, namely, amphibious airplanes; conveyances, namely, military vehicles for transport; bicycles; motor scooters; mopeds; vehicles, namely, electronically motorized skateboards; self-balancing boards; two wheeled motorized scooter; electric vehicles, namely, electric automobiles; electric conveyances, namely, military vehicles for transport; electric bicycles; electric motor scooters; electric mopeds; electric motorized skateboards; electric motorized self-balancing boards in Class 12.

-and-

Bus transport; packaging of goods for transport purposes, namely, the packing of goods using sustainable or biodegradable packaging and shipping materials and storage of goods; arranging transport for travellers; rental of vehicles, namely, bicycles, scooters, mopeds, motorized skateboards, self-balancing boards, electric vehicles, electric conveyances, electric bicycles, electric assist bicycles, electric pedal assist bicycles, electric scooters, electric mopeds, electric skateboards, electric self-balancing boards, electric vehicles and vehicle apparatus for locomotion by land, air, or water in Class 39.

-and-

Scientific and technological services, namely, research and design in the field of _____ (indicate specific field, e.g. integrated system architecture that allows for the rapid development of highly interactive and customizable learning applications); industrial analysis of goods of others to assure compliance with _______ (indicate specific industry, e.g. computer) and industrial research in the field of ______ (indicate specific field of goods or subject of research); design and development of computer hardware and software; providing information in the field of computer software development via a website in Class 42.  TMEP Section 1402.01.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

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.  

 

If applicant has questions regarding this Office action, please call or email the assigned trademark examining attorney.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

jason.turner@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/20/2019 FOR U.S. APPLICATION SERIAL NO. 88388598

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.