To: | Rabbit, Inc. (c@findarabbit.com) |
Subject: | U.S. Trademark Application Serial No. 88648194 - RABBIT - N/A |
Sent: | December 03, 2019 02:43:31 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 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88648194
Mark: RABBIT
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Correspondence Address:
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Applicant: Rabbit, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 03, 2019
The USPTO applies the following legal authority to a trademark application:
• The Trademark Act of 1946 (15 U.S.C. §§1051 et seq.)
• The Trademark Rules of Practice (37 C.F.R. pts. 2, 3, 6, 7, 11)
• Precedential court and Trademark Trial and Appeal Board (TTAB) decisions
• The Trademark Manual of Examining Procedure (TMEP)
• The Trademark Trial and Appeal Board Manual of Procedure (TBMP)
The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure.
An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system. Enter the application serial number or registration number and click on “Status” or “Documents.”
The USPTO website provides a “Basic Facts” booklet and video series that include information about registering a trademark, including how trademarks, patents, copyrights, domain names, and business name registrations all differ, and how to select the right mark – one that is both federally registrable and legally protectable. They also explain the benefits of federal registration and suggest resources to help an applicant with filing an application.
In addition, the USPTO website provides information for those unfamiliar with the process of applying for federal trademark registration, such as an e-booklet about registering trademarks, FAQs, and more. Two tools on the USPTO’s website that are particularly helpful during the examination process are the (1) informational videos and (2) application processing timelines. The videos provide information in a broadcast news format regarding a range of issues that arise during the examination of an application, such as specimens and goods and services. The application processing timelines provide information regarding the USPTO’s processing time for certain documents, as well as crucial legal deadlines.
Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees. These companies often have names similar to the USPTO. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.” For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.
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.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION – Partial Refusal
THIS PARTIAL REFUSAL APPLIES TO CLASS(ES) 9 ONLY, BUT ONLY TO THE GOODS SPECIFIED THEREIN
This refusal applies to the following goods in Class 9 only: Battery chargers for mobile phones; Battery chargers for use with mobile phones, iPads and other tablets, and any device that charges by micro USB, apple lightning. or USB-C connections; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; portable battery chargers; portable power packs or power bricks; portable cell phone charging device.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5096221. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or 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, (a)(vi).
The proposed mark is RABBIT for, in relevant part, Battery chargers for mobile phones; Battery chargers for use with mobile phones, iPads and other tablets, and any device that charges by micro USB, apple lightning. or USB-C connections; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; portable battery chargers; portable power packs or power bricks; portable cell phone charging device.
The registered mark is RABBIT CHARGER for Battery chargers; battery chargers for use with telephones; cell phone battery chargers.
A. Similarity 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
Both the applicant’s and registrant’s marks share the identical term “RABBIT”. The applicant’s mark is comprised of only that singular term. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
This is even more true when the only difference between the two marks is the deletion of the generic term “CHARGER” from the registrant’s mark. Specifically, this term is disclaimed and the registrant’s goods are chargers, so this term adds very little trademark significance to the cited registration. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
For these reasons, the marks are confusingly similar.
B. Similarity of Goods/Services
The goods and/or services of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
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).
Although the applicant’s and registrant’s goods are not identical, they essentially recite the same goods in slightly different ways. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registration(s) use(s) broad wording to describe battery chargers, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow Battery chargers for mobile phones; Battery chargers for use with mobile phones, iPads and other tablets, and any device that charges by micro USB, apple lightning. or USB-C connections; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; portable battery chargers; portable power packs or power bricks; portable cell phone charging device. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
C. Conclusion
Thus, upon encountering applicant’s mark RABBIT on Battery chargers for mobile phones; Battery chargers for use with mobile phones, iPads and other tablets, and any device that charges by micro USB, apple lightning. or USB-C connections; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; portable battery chargers; portable power packs or power bricks; portable cell phone charging device and registrant’s mark RABBIT CHARGER on Battery chargers; battery chargers for use with telephones; cell phone battery chargers, consumers are likely to be confused and mistakenly believe that the respective goods/services emanate from a common source.
D. Options for Response
The stated refusal refers to the following goods and/or services in International Class 9 only, and does not bar registration for the other goods and/or services: Battery chargers for mobile phones; Battery chargers for use with mobile phones, iPads and other tablets, and any device that charges by micro USB, apple lightning. or USB-C connections; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; portable battery chargers; portable power packs or power bricks; portable cell phone charging device.
(1) Deleting the goods and/or services 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 for those goods or services 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 for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
POTENTIAL LIKELIHOOD OF CONFUSION – PRIOR PENDING APPLICATION
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 mark in the referenced application. 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.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF GOODS – Partial Requirement
THIS PARTIAL REQUIREMENT APPLIES TO CLASS(ES) 9 ONLY, BUT ONLY TO THE GOODS SPECIFIED THEREIN
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant may substitute the following wording, if accurate (changes underlined; acceptable wording shown in bold typeface):
Battery chargers for mobile phones; Battery chargers for use with mobile phones, tablets, and any device that charges by micro USB, USB-C and other electrical connections; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; portable battery chargers; portable power packs or power bricks in the nature of portable chargers for electronic devices that charges using USB connections; portable cell phone charging device; Downloadable mobile application for use in locating, reserving and renting bicycles, scooters, and electric vehicles; Downloadable mobile application for coordinating, managing, and accessing sharing and rental programs for bicycles, scooters, and electric vehicles; downloadable software for arranging, management and communication of payments and payment information for rental and use of bicycles, scooters, and electric vehicles; Downloadable mobile application featuring data collection and management during rental of bicycles, scooters, and electric vehicles by end users and for display, viewing, and comparison of transportation journeys; downloadable computer software permitting users to access information for operation of locks and to access and use physical assets with locks; downloadable software for use in geolocation, management, and use of physical assets via smartphones; downloadable computer software in the field of share programs for autonomous and user-operated personal vehicles, namely, scooters and bicycles; downloadable computer software for creating and managing a share account for personal vehicles, namely, scooters, bicycles; downloadable computer software for identifying availability and locations of personal vehicles, namely, scooters and bicycles; downloadable computer software for reserving and renting personal vehicles, namely, scooters and bicycles; downloadable computer software for purchasing passes and memberships for use of personal vehicles, namely, scooters and bicycles; downloadable computer software for providing planning routes, viewing maps, ride statistics and trip history for personal vehicles, namely, scooters and bicycles; downloadable computer software for receiving ride notifications for personal vehicles, namely, scooters and bicycles; downloadable computer software for operating share systems for personal vehicles, namely, scooters and bicycles
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.
RESPONSE GUIDELINES & INFORMATION REGARDING INQUIRIES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Jennifer H. Dixon/
Trademark Examining Attorney
Law Office 110
571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)
RESPONSE GUIDANCE