To: | Shenzhen YouMe Information Technology Co ETC. (lanwayipr@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88854896 - JK - TUS205583 |
Sent: | June 23, 2020 05:36:14 PM |
Sent As: | ecom122@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88854896
Mark: JK
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Correspondence Address:
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Applicant: Shenzhen YouMe Information Technology Co ETC.
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Reference/Docket No. TUS205583
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: June 23, 2020
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.
SUMMARY OF ISSUES
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. 4850329 (JK MODS). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Applicant has applied to register the mark JK with stylization for “Boxes for electronic cigarettes and electronic cigarette accessories; Cartridges sold filled with propylene glycol for electronic cigarettes; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Devices for heating tobacco substitutes for the purpose of inhalation; Devices for heating tobacco for the purpose of inhalation; Electronic cigarette atomizers sold empty; Electronic cigarette lanyards; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes for use as an alternative to traditional cigarettes; Filter tips; Liquid nicotine solutions for use in electronic cigarettes; Mechanical electronic cigarettes; Smokers' mouthpieces for electronic cigarettes, cigars, cigarettes” in International Class 34.
The registered mark, owned by Kunak II, James Anthony, is JK MODS in standard characters for “Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe” in International Class 34.
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 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).
The presence of the term MODS in the cited mark is not sufficient to obviate the similarities rendered by the shared JK element. 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). The attached registration for JK MODS shows that the term MODS has been disclaimed. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording JK the more dominant element of the registered mark.
The minor stylization elements in applicant’s mark, which consists of a simple font and a circular carrier, is also insufficient to overcome the similarities between the word portions. 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)).
Therefore, the dominant and only distinctive element of the cited registered mark is identical to the only literal element of the applied-for mark, and these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). For this reason, purchasers encountering the applied-for and registered marks are likely to believe that they identify a single source. Thus, the marks are confusingly similar.
Relatedness of Goods
Here, applicant’s goods, “Boxes for electronic cigarettes and electronic cigarette accessories; Cartridges sold filled with propylene glycol for electronic cigarettes; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Devices for heating tobacco substitutes for the purpose of inhalation; Devices for heating tobacco for the purpose of inhalation; Electronic cigarette atomizers sold empty; Electronic cigarette lanyards; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Electronic cigarettes for use as an alternative to traditional cigarettes; Filter tips; Liquid nicotine solutions for use in electronic cigarettes; Mechanical electronic cigarettes; Smokers' mouthpieces for electronic cigarettes, cigars, cigarettes,” are closely related to registrant’s goods, “Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe.”
In this case, both the registration and application identify electronic devices that are used as alternatives to traditional cigarettes. The attached Internet evidence, consisting of webpage printouts from Halo, Joyetech and Vaporx, establishes that the same entity commonly produces the relevant goods under the same mark and sells these goods through the same trade channels to the same classes of consumers in the same fields of use. That is, businesses that manufacture oral vaporizers for smoking commonly also manufacture a wide variety of electronic cigarettes, e-liquids, and accessories. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, since the marks are confusingly similar and the goods are closely related, purchasers are likely to mistakenly believe that they emanate from a common source. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
TRANSLATION STATEMENT NOT PRINTED – ADVISORY
Applicant is advised that the negative translation statement will not be printed on the registration certificate, as the applied-for mark does not contain any non-English wording. See TMEP §809.
NEGATIVE NAME / PORTRAIT / SIGNATURE CONSENT NOT PRINTED – ADVISORY
Applicant is advised that the negative name/portrait/signature consent statement will not be printed on the registration certificate, as the applied-for mark does not contain any name or portrait that would be reasonably perceived as that of a particular living individual. See TMEP §1206.05.
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.
Young Wolfe
/Young Wolfe/
Trademark Examining Attorney
Law Office 122
571-272-5579
young.wolfe@uspto.gov
RESPONSE GUIDANCE