To: | Enerco Group, Inc. (trademarks@tuckerellis.com) |
Subject: | U.S. Trademark Application Serial No. 90042303 - JET - 015461-00033 |
Sent: | October 23, 2020 02:57:38 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90042303
Mark: JET
|
|
Correspondence Address: |
|
Applicant: Enerco Group, Inc.
|
|
Reference/Docket No. 015461-00033
Correspondence Email Address: |
|
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: October 23, 2020
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.
SUMMARY OF ISSUES:
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (4)
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0993940, 2568103, 3145447, 5393953. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Comparison of Marks
Applicant seeks to register JET (standard characters), while the registrants own and use the marks:
FAN-JET (standard characters) (Reg. 0993940)
JET HEAT (standard characters) (Reg. 2568103)
JET VENTILIATION (standard characters) (Reg. 3145477)
DOORJET (standard characters) (Reg. 5393953)
In a likelihood of confusion determination, 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).
Finally, 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the marks of the registrants all contain wording (albeit descriptive) that merely describes features or attributes of the goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording JET the more dominant element of each mark.
Thus, merely omitting some of the wording from the registered marks does 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 the primary term of each registered mark and does not add any wording that would distinguish it from those marks. The registrants’ marks all have a weak, but distinguishable nevertheless, descriptive element that sets them apart from one another. Likelihood of confusion is high.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Comparison of Goods
In addition, 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., 901 F.3d 1367, 1373, 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).
Here both the marks and the goods are nearly identical in look and nature.
Applicant seeks to register its mark JET for “radiant tube heaters.”
The registrants use their marks on:
FAN-JET: ventilating systems for use in the industrial, horticultural and agricultural fields comprising shutter assemblies, fans, air distribution tubes and controls therefor sold as a unit
JET HEAT: portable heaters for commercial and industrial use
JET VENTILIATION: ventilating systems for agricultural buildings, namely, fans and related ducts, discharge structures and controls for circulating and controlling the movement of air within the buildings and discharging air therefrom
DOORJET: Gas fired heaters for use in heating industrial and commercial buildings
The goods are closely related and identical in that applicant’s heating products and heating and ventilation are intimately tied to one another and quite complementary in nature.
In sum, since the marks are highly similar and the goods related and complementary, there is a substantial likelihood that purchasers would be confused as to the source of the goods. As such, the mark is refused under Section 2(d) of the Trademark Act.
If applicant chooses to respond to the refusal to register, applicant must also respond to the following requirement.
REQUIREMENT
IDENTIFICATION OF GOODS UNACCEPTABLE
Applicant may adopt the following wording, if accurate:
Class 011:
Radiant combustion heaters, namely, radiant tube heaters.
Again, 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.
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.
/Tricia Sonneborn/
Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
tricia.sonneborn@uspto.gov
RESPONSE GUIDANCE