Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  February 01, 2021

 

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:

 

• Search Advisory
• Pending Section 2(d) Refusal – Pending Application
• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods
• Multi-Class Advisory

 

SEARCH ADVISORY

 

Applicant is advised that the trademark examining attorney may perform a further a search of the USPTO database of registered and pending marks when applicant clarifies the number of classes for which registration is sought and ensures the required filing fees for all specified classes have been paid.  See TMEP §§810.01.

 

 

PRIOR-FILED APPLICATIONS

 

The filing and effective filling dates of pending U.S. Application Serial Nos. 88912752, 90055377, 79301159, and 87711076 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to the following refusals and the requirements within six months of the mailing date of this Office action to avoid abandonment.

 

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 Nos. 6227644.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Standard of Analysis for Section 2(d) Refusal

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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.  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. 

 

Facts

 

Applicant has applied to register the mark PROJUMP for use on “Batteries and battery chargers; Battery charge devices; Battery chargers; Battery chargers for use with vehicle batteries, storage batteries and batteries for powering portable or hand held devices such as devices which receive power through USB, micro USB, mini USB, USB-A, and/or USB-C connections; computers; mobile phones; calculators; personal digital assistants; gaming consoles; camcorders; voice recorders; video players; cameras; electronic laser measuring devices; electronic wristwatches and timers; flashlights and lanterns; Battery charging devices for motor vehicles; Battery jump starters; Chargers for batteries; Chargers for electric batteries; Jumper cables; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, devices which receive power through USB, micro USB, mini USB, USB-A, and/or USB-C connections; computers; mobile phones; calculators; personal digital assistants; gaming consoles; camcorders; voice recorders; video players; cameras; electronic laser measuring devices; electronic wristwatches and timers; Electrical storage batteries; Nickel-cadmium storage batteries; Rechargeable electric batteries” in International Class 09.

 

Registrant’s mark is THEPRO (in standard characters) for “Batteries and battery chargers; Battery charge devices; Battery chargers; Battery jump starters; Battery packs; Battery testers; Emergency auto kits comprised of a battery charger and a hand held spotlight; Power inverters; Rechargeable electric batteries; Renewable battery system to provide backup power” in International Class 09.

 

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).

 

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).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In this case, applicant’s proposed mark is confusingly similar to the registered mark(s) because the marks share the dominant word PRO, which may be pronounced or displayed identically, thereby creating similarities in sound, appearance, and commercial impression.

 

While applicant’s proposed mark and registrant’s mark also contain additional wording, this wording does not obviate the similarities between the marks. 

 

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 attached dictionary evidence shows that the wording JUMP in the applied-for mark is merely descriptive of or generic for the purpose or use for applicant’s goods, namely, batteries for a  “jump-start of a motor vehicle.”  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording PRO the more dominant element of the mark.

 

Also, when comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).

 

Also, consumers are often known to use shortened forms of names, and it is highly likely that applicant’s and registrant’s mark would be referred to as the PRO range of goods.  Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring:  “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”).   

 

Indeed, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that applicant’s goods sold under the “PROJUMP” mark constitute a new or additional product line from the same source as the goods sold under the “THEPRO” mark with which they are acquainted or familiar, and that applicant’s proposed mark is merely a variation of registrant’s mark.  See, e.g., SMS, Inc. v. Byn-Mar Inc., 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer’s preexisting mark [ANDREA SIMONE] for its established line of clothing.”).

 

Therefore, the marks are confusingly similar. 

 

Relatedness of Goods

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods in the application and registration(s) are identical as to “battery jump starters; battery chargers; battery charge devices.”  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

The registration also uses broad wording to describe “Batteries and battery chargers; Battery charge devices; Battery chargers; Battery packs; Battery testers; Emergency auto kits comprised of a battery charger and a hand held spotlight; Power inverters; Rechargeable electric batteries; Renewable battery system to provide backup power,” which presumably encompasses all goods of the type described, including applicant’s narrower “Battery chargers for use with vehicle batteries, storage batteries and batteries for powering portable or hand held devices such as devices which receive power through USB, micro USB, mini USB, USB-A, and/or USB-C connections; Battery charging devices for motor vehicles; Chargers for batteries; Chargers for electric batteries; Electrical storage batteries; Nickel-cadmium storage batteries; Rechargeable electric batteries.”  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 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 are related.

 

To the extent the evidence does not address all of applicant’s goods, relatedness does not have to be established for every good or service in an identification.   It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application.  Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).  In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.

 

In conclusion, because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

Applicant has classified the following goods in International Class 09:  “gaming consoles; flashlights and lanterns.”  However, gaming apparatus is in Class 28 and lighting is in Class 11, respectively.  Applicant will also need to modify the entries for “gaming console” and “lanterns” to make the exact type of good definite as shown below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant has also provided the application fee(s) for only one international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86(a).

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

In addition, as shown below, a number of the wording in the identification of goods is indefinite and must be clarified because applicant must specify the exact nature of the goods to ensure proper classification in Class 09.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, for the entry “Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, devices which receive power through USB, micro USB, mini USB, USB-A, and/or USB-C connections,” applicant must specify the exact type of device because the specific device determines the proper classification.  Accordingly, “cases, holders and stands” for cell phones would be in Class 09, the classification for cell phones and “cases, holders and stands” for gaming devices would be in Class 28 because all game apparatus are in Class 28.  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.

 

Also, the wording “such as” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Finally, applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 09 for “computers; mobile phones; calculators; personal digital assistants; gaming consoles; camcorders; voice recorders; video players; cameras; electronic laser measuring devices; electronic wristwatches and timers.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following wording, if accurate:

 

International Class 09:  Batteries and battery chargers; Battery charge devices; Battery chargers; Battery chargers for use with vehicle batteries, electric storage batteries and batteries for powering portable or hand held devices, namely, devices which receive power through USB, micro USB, mini USB, USB-A, and/or USB-C connections in the nature of {specify exact type of devices}; computers; mobile phones; calculators; personal digital assistants; camcorders; digital voice recorders; video disc players; cameras; electronic laser measuring devices, namely, lasers for measuring; electronic wristwatches being smart watches and timers; Battery charging devices for motor vehicles; Battery jump starters; Chargers for batteries; Chargers for electric batteries; Jumper cables; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, devices which receive power through USB, micro USB, mini USB, USB-A, and/or USB-C connections in the nature of {specify exact type of Class 09 devices [excluding gaming apparatus]}; Electrical storage batteries; Nickel-cadmium storage batteries; Rechargeable electric batteries

 

International Class 11:  Flashlights and lanterns for lighting

 

International Class 28:  {Specify type, e.g., video, handheld, etc.} gaming consoles;

 

Applicant should note that the above bolded language indicate the examining attorney’s suggestions, and the braces indicate where applicant must insert specific types of goods.  The braces should not appear in the amended identification; only the specific goods indicated, as inserted by applicant.  Applicant need not amend its identification other than where specified by bold font.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

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.    

 

 

/Salima Parmar Oestreicher/

Salima Parmar Oestreicher

Examining Attorney

Law Office 108

(571) 272-6786

Salima.Oestreicher@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 01, 2021 for

U.S. Trademark Application Serial No. 90189600

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Salima Parmar Oestreicher/

Salima Parmar Oestreicher

Examining Attorney

Law Office 108

(571) 272-6786

Salima.Oestreicher@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 01, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”