JumpDesigns, LLC

Trademark Trial and Appeal Board

Jun 21, 2006

No. 76393986 (T.T.A.B. Jun. 21, 2006)

Mailed: 6/21/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jump Designs, LLC
________

Serial No. 76393986
_______

Peter M. Falkenstein of Jaffe Rait Heuer & Weiss for Jump
Designs, LLC.

Susan Stiglitz, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Jump Designs, LLC to
register the mark JUMP DESIGNS (“DESIGNS” disclaimed) for
“furniture, and goods of various materials, not included in
other classes, in the nature of furnishings, and decorative
and functional appointments, for home, office and
commercial settings, namely, armchairs, beds and bed
frames, bookcases, cabinets, carts, chairs, chests of
drawers, couches, deck chairs, desks, display racks, point
of purchase displays, doors for furniture, plastic and wood
THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76393986
2
figurines, office furniture, living room furniture, bedroom
furniture, lawn furniture, furniture moldings, plastic and
wood sculptures, seats, tables, toy boxes, [and] toy
chests.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark JUMP for “desktop
marker boards, desktop tack boards, clipboards, phone
support trays; document supports for use with office
furniture, namely, document file racks and trays, document
support clips and holders, lap trays for writing, and
support stands for supporting racks, trays, clips and
desktop accessories; and desktop organizers” (in
International Class 16); and “furniture, non-metal storage
bins, and desktop picture frames” (in International Class
20),2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Applicant initially contends that the Section 2(d)

1 Application Serial No. 76393986, filed April 10, 2002, based on
an allegation of a bona fide intention to use the mark in
commerce. Applicant subsequently filed a statement of use
setting forth a date of first use anywhere and a date of first
use in commerce of July 1, 2003.
2 Registration No. 2649803, issued November 12, 2002.
Ser No. 76393986
3
refusal was improperly made inasmuch as it came after
issuance of a notice of allowance and applicant’s filing of
a statement of use. Applicant asserts the following:
[T]he refusal to register--following
the issuance of the Notice of
Allowance--was procedurally defective,
in that it raised no use-related
arguments; cited no new evidence that
had been unavailable to the examining
attorney in her initial review; and was
not based on the “clear error” standard
for a refusal in a post-SOU posture.
In the interim, Applicant had devoted
substantial resources, both creative
and financial, in bringing the Mark to
the marketplace, only to be met by a
belated, second-guess refusal to
register, which, if sustained, would
render all of Applicant’s efforts and
investment moot and cost the Applicant
substantially. (Appeal Brief, p. 3)

Applicant goes on to contend that, in any event, its mark
is not confusingly similar to the cited mark. More
specifically, applicant argues that the marks are
dissimilar, pointing out that the register already includes
many third-party registrations of marks comprising, in
whole or in part, the word JUMP. The presence of JUMP
marks on the register, applicant asserts, serves to weaken
the scope of protection to be accorded to registrant’s
mark. As to the goods, applicant argues only that they
“are not identical.” Applicant also contends that
registrant only uses JUMP as part of the mark JUMP STUFF,
Ser No. 76393986
4
and that its review of registrant’s website shows that
there is no use of JUMP per se. In support of its
position, applicant submitted a list of third-party
registrations retrieved from the TESS database, copies of
certain third-party registrations, and excerpts from its
website, as well as from registrant’s website.
The examining attorney asserts that in view of the
abandonment of applicant’s application and the subsequent
revival thereof as a result of the grant of a petition to
revive, a second search was conducted. The examining
attorney contends that it would have been “clear error” not
to cite registrant’s mark against the involved application,
and the refusal accordingly was made. Insofar as the
substantive Section 2(d) refusal is concerned, the
examining attorney states that the dominant feature of
applicant’s mark, namely the JUMP portion, is identical to
the entirety of the cited mark. As to the goods, the
examining attorney maintains that the goods are, in part,
identical. Finally, the examining attorney objects to the
untimely submission of certain exhibits attached to
applicant’s appeal brief. In support of the refusal, the
examining attorney submitted a dictionary definition of
“design”; excerpts retrieved from the NEXIS database
showing the term “design(s)” used in connection with
Ser No. 76393986
5
furniture; and numerous use-based third-party registrations
to show that the goods involved herein are of type that may
emanate from a single source under a single mark.
Before turning to the merits of the appeal, there are
evidentiary matters requiring our attention. In its
November 29, 2004 response, applicant referred to three
third-party JUMP and JUMP-formative registrations. The
examining attorney, in her January 18, 2005 final refusal,
indicated that the mere listing of the registrations was
insufficient to make them of record. Applicant, with its
appeal brief, submitted printouts of these registrations
taken from the Office’s TESS database, accompanied by
printouts of six additional third-party registrations.
Applicant further submitted with its appeal brief a list
(rather than complete registration information) retrieved
from the TESS database showing hundreds of third-party JUMP
and JUMP-formative registered marks and applied-for marks.
This printout shows only the registration number and/or
application number and the mark, and whether the
registration or application is “live” or “dead.” The
examining attorney, in her brief, indicated that the
evidence accompanying applicant’s brief was not timely made
of record. However, she went on to state that she did not
object, in spite of the untimely submission, to the copies
Ser No. 76393986
6
of the nine third-party registrations. Accordingly, the
TESS printouts of the nine third-party registrations are
considered part of the record for determining the merits of
this appeal.
With respect to the TESS printout consisting of only a
list of third-party registrations, this submission, as
pointed out by the examining attorney, is untimely.
Trademark Rule 2.142(d) states that the record in an
application should be complete prior to the filing of an
appeal. Moreover, the mere submission of a listing from
the TESS database is insufficient to make the referenced
registrations of record. To make a third-party
registration of record, a copy of the registration, either
a copy of the paper USPTO record, or a copy taken from the
electronic records of the Office, should be submitted. In
re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456
n. 2 (TTAB 1998). See TBMP § 1208.02 (2d ed. rev. 2004).
Accordingly, the list retrieved from the TESS database has
not been considered. We hasten to add that, in any event,
the list would not compel a different result in this case.
The list does not show the goods and/or services covered by
the registrations. Therefore, it has extremely limited
probative value, since we cannot determine whether the
marks are for goods and services similar to those of
Ser No. 76393986
7
applicant and registrant. In this connection, even
complete copies of third-party registrations covering goods
and/or services far removed from the goods of applicant and
registrant would be irrelevant to the present likelihood of
confusion analysis. See Conde Nast Publications, Inc. v.
American Greetings Corp., 329 F.2d 1012, 141 USPQ 249, 252
(CCPA 1964).
As to the Internet evidence, certain pages from
applicant’s and registrant’s websites were timely submitted
during the prosecution phase. These have been considered
in making our decision. Applicant, in connection with its
argument that registrant does not actually use the mark
JUMP per se, also relied upon additional pages retrieved
from registrant’s website, as well as from the websites of
certain vendors of registrant’s goods. This evidence was
submitted for the first time with the appeal brief, and the
examining attorney objected to its untimely submission.
The objection is sustained, and the additional evidence has
not been considered. Trademark Rule 2.142(d). Even if
considered, however, the evidence is irrelevant to our
determination in this appeal (see discussion, infra).
We now turn to the procedural point raised by
applicant. Applicant claims that the refusal is
“procedurally defective” because the Section 2(d) refusal
Ser No. 76393986
8
was made belatedly after issuance of the notice of
allowance and submission of its statement of use; and that
the examining attorney did not indicate that the failure to
issue the refusal would be a “clear error” or that the
refusal was based on use-related issues.3 Applicant
contends that the examining attorney should not be allowed
“a second bite of the apple.” In making its arguments,
applicant also states the following:
Applicant is aware that challenges to
the application of the clear error
standard must be brought by way of
petition to the Director. (TMEP §
1109.08.) Here, however, because there
is no assertion in the Office Action
that the refusal to register was based
on application of the clear error
standard, there is no basis to petition
the Director. Applicant cannot be
expected to read the mind of the
examining attorney and create an issue
to contest that is not raised by the
Office Action itself. (Appeal Brief,
p. 5, n. 3)

Applicant is correct in stating that the Office action
dated June 8, 2004, wherein the Section 2(d) refusal was
raised for the first time, did not mention “clear error.”
The examining attorney merely stated the following: “This
letter responds to the Applicant’s Petition to Revive and

3 As already noted, the examining attorney conducted a second
search after the application was revived following the grant of a
petition to revive. See TMEP § 718.08 (4th ed. 2005).
Ser No. 76393986
9
Statement of Use. The Applicant’s Petition to Revive has
been granted; accordingly, examination is resumed. Please
see below for a new issue.” The examining attorney then
went on to raise the Section 2(d) refusal.
The fact that there was not a statement in the Office
action that the Section 2(d) refusal was made under the
“clear error” standard does not excuse applicant for its
failure to follow the proper procedure in seeking review.4
Given the procedural posture of the application, it should
have been obvious to applicant that the examining attorney
made the Section 2(d) refusal under the “clear error”
standard. See TMEP § 1109.08 (4th ed. 2005) [“The Office
will not issue any refusal under § 2(d) in the examination
of the statement of use unless the failure to issue the
refusal constitutes a clear error.”].
In any event, the Board has in the past stated that
questions involving the applicability of the “clear error”
standard are the subject matter of a petition to the
Director, and are not proper for consideration by way of an
appeal to the Board. In the case of In re Sambado & Son

4 Because the Trademark Rules of Practice do not provide an
express deadline to cover the present situation, applicant was
required to file any petition within two months of the date of
mailing of the Office action wherein the Section 2(d) refusal was
first raised. Trademark Rule 2.146(d). See also TMEP § 1705.04
(4th ed. 2005).
Ser No. 76393986
10
Inc., 45 USPQ2d 1312, 1314-15 (TTAB 1997), the Board
stated:
[T]he question of whether the clear
error standard was properly applied is
a procedural one arising out of
examination practice. The Examination
Organization makes the determination of
“clear error,” which determination
ultimately is properly reviewable on
petition to the Commissioner. The
Board’s determination on appeal is to
be limited to the correctness of the
underlying substantive refusal to
register. The Board will not second
guess the Examining Organization’s
procedural determination, that is, the
latter’s application of the “clear
error” standard. As noted, the
application of the “clear error”
standard is, in this context, a
procedural decision (one that answers
the question, “Should a new refusal be
made and defended by the Examining
Attorney?”).
*****
We recognize that this leaves applicant
without an answer to the question of
whether, in this case, the Examining
Attorney properly applied the “clear
error” standard. However, applicant
itself did not take advantage of the
proper procedure for review of the
“clear error” determination. As noted
above, applicant’s petition was
dismissed as premature, having been
taken from a nonfinal action. Thus,
the proper procedure would have been
for applicant to file a petition after
issuance of the final refusal.
Applicant failed to do so, and the
Board will not, on this appeal, review
the Examining Attorney’s application of
the “clear error” standard.

Ser No. 76393986
11
In addition, TMEP § 1109.08 (4th ed. 2005) provides
that the Board, on appeal, “will review only the
correctness of the underlying substantive refusal of
registration. The Board will not second-guess the
application of the ‘clear error’ standard. The question of
whether the examining attorney properly applied the ‘clear
error’ standard is reviewable on petition under 37 C.F.R.
§2.146.”
In view of the above, the Board will not consider the
merits of applicant’s argument that the refusal is
procedurally deficient under the “clear error” standard.
We now turn to consider the substantive refusal of
registration under Section 2(d). Our determination of the
issue of likelihood of confusion is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also:
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
Ser No. 76393986
12
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Insofar as the goods are concerned, it is well settled
that the question of likelihood of confusion must be
determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods identified in
the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the
application at issue and/or in the cited registration are
broadly identified as to their nature and type, such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Further, it is not necessary that the respective
goods be identical or competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
Ser No. 76393986
13
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
In comparing the goods, we focus our attention on the
fact that both applicant’s and registrant’s identifications
of goods include “furniture.” Applicant’s attempt to
distinguish its furniture from registrant’s furniture is to
no avail. Registrant’s furniture is not limited in any way
as to nature, type, use or purpose and, thus, is broad
enough to encompass the type of furniture sold by
applicant. When construed as such, the goods are, in part,
legally identical. Likelihood of confusion must be found
if there is likelihood of confusion involving any item that
comes within the identification of goods in the involved
application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). It is
therefore unnecessary to rule as to whether each of the
other items set forth in the involved application are so
Ser No. 76393986
14
related to those in the cited registration that confusion
would be likely.5
Given that applicant’s and registrant’s “furniture” is
legally identical, we assume that these goods travel in the
same channels of trade (e.g., retail furniture stores), and
that the same classes of purchasers buy these goods.
We next turn to consider the marks. In determining
the similarity or dissimilarity of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the

5 We note, however, that some of the goods are related. In
particular, applicant’s identification includes items such as
office furniture and desks, while registrant’s identification
includes desk accessories and other items for use with office
furniture. In this connection, the examining attorney introduced
numerous use-based third-party registrations showing that each of
those registrants adopted a single mark for these types of goods.
Third-party registrations that individually cover different items
and that are based on use in commerce serve to suggest that the
listed goods and/or services are of a type that may emanate from
a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988).
Ser No. 76393986
15
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Finally, where, as in the present case, the marks appear
on, at least in part, legally identical goods, the degree
of similarity between the marks that is necessary to
support a finding of likely confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
The marks involved herein, JUMP and JUMP DESIGNS, are
similar in sound, appearance, meaning and overall
commercial impression. Both begin with the identical,
arbitrary term JUMP, and applicant has merely added a
descriptive, disclaimed term to its mark. The term
“design” is defined, in pertinent part, as “the purposeful
or inventive arrangement of parts or details: furniture of
simple but elegant design; something designed, especially a
decorative or an artistic work; an ornamental pattern.”
The American Heritage Dictionary of the English Language
(3d ed. 1992). The descriptiveness of the term “design(s)”
when used in connection with furniture is further evidenced
by the NEXIS excerpts showing widespread use of the term in
describing furniture. This use is consistent with the
commonly understood meaning of the term cited above. Given
the descriptiveness of this term for applicant’s goods, and
Ser No. 76393986
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the fact that it has been disclaimed, the additional word
“DESIGNS” in applicant’s mark does not serve to distinguish
it from registrant’s mark. The general rule is that a
subsequent user may not appropriate the entire mark of
another and avoid a likelihood of confusion by adding
descriptive or subordinate matter thereto. Thus, “if the
dominant portion of both marks is the same, the confusion
may be likely notwithstanding peripheral differences.”
TMEP § 1207.01 (b)(iii) (4th ed. 2005). See, e.g., Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002) [HEWLETT PACKARD and PACKARD
TECHNOLOGIES]; In re El Torito Restaurants Inc., 9 USPQ2d
2002 (TTAB 1988) [MACHO and MACHO COMBOS]; In re Equitable
Bancorporation, 229 USPQ 709 (TTAB 1986) [RESPONSE and
RESPONSE CARD]; and In re Corning Glass Works, 229 USPQ 65
(TTAB 1985) [CONFIRM and CONFIRMCELLS]. The present case
is no exception.
In comparing the marks, we have not ignored the
descriptive and disclaimed “DESIGNS” portion of applicant’s
mark. Indeed, we have considered applicant’s mark JUMP
DESIGNS in its entirety, and find that this mark is
substantially similar to registrant’s mark JUMP in sound,
appearance, meaning and commercial impression.
Ser No. 76393986
17
In attempting to distinguish the marks, applicant
points to the existence of nine third-party registrations
of JUMP and JUMP-formative marks. Applicant essentially
argues that if these three respective “sets” of JUMP marks
(each “set” covering goods and/or services that are,
according to applicant, related and in the same field) can
coexist on the register, then applicant’s and registrant’s
marks likewise can coexist without likelihood of confusion.
The third-party registration evidence does not
persuade us that confusion is not likely. Firstly, the
registrations are not evidence of use of the marks shown
therein. Thus, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
existence of similar marks in the marketplace, and as a
result are able to distinguish between the JUMP marks based
on slight differences between them. Smith Bros. Mfg. Co.
v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973);
and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ
989 (TTAB 1982). Secondly, and more significantly, the
three “sets” of registrations are for 1) computer-type
services, 2) beverages, and 3) athletic shoes, which
goods/services are not even remotely related to the goods
involved herein. See Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d unpub.,
Ser No. 76393986
18
(Appeal No. 92-1086, Fed. Cir., June 5, 1992). The fact
that these registrations for goods and services in other
fields may coexist is of no moment. As the examining
attorney stated, “[t]he fact that a mark may be weak enough
in one field to permit the registration of similar marks
does not mean that the same mark must necessarily be
registered in all other fields and for all other goods and
services.” (Brief, p. 7). The record before us shows that
the only JUMP mark registered in the furniture field is
registrant’s mark.
With respect to conditions of sale, we recognize that
some furniture items may be expensive and are bought after
deliberation. On the other hand, the identification of
“furniture” in both the application and registration can
encompass inexpensive furniture items that may be purchased
on impulse or without great care. While there is no
evidence on this du Pont factor, even assuming that
purchases are carefully made, we find that the substantial
similarity of the marks and the identity of the goods
clearly outweigh any sophisticated purchasing decision.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12
USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990) [similarities of goods and marks outweigh
Ser No. 76393986
19
sophisticated purchasers, careful purchasing decision, and
expensive goods].
Applicant also attacks the registered mark by arguing
that registrant actually uses the mark JUMP STUFF, and not
the registered mark JUMP. Applicant’s allegations
constitute an impermissible collateral attack on
registrant’s registration. Section 7(b) of the Trademark
Act provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the
validity of the registration, of the registrant’s ownership
of the mark and of the registrant’s exclusive right to use
the mark in connection with the goods or services
identified in the certificate. During ex parte
prosecution, including an ex parte appeal, an applicant
will not be heard on matters that constitute a collateral
attack on the cited registration (e.g., a registrant’s
nonuse of the mark). In re Dixie Restaurants, 41 USPQ2d at
1534; and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5
(TTAB 1992). See TMEP § 1207.01(d)(iv) (4th ed. 2005). We
would add that, in any event, we are bound to consider the
mark in the cited registration, JUMP, and not any other
mark which registrant may or may not also use.
Accordingly, no consideration has been given to applicant’s
arguments in this regard.
Ser No. 76393986
20
We conclude that consumers familiar with registrant’s
furniture and desktop accessories sold under its arbitrary
mark JUMP would be likely to believe, upon encountering
applicant’s various items of furniture and decorative and
functional appointments for home, office and commercial
settings sold under the mark JUMP DESIGNS, that the goods
originated with or are somehow associated with or sponsored
by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.