| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86042646 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86042646/mark.png |
| LITERAL ELEMENT | POWER PACK |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Dear Ms. Stoides: In response to the Examining Attorney’s Action No. 1 dated September 29, 2013, Bumble Bee Foods, LLC (“Applicant”) submits the following information: 1. LIKELIHOOD OF CONFUSION REFUSAL The Examining Attorney has refused registration under Lanham Act Section 2(d) by stating that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,121,776 for POWERPAK for use in relation to: “Class 029: meat” owned by SF Investments, Inc. as to be likely to cause confusion, or to cause mistake, or to deceive. The Examining Attorney generally must consider a two part test to determine whether a likelihood of confusion exists. First, the trademarks in their entireties are compared for similarities in appearance, sound, connotation and commercial impression. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the Examining Attorney must compare the goods and services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). 1. The Trademarks are Dissimilar At the outset, it should be noted that while the Examining Attorney cites Registrant's trademark as POWERPACK, the trademark at issue is actually POWERPAK. As such, the Examiner's assertion that the only difference between the two trademarks is the space is incorrect. In fact, in addition to the space, Applicant's trademark contains a "C" while Registrant's trademark does not. Beyond this, it is well settled that if the trademarks at issue are not similar as to appearance, sound, connotation, and commercial impression, then no confusion in likely. Kellogg Company v. Pack'em Enterprises, 951 F.2d 330, 21 USPQ 2d 1142 (Fed. Cir. 1991). It has been found that "the use of identical, even dominant, words in common does not automatically mean that two marks are similar.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir.1987). In the present case, while Registrant’s and Applicant’s trademarks each contain the words “POWER” and some version of a word sounding like "PACK", the trademarks still do not appear the same. First, the trademarks POWER PACK and POWERPAK do not look the same because one uses the conventional spelling of both "POWER" and "PACK" and the other takes a non-customary approach by combining the word POWER with "PAK". The trademarks are further dissimilar in appearance because POWER PACK is comprised of two separate words with a space and is comprised of nine letters, while Registrant's trademark appears as one word with eight letters. The commercial impression of the two trademarks is also different because POWER PACK connotes a conventional expression while POWERPAK is one word spelled in an unconventional way. Thus, since one is more literal and the other requires more guesswork as to what type of product might be at issue, the commercial impression of the two trademarks is different.
While Registrant's POWERPAK trademark is for meat, Applicant is seeking registration of its trademark in relation to "Frozen sandwiches comprised of bread with tuna salad or chicken salad." Thus, the goods at issue are clearly different. The USPTO seems to have recognized this difference through its own classification system which renders Applicant's goods as belonging in Class 030 and Registrants goods in Class 029. Also, though Applicant's products may contain meat, unlike Registrant's products they are not only meat. Rather, the POWER PACK trademark is used in connection to frozen sandwiches, comprised of bread and tuna or chicken salad to be eaten as a meal. It seems unlikely that consumers would be confused in mistaking meat products for ready-made frozen sandwiches. In addition to the differences in the goods themselves, the channels of trade of the two products are very different. As evidenced by Exhibit "A" and a declaration by Jennifer Hayes, Applicant's products will be sold exclusively through school lunch programs. Thus, while Applicant's customers are food service providers of school lunches, Registrant appears to sell its goods directly to shoppers at retail stores. See Exhibit "B". Consequently, the marketing and trade channels of the goods are also different making confusion among consumers very unlikely.
Whether a trademark is classified as “strong” or “weak” is an important element in deciding whether a likelihood of confusion exists. Independent Grocers' Alliance Distributing Co. v. Potter-McCune Co., 404 F.2d 622, 160 U.S.P.Q. 46 (C.C.P.A. 1968).
Elements of a trademark may be “weak” if the elements are laudatory, descriptive, or if the elements are in common use by many other sellers in the market. Colgate-Palmolive Co. v.
Carter-Wallace, Inc., 432 F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970). In the present case, the words “POWER” and "PACK" or "PAK" are commonly used words. At least 334 trademark
applications containing the terms POWER and PACK or PAK have been filed with the USPTO and at least 90 of those are live. See Exhibit "C”. Furthermore, by approving for registration the trademarks listed below in addition to Registrant's trademark, the USPTO has determined that many “POWERPACK” trademarks are able
to coexist in classes having to do with food. 1) POWER PAKS, Reg. No. 3,158,214, for nutritional supplements; 2) POWER PAK MEALS (+Design), Reg. No. 4,349,162, for catering services and preparation of food and beverages; 3) KING POWER PAK, Reg. No. 3,946,612 for nutritional supplements; 4) DAILY POWER PAKS, Reg. No. 3,536,282 for nutritional supplements; and 5) POWERPACK, Reg. No. 2,468,514, for packaging machinery, namely automatic stretch wrapping machines for perishable food products. See Exhibit "D". Since the words “POWER” and "PACK" or "PAK" are commonly used in relation to food products and other similar goods, any one Registrant has very little right to exclude others from using the words. Thus, Registrant's POWERPAK is entitled to only a narrow scope of legal protection and Applicant’s trademark should also be allowed registration. SUMMARY Applicant requests that the Examining Attorney: (i) withdraw the 2(d) refusal; and (ii) approve the Application for publication. We welcome an opportunity to discuss this matter further with the Examining Attorney. Please advise us if we can provide any further information that will facilitate the publication and registration of the mark. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS\EXPORT16\IMAGEOUT 16\860\426\86042646\xml4\ ROA0002.JPG |
| ORIGINAL PDF FILE | evi_207137750-185704210_._POWER_PACK_Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0003.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_207137750-185704210_._POWER_PACK_Exhibit_C.pdf |
| CONVERTED PDF FILE(S) (18 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0005.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0009.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0010.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0011.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0012.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0013.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0014.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0015.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0016.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0017.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0018.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0019.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0020.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0021.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0022.JPG | |
| ORIGINAL PDF FILE | evi_207137750-185704210_._POWER_PACK_Exhibit_D.pdf |
| CONVERTED PDF FILE(S) (10 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0023.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0024.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0025.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0026.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0027.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0028.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0029.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0030.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0031.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0032.JPG | |
| ORIGINAL PDF FILE | evi_207137750-185704210_._Declaration_of_Jennifer_Hayes_POWER_PACK_3-21-14.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0033.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0034.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\426\86042646\xml4\ROA0035.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Supporting documentation as described in Response to Office Action |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jam/ |
| SIGNATORY'S NAME | Joseph A. Mandour |
| SIGNATORY'S POSITION | Attorney of Record, CA Bar Member |
| DATE SIGNED | 03/24/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 24 13:22:41 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.X.XX-20 140324132241778309-860426 46-50040bfaad6672bfa1b96b 1b75b62dfd096654817931d78 48a03e9fe8a99aec78c8-N/A- N/A-20140321185704210398 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Dear Ms. Stoides:
In response to the Examining Attorney’s Action No. 1 dated September 29, 2013, Bumble Bee Foods, LLC (“Applicant”) submits the following information:
1. LIKELIHOOD OF CONFUSION REFUSAL
The Examining Attorney has refused registration under Lanham Act Section 2(d) by stating that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,121,776 for POWERPAK for use in relation to: “Class 029: meat” owned by SF Investments, Inc. as to be likely to cause confusion, or to cause mistake, or to deceive.
The Examining Attorney generally must consider a two part test to determine whether a likelihood of confusion exists. First, the trademarks in their entireties are compared for similarities in appearance, sound, connotation and commercial impression. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the Examining Attorney must compare the goods and services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
1. The Trademarks are Dissimilar
At the outset, it should be noted that while the Examining Attorney cites Registrant's trademark as POWERPACK, the trademark at issue is actually POWERPAK. As such, the Examiner's assertion that the only difference between the two trademarks is the space is incorrect. In fact, in addition to the space, Applicant's trademark contains a "C" while Registrant's trademark does not.
Beyond this, it is well settled that if the trademarks at issue are not similar as to appearance, sound, connotation, and commercial impression, then no confusion in likely. Kellogg Company v. Pack'em Enterprises, 951 F.2d 330, 21 USPQ 2d 1142 (Fed. Cir. 1991). It has been found that "the use of identical, even dominant, words in common does not automatically mean that two marks are similar.” Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir.1987).
In the present case, while Registrant’s and Applicant’s trademarks each contain the words “POWER” and some version of a word sounding like "PACK", the trademarks still do not appear the same. First, the trademarks POWER PACK and POWERPAK do not look the same because one uses the conventional spelling of both "POWER" and "PACK" and the other takes a non-customary approach by combining the word POWER with "PAK". The trademarks are further dissimilar in appearance because POWER PACK is comprised of two separate words with a space and is comprised of nine letters, while Registrant's trademark appears as one word with eight letters.
The commercial impression of the two trademarks is also different because POWER PACK connotes a conventional expression while POWERPAK is one word spelled in an unconventional way. Thus, since one is more literal and the other requires more guesswork as to what type of product might be at issue, the commercial impression of the two trademarks is different.
While Registrant's POWERPAK trademark is for meat, Applicant is seeking registration of its trademark in relation to "Frozen sandwiches comprised of bread with tuna salad or chicken salad." Thus, the goods at issue are clearly different. The USPTO seems to have recognized this difference through its own classification system which renders Applicant's goods as belonging in Class 030 and Registrants goods in Class 029.
Also, though Applicant's products may contain meat, unlike Registrant's products they are not only meat. Rather, the POWER PACK trademark is used in connection to frozen sandwiches, comprised of bread and tuna or chicken salad to be eaten as a meal. It seems unlikely that consumers would be confused in mistaking meat products for ready-made frozen sandwiches.
In addition to the differences in the goods themselves, the channels of trade of the two products are very different. As evidenced by Exhibit "A" and a declaration by Jennifer Hayes, Applicant's products will be sold exclusively through school lunch programs. Thus, while Applicant's customers are food service providers of school lunches, Registrant appears to sell its goods directly to shoppers at retail stores. See Exhibit "B". Consequently, the marketing and trade channels of the goods are also different making confusion among consumers very unlikely.
Whether a trademark is classified as “strong” or “weak” is an important element in deciding whether a likelihood of confusion exists. Independent Grocers' Alliance Distributing Co. v. Potter-McCune Co., 404 F.2d 622, 160 U.S.P.Q. 46 (C.C.P.A. 1968).
Elements of a trademark may be “weak” if the elements are laudatory, descriptive, or if the elements are in common use by many other sellers in the market. Colgate-Palmolive Co. v.
Carter-Wallace, Inc., 432 F.2d 1400, 167 U.S.P.Q. 529 (C.C.P.A. 1970).
In the present case, the words “POWER” and "PACK" or "PAK" are commonly used words. At least 334 trademark
applications containing the terms POWER and PACK or PAK have been filed with the USPTO and at least 90 of those are live. See Exhibit "C”. Furthermore, by approving for registration the trademarks listed below in addition to Registrant's trademark, the USPTO has determined that many “POWERPACK” trademarks are able
to coexist in classes having to do with food.
1) POWER PAKS, Reg. No. 3,158,214, for nutritional supplements;
2) POWER PAK MEALS (+Design), Reg. No. 4,349,162, for catering services and preparation of food and beverages;
3) KING POWER PAK, Reg. No. 3,946,612 for nutritional supplements;
4) DAILY POWER PAKS, Reg. No. 3,536,282 for nutritional supplements; and
5) POWERPACK, Reg. No. 2,468,514, for packaging machinery, namely automatic stretch wrapping machines for perishable food products.
See Exhibit "D".
Since the words “POWER” and "PACK" or "PAK" are commonly used in relation to food products and other similar goods, any one Registrant has very little right to exclude others from using the words. Thus, Registrant's POWERPAK is entitled to only a narrow scope of legal protection and Applicant’s trademark should also be allowed registration.
SUMMARY
Applicant requests that the Examining Attorney: (i) withdraw the 2(d) refusal; and (ii) approve the Application for publication.
We welcome an opportunity to discuss this matter further with the Examining Attorney. Please advise us if we can provide any further information that will facilitate the publication and registration of the mark.
