To the Commissioner for Trademarks:

The Applicant herein responds to the Office Action dated January 12, 2018, and requests reconsideration in view of the following remarks and amendments.

AMENDMENT TO IDENTIFICATION OF GOODS IN CLASS 16

(Markup)

IC 016    plastic recloseable bags for household use, excluding merchandise bags and packaging, distributed through retail channels of trade; plastic recloseable bags for packaging of  use with jewelry, coins, and stamps, excluding merchandise bags and packaging, hardware nuts, and bolts, and distributed through retail channels of trade

(Clean)

IC 016    plastic recloseable bags for household use, excluding merchandise bags and packaging, distributed through retail channels of trade; plastic recloseable bags for use with jewelry, coins, and stamps, excluding merchandise bags and packaging, and distributed through retail channels of trade

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4069740, 4554244 and 4216912. Trademark Act Section 2(d), 15 U.S.C. §1052(d).  The Applicant respectfully requests reconsideration in view the amendments to the identification of goods and the following remarks.   

Similarity and Nature of the Goods

The registrant in U.S. Registration Nos. 4069740 and 4216912 is using its marks in conjunction with merchandise bags sold through wholesale channels in class 16, which is interpreted as bags for carrying merchandise.  The goods now identified by the Applicant in class 16 are “plastic recloseable bags for household use, excluding merchandise bags and packaging, distributed through retail channels of trade; plastic recloseable bags for use with jewelry, coins, and stamps, excluding merchandise bags and packaging, and distributed through retail channels of trade.”  These goods identified here are not of the nature to be closely related to “merchandise bags” that are bought for wholesale use by retail or grocery stores and given to customers who have purchased items from that store to carry the items out of the store.  The Applicant now amends the identification of goods to specifically exclude merchandise bags.

The Examining Attorney notes that the registrant in U.S. Registration No. 4554244 is using its mark in conjunction with “Plastic bags for packaging not specifically intended or marketed for computers, multimedia devices, consumer electronics and their accessories, chips, components, devices, hardware, cases, peripherals, products, or software.”  The Applicant respectfully submits that bags for packaging does not necessarily include recloseable bags; however, bags for packaging has been specifically excluded in the amended goods.  Thus, the Applicant respectfully submits that the identified goods in U.S. Registration No. 4554244 are substantially dissimilar to those in the present application.

In addition to the above, the Applicant would like to reiterate, with respect to the identification of the Applicant’s goods in class 10, that the applied-for mark is used in conjunction with plastic reclosable bags for medical use, medical waste, and ice bags for medical purposes.  The Applicant respectfully submits that the class of consumers likely to purchase the wholesale “merchandise bags” identified in U.S. Registration Nos. 4069740 and 4216912 is significantly dissimilar to the class of consumers that would purchase the Applicant’s plastic reclosable bags for medical use, medical waste, and ice bags for medical purposes.

Similarity of the Channels of Trade

The Examining Attorney Internet evidence from a number of plastic bag suppliers that in order to show that the same entity commonly manufactures and/or provides the relevant goods and markets the goods under the same mark.  However, the Applicant respectfully submits that the cited websites at most establish that various types of plastic bags are sold in the same retail or wholesale channels and do not necessarily establish that the various types of bags all emanate from the same source that can control the quality of the goods that it markets to its consumers.  The mere fact that two products may move in the same channels of trade to the same class of purchasers does not, ipso facto, prove that there is a definite relationship between the two types of goods.  Champion International Corporation v. Genova, Inc., 199 USPQ 301, 305 (TTAB 1978). See also, Recot Inc. v. M.C. Becton, 214 F.3d 1322; 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (although parties' goods are sold in some of the same channels of trade, including supermarkets and grocery stores, there is no per se rule that all products sold within supermarkets are related by virtue of being sold in same establishments).  The Applicant therefore respectfully submits that the internet evidence does establish a sufficient nexus of relatedness between the goods in the application and the goods in the cited registrations such that confusion would be likely as to the source of the non-overlapping goods.

Strength of the Cited Marks

In comparing the Applicant's mark with previously registered marks, one factor that must be considered is the impact of prior registrations on the strength of the registered marks.  The three registrations cited by the Examining Attorney along with three additional registrations attached herewith, all pertaining to bags, are a clear indication of the lack of strength of these marks and the use of APPLE in them. “[I]n a 'crowded' field of similar marks, each member of the crowd, is relatively 'weak' in its ability to prevent use by others in the crowd.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:85 at 11-163 (4th Ed. 2001).  “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”).

Accordingly, the cited registrations should be given a narrow scope of protection, in light of their coexistence, barring registration of only identical marks

Conclusion

In view of the foregoing, the Applicant respectfully requests withdrawal of the refusal of registration under Section 2(d). 

Attached Registrations:          3946501 - AppleSnaq

4122634 – Apple Tree

4394145 – Warm Apple Spice