To: | Caliber Packaging and Equipment, LLC (jjs@schwartz-iplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87117838 - CALIBER - 963/1 |
Sent: | 6/1/2017 6:47:16 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87117838
MARK: CALIBER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Caliber Packaging and Equipment, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/1/2017
THIS IS A FINAL ACTION.
This Office Action is in response to applicant’s communication filed on May 8, 2017
The following requirements and/or refusals are satisfied: Identification
Therefore, there are no new issues and the following refusal(s) and/or requirement(s) in the previous Office Action are continued and made FINAL.
If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services will be deleted from the application:
“Corrugated paper, corrugated boxes, corrugated pads, and corrugated containers; paper rolls, paper sheets, cushion packaging.” “plastic film, shrink film, stretch film, shrink bags, tubing, banding and strapping used for industrial or commercial packing”.
The application will then proceed with the remaining goods and/or services only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
*** LIMITED TO CERTAIN CLASS 016 and 017 goods ***
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similar Marks
When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); TMEP §1207.01(b).
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Here, the marks share identical word “CALIBER”, and despite other elements appearing in the marks, the wording “CALIBER” appears most prominently and thus imparts the dominant commercial impression.
Applicant’s arguments are unpersuasive. The additional wording in registrant’s mark is descriptive if not generic in relation to their goods, and thus is less significant in comparing the marks.
Related Goods and/or Services
The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ("[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods."); TMEP §1207.01(a)(i).
The respective goods and/or services need only be "related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source." Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Applicant’s goods and/or services include “Corrugated paper, corrugated boxes, corrugated pads, and corrugated containers; paper rolls, paper sheets, cushion packaging.” “plastic film, shrink film, stretch film, shrink bags, tubing, banding and strapping used for industrial or commercial packing”
Registrant’s goods and/or services include “printed paper labels; cardboard packaging; plastic bags for packaging; cardboard boxes for use in packaging wine; cardboard gift boxes; plastic bags for packaging, namely bags for storing wine”
The respective goods and/or services are related with respect to paper and plastic packaging goods.
Applicant’s arguments are not persuasive. Although some of registrant’s goods are limited to use for packaging wine, others are not. For example, registrant’s “cardboard packaging; plastic bags for packaging; cardboard gift boxes” are unrestricted and could be used for the same general purpose as applicant’s class 016 and 017 boxes and packaging material.
Conclusion
Given the similarity of the marks and the goods and/or services, prospective customers are likely to confuse the source of the respective goods and/or services. Accordingly, registration of applicant’s mark is properly refused under Section 2(d) of the Trademark Act.
RESPONSE TO THIS FINAL OFFICE ACTION
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
COMMENTS
/Fong Hsu/
Trademark Examining Attorney
Law Office 117
(571) 272-2001
fong.hsu@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.