United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88449271
Mark: GREEN
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Correspondence Address:
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Applicant: Easy Green Eco Packaging Co., Ltd.
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Reference/Docket No. 190123REEN-U
Correspondence Email Address: |
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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.
SUMMARY OF ISSUES: The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
I. PRIOR-FILED APPLICATION
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 mark in the referenced application. 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.
II. 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. 4774529 and 4856836. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The Marks
The applied-for mark is GREEN, in stylized characters and with designs, for “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” in International Class 21.
The registered marks are as follows:
GREENCO, in standard characters, for in relevant part “Plastic Cups; ice ball molds; Drinking straws; Containers for household use; storage container for plastic bags; bowls; silicone molds for ice pops; Bread bins; ice pop makers, namely, ice pop forms; Garlic presses; Laundry hampers for domestic or household use; Refuse bins” in International Class 21
OGREEN, in standard characters, for “Toothbrushes; Electric toothbrush replacement heads; Electric face cleansing brushes; Power-operated brush used to clean the skin; Electric face cleansing brush replacement heads; Replacement heads for power-operated brush used to clean the skin; Make-up brushes; Toothpicks; Dental floss picks; Toothbrush cases; Water apparatus for cleaning teeth and gums for home use; Kitchen containers; Electric hair combs; Hair brushes; Heat-insulated containers for household use; Sprinklers for watering flowers and plants; Dish drying racks” in International Class 21.
Likelihood of Confusion Analysis
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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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 and differences in the marks.”); TMEP §1207.01. Each of these factors is addressed in the sections below.
Similarity of the Marks
The applied-for mark GREEN is confusingly similar to the registered marks GREENCO and OGREEN, which weighs in favor of a likelihood of confusion. The similarity of the applied-for mark to each of the registered marks is addressed in the subsections below.
GREENCO – U.S. Trademark Reg. No. 4774529
The applied-for mark GREEN is confusingly similar to the registered mark GREENCO, which weighs in favor of a likelihood of confusion.
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)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The applied-for mark GREEN is similar to the registered mark GREENCO because they both being with the identical term GREEN. The applied-for mark differs from the registered mark in that it omits the term CO, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Merely omitting some of the wording from the registered mark therefore does not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark, and adds no wording that would distinguish it from that mark.
The applied-for mark’s omission of the term CO also fails to significantly distinguish it from the registered mark because the shared term GREEN is the dominant portion of the registered mark. The shared term GREEN is the dominant portion of the registered mark because the term CO is a business entity designation that has no source identifying capacity. Marks are compared in their entireties, however 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). Entity designations, e.g. “LLC”, “Inc.” and “Co.”, possess no meaningful source identifying capacity, and are therefore less significant or less dominant than other wording in a mark. See In re Detroit Athletic Co., 903 F3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (affirming the Board’s finding that “Co.” and “Club” were “mere business identifiers” that lacked source identifying capacity and therefore did not distinguish the marks at issue); see also In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (stating that "the element ‘Inc.’ [is] recognized, in trademark evaluation, to have no source indication or distinguishing capacity”) (citing In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984)).
The attached evidence from AcronymFinder.com and the American Heritage dictionary shows that “CO” is an entity designation signifying a “company”. The attached copy of U.S. Trademark Registration No. 4774529 shows further that registrant is a “limited liability company”. The term CO in the registered mark therefore identifies registrant’s business entity type, and is less significant to the mark’s overall commercial impression than the shared term GREEN.
Design elements in the applied-for mark, e.g. the “leaf”, similarly fail to significantly distinguish it from the registered mark in this case, because the wording in the applied-for mark predominates over the designs. The word portion of a composite mark is normally accorded greater weight than the design because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). The word portion of a mark is therefore usually considered the mark’s dominant feature, though marks are compared in their entireties, even when the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Character stylization in the applied-for mark also fails to distinguish it from the registered mark, because the registered mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). A mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Registrant in this case is free to display GREENCO in any font or style it chooses, including the particular font and style specified in the application.
The marks GREEN and GREENCO are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. The amount of mark similarity required to support a likelihood of confusion determination is also lower when the parties’ goods are “similar in kind and/or closely related” than when they are diverse. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
OGREEN – U.S. Trademark Reg. No. 4856836
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)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
The applied-for mark GREEN is similar to the registered mark OGREEN because they both combine a circular symbol with the identical term GREEN. The applied-for mark differs from the registered mark in that it omits the letter O in the registered mark, however applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Merely omitting some of the wording from the registered mark therefore does not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark, and adds no wording that would distinguish it from that mark.
The applied-for mark’s omission of the letter O also fails to significantly distinguish it from the registered mark in this case, because the applied-for mark includes a “design of a circle” that closely resembles the letter O. The attached evidence from the American Heritage dictionary and Wikipedia.org shows that the letter O is commonly depicted as a circle. Consumers are therefore likely to view the “design of a circle” in the applied-for mark as a letter O that, when combined with the term GREEN, forms a stylized rendition of the registered mark OGREEN.
Additional design elements in the applied-for mark, e.g. the “leaf” design, also fail to significantly distinguish it from the registered mark in this case, because the wording in the applied-for mark predominates over the designs. The word portion of a composite mark is normally accorded greater weight than the design because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). The word portion of a mark is therefore usually considered the mark’s dominant feature, though marks are compared in their entireties, even when the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Character stylization in the applied-for mark also fails to distinguish it from the registered mark, because the registered mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). A mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Registrant in this case is free to display GREENCO in any font or style it chooses, including the particular font and style specified in the application.
The marks GREEN and OGREEN are similar, and consumers who encounter the marks used in connection with similar or related goods are likely to be confused as to the source of those goods. The amount of mark similarity required to support a likelihood of confusion determination is also lower when the parties’ goods are “similar in kind and/or closely related” than when they are diverse. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Relatedness of the Goods
Applicant’s goods are related to registrants’ goods, which weighs in favor of a likelihood of confusion. The relatedness of the applicant’s goods to the goods in each registration are addressed in the subsections below.
GREENCO – U.S. Trademark Reg. No. 4774529
Applicant’s “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” are related to registrants’ “Plastic Cups; ice ball molds; Drinking straws; Containers for household use; storage container for plastic bags; bowls; silicone molds for ice pops; Bread bins; ice pop makers, namely, ice pop forms; Garlic presses; Laundry hampers for domestic or household use; Refuse bins”, which weighs in favor of a likelihood of confusion.
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The application and registration in this case each contain identical entries for “plastic cups”. The registration also uses broad wording to describe “drinking straws” and “bowls”, which presumably encompasses goods of those types, including applicant’s narrower “Disposable dinnerware, namely…bowls”, “compostable and biodegradable…bowls”, “salad bowls”, “fruit bowls”, “soup bowls”, and “straws for drinking”. 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). The application uses similarly broad wording to describe “drinking vessels”, which presumably encompasses all goods of that type, including registrant’s narrower “plastic cups”. Id. Applicant’s and registrant’s overlapping goods are thus 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)). The parties’ good have, moreover, 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)). Applicant’s and registrant’s overlapping goods are therefore related.
Applicant’s “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” are also related to registrants’ “Plastic Cups; ice ball molds; Drinking straws; Containers for household use; storage container for plastic bags; bowls; silicone molds for ice pops; Bread bins; ice pop makers, namely, ice pop forms; Garlic presses; Laundry hampers for domestic or household use; Refuse bins” because of the way these goods are marketed and sold.
Goods 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] 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).
The attached evidence from Rubbermaid.com, SoloCup.com, and OXO.com shows that household and kitchen goods of various kinds, including those identified in the application and registration, are commonly marketed and sold from the same sources under the same brands or marks. Rubbermaid, for example, markets and sells paper cups, lunch boxes, drinking vessels, bread bins, hampers, and refuse bins, all under the Rubbermaid brand name. Solo similarly markets and sell both paper and plastic cups, plates, and bowls, all under the Solo brand name.
Applicant’s “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” are, in light of the foregoing, related to registrants’ “Plastic Cups; ice ball molds; Drinking straws; Containers for household use; storage container for plastic bags; bowls; silicone molds for ice pops; Bread bins; ice pop makers, namely, ice pop forms; Garlic presses; Laundry hampers for domestic or household use; Refuse bins” for likelihood of confusion purposes.
OGREEN – U.S. Trademark Reg. No. 4856836
Applicant’s “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” are related to registrant’s “kitchen containers”, “heat-insulated containers for household use”, and “dish drying racks”, which weighs in favor of a likelihood of confusion.
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Goods 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); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] 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 “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” are related to registrant’s “kitchen containers”, “heat-insulated containers for household use”, and “dish drying racks” because of the way these goods are marketed and sold. The attached evidence from Rubbermaid.com, SoloCup.com, and OXO.com shows that household and kitchen goods of various kinds, including those identified in the application and registration, are commonly marketed and sold from the same sources under the same brands or marks. Rubbermaid, for example, markets and sells paper cups, lunch boxes, drinking vessels, drying racks, and heat-insulated containers for household use, all under the Rubbermaid brand name. OXO similarly markets and sells bowls, drinking vessels, straws for drinking, drying racks, and heat-insulated containers for household use, all under the OXO brand name.
Applicant’s “Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” are, in light of the foregoing, related to registrant’s “kitchen containers”, “heat-insulated containers for household use”, and “dish drying racks” for likelihood of confusion purposes.
Conclusion
The applied-for mark GREEN is confusingly similar to the registered marks GREENCO and OGREEN, when the marks are considered in their entireties, despite character stylization and designs in the applied-for mark, and some additional wording in the registered marks. Applicant’s goods are also related to the goods identified in the registration. Registration for the applied-for mark is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion with the mark in U.S. Registration Nos. 4774529 and 4856836.
III. DISCLAIMER REQUIRED – “GREEN”
Applicant in this case must disclaim the word “GREEN” because it is not inherently distinctive, and at best merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the American Heritage dictionary shows that “GREEN” is an adjective meaning “beneficial to the environment or less harmful to the environment than others.” The attached evidence from LetsGoGreen.biz and EcoProducts.com shows further that the term “GREEN” is commonly used to describe environmentally beneficial kitchen and household products, e.g. compostable and/or biodegradable plates, bowls, cups and trays. The term “GREEN” in the applied-for mark therefore merely describes a quality and characteristic of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GREEN” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IV. AMENDMENT REQUIRED – DESCRIPTION OF THE MARK
The following description is suggested, if accurate: The mark consists of the stylized word “GREEN” with a single-line circle surrounding, and contacting the bottom of, the first letter. A curving leaf design extends from the circle’s right, outer perimeter and over the letters “REE” in the word “GREEN”.
V. AMENDMENT REQUIRED – IDENTIFICATION OF GOODS
Applicant must amend the identification of goods in International Class 21 for the reasons stated below.
Indefinite and Overbroad Wording in Identification
Applicant must clarify the wording “compostable and biodegradable plates, bowls, cups and trays” in the identification of goods in International Class 21 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specify the nature of the trays, e.g. “serving trays”. Further, this wording could identify goods in more than one international class. For example, “laboratory trays” are in International Class 9, “paint trays” are in International Class 16, and “serving trays” are in International Class 21.
Suggested Wording for Identification
Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):
“Compostable and biodegradable laboratory trays” in International Class 9.
“Compostable and biodegradable dental bite trays” in International Class 10.
“Compostable and biodegradable shower trays” in International Class 11.
“Compostable and biodegradable paint trays” in International Class 16.
“Disposable dinnerware, namely, plates, bowls and serving trays; Compostable and biodegradable dinnerware, namely, plates, bowls, cups and trays; Salad bowls; Fruit bowls; Lunch boxes made of plastic; Sandwich boxes; Bento boxes; Soup bowls; Disposable chopsticks; Drinking vessels; Disposable table plates; Paper cups; Plastic cups; Lunch boxes; Straws for drinking” in International Class 21.
“Compostable and biodegradable smokers’ rolling trays” in International Class 34.
Applicant will be required to add International Class 9, 10, 11, 16, and 34 should it choose to adopt the above suggested wording. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1) et seq., 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Advisories – ID Manual and Scope of Amendments
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.
VI. MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods 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 already paid (view the USPTO’s current fee schedule). The application identifies goods services that are classified in at least six classes, however applicant submitted a fee sufficient for only one class. 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See 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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click HERE to file a response to this non-final Office action
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@uspto.gov
