To: | Asahi Kasei Home Products Corporation (mailroom@bskb.com) |
Subject: | U.S. Trademark Application Serial No. 88449402 - ASAHI WRAP - 0071-0919US1 |
Sent: | August 20, 2019 01:17:30 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88449402
Mark: ASAHI WRAP
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Correspondence Address: BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 GATEHOUSE ROAD, SUITE 100 EAST
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Applicant: Asahi Kasei Home Products Corporation
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Reference/Docket No. 0071-0919US1
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.
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.
Summary of Issues
· Section 2(d) Likelihood of Confusion Refusal
· Disclaimer Required
· Additional Attorney Information Required
Section 2(d) Likelihood of Confusion Refusal—Partial Refusal
This Refusal applies to all of applicant’s goods except for “printers’ type, printing blocks”
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4355903. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Registrant’s Mark is:
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 [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
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., __ F.3d __, 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).
Although marks are compared in their entireties, 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Specifically, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, the first word in applicant’s mark is “ASAHI”, and “ASAHI” is the only word in the registered mark. As consumers are generally more inclined to focus on the first word in any mark, the marks share identical dominant elements.
Additionally, disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, “WRAP” will need to be disclaimed in applicant’s mark. This is explained in greater detail in the “Disclaimer Required” section below. This bolsters the strength of the shared wording, “ASAHI”.
It should also be noted that incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, all of the wording in registrant’s mark is incorporated within applicant’s mark. This does not detract from confusion as the marks are identical in part, and there is no other wording in registrant’s mark to distinguish it from applicant’s mark.
Lastly, where, as here, the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
In light of the foregoing, it is evident that the marks are similar in sound, appearance, meaning and commercial impression. Thus, the marks are likely to be confused.
Comparison of the Goods
In this case:
· Here, registrant’s “food wrapping plastic film for household use” is encompassed by applicant’s “plastic film for packaging of foodstuff”, and encompasses “household plastic casting film for wrapping of foodstuff”. Additionally, applicant’s plastic sheets, films an bags for wrapping and packaging encompasses many of registrant’s goods, including “food wrapping plastic film for household use” and “garbage bags of plastics for household use”, as these are forms of plastic sheets, films, and/or bags for packaging purposes.
· Additionally, applicant’s “pens” encompasses registrant’s more narrowly identified pen goods, namely, “ball-point pens” and “fountain pens”.
· Each party provides paper and cardboard.
· Applicant’s “printed matter” encompasses many of registrant’s more narrowly identified goods, namely, post cards. Additionally, registrant actually identifies “printed matter”.
· Each party provides photographs, stationery, adhesives for household purposes.
· Registrant’s “printed matter” encompasses applicant’s “instructional and teaching materials”.
· Applicant’s “office requisites, except furniture” encompasses many of registrant’s goods, including, memo pads, note books, and mechanical pencils.
· Applicant’s “Bookbinding material” may encompass registrant’s “pastes and other adhesives for stationery or household purpose” as these goods may be used, at home, for bookbinding.
· Applicant’s “Drawing materials and materials for artists” encompasses many of registrant’s goods, including mechanical pencils and fountain pens
Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these particular s. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, these particular goods of applicant and registrant are realted.
The remainder of applicant’s goods are closely related to registrant’s goods. 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).
In light of the foregoing, applicant’s and registrant’s marks are likely to be confused. Applicant may provide arguments in support of registration, however, applicant must still respond to the requirements set forth below.
Particular Wording in the Identification of Goods is Indefinite and Broad
Class 16 Issues:
· “Paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven” in indefinite. Applicant must use the common commercial name for these goods, e.g. “baking paper”
· “Non-woven plastic sheet for cooking” is indefinite. The trademark examining attorney is unclear on the nature of these goods. It seems that a plastic sheet, when used for cooking, may melt. Applicant must expound upon the nature of the goods and use the common commercial name for the goods. At this time, the trademark examining attorney is unable to propose definite language without being given more information. Thus, it is removed from the suggested identification. See TMEP §1402.01(e).
· Pens (office requisites) is indefinite. The parentheses should be removed, and the parenthetical information placed into the body of the entry.
· “printed matter” is indefinite. If this entry refers to publications, applicant must specify the nature and subject matter of the matter, e.g. fiction books on a variety of topics, newsletters about {specify subject matter}, brochures in the field of {specify subject matter}. If this entry does not refer to publications, applicant must name the particular matter they provide, e.g. printed tickets, printed sewing patterns, printed graphics, printed plans, printed calendars
· “office requisites, except furniture” is indefinite. Applicant must name the particular types of office requisites they provide, e.g. staplers, paper trimmers, paper embossers, rubber bands, envelop sealing machines, electric paper hole punches
· “Drawing materials and materials for artists;” is indefinite and broad. Applicant must name the materials they provide, e.g. “drawing pens, drawing ink, drawing rulers, drawing pads, artists’ pens, and artists’ pastels”, all in Class 16, “paint for artists”, “painting sets for artists” in Class 2, just to name a few definite options.
· “Instructional and teaching materials” is indefinite. Applicant must clarify the nature and field of the goods, e.g. printed teaching materials in the field of American history
Applicant may substitute the following wording, if accurate:
Class 2: Materials for artists, namely, {name particular Class 2 goods here, e.g. paints for artists, painting sets for artists}
Class 16: Plastic film for packaging of foodstuff; Household plastic casting film for wrapping of foodstuff; Plastic casting film for wrapping of foodstuff for industrial use; Household plastic bags for storage of food; baking paper, namely, paper sheet for cooking and preventing from burning and sticking of the food on the turntable or plate of microwave oven; office requisites, namely, pens; Paper and cardboard; Printed matter, namely, {specify nature and subject matter of publications, e.g. fiction books on a variety of topics, newsletters about math, brochures in the field of environmental science}; printed matter, namely, {specify nature of printed matter here, e.g. printed tickets, printed sewing patterns, printed graphics, printed plans, printed calendars}; Bookbinding material; Photographs; Stationery and office requisites, except furniture, namely, {name particular requisites here, e.g. staplers, paper trimmers, paper embossers, rubber bands, envelop sealing machines, electric paper hole punches}; Adhesives for stationery or household purposes; Drawing materials and materials for artists, namely, {name particular Class 16 goods here, e.g. drawing pens, drawing ink, drawing rulers, drawing pads, artists’ pens, and artists’ pastels}; Paint brushes; printed instructional and teaching materials in the field of {specify field here}; Plastic sheets, films and bags for wrapping and packaging; Printers' type, printing blocks
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.
Disclaimer Required
In this case, applicant must disclaim “WRAP” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature 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).
Applicant’s identification states that they provide various forms of wrapping. Thus, “wrap” is immediately descriptive of, if not generic for, a feature 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 “WRAP” 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.
Additional Attorney Information Required
Response to Office Action
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
How to respond. Click to file a response to this nonfinal Office action
Rosen, Amanda
/Amanda Rosen/
Examining Attorney
Law Office 121
571-270-5984
Amanda.Rosen@USPTO.gov
RESPONSE GUIDANCE