To: | DePeters, Patrick (ross@redriverlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88473396 - POUCH - POUCH |
Sent: | October 24, 2019 02:12:06 PM |
Sent As: | ecom128@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 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88473396
Mark: POUCH
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Correspondence Address:
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Applicant: DePeters, Patrick
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Reference/Docket No. POUCH
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: October 24, 2019
This Office action is in response to applicant’s communication filed on October 1, 2019.
In a previous Office action dated September 7, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) and Trademark Act Section 2(e)1.
Applicant’s arguments and amendment with respect to the refusal(s) have been considered and found unpersuasive for the reasons set forth below. The trademark examining attorney maintains and now makes FINAL the refusals in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applied-for mark, POUCH (standard characters), is for “Pet food” in International Class 031.
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.
In this case, both key considerations (i.e., similarity of the marks and relatedness of the goods) support refusal of the applicant’s mark for registration.
Similarity of the Marks
Applicant also argues that the marks are different in length, meaning, and connotation. The examining attorney is not persuaded by this argument. The marks in question share the identical wording “POUCH”, which retains the same meaning and connotation in both marks. Although applicant’s mark does not contain the entirety of the registered mark, 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)). In particular, a prospective purchaser may perceive the registered mark as a slogan for the applied-for mark. Thus, merely omitting some of the wording from a registered mark may 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). In this case, 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 does not add any wording that would distinguish it from that mark.
Finally, the applicant argues that the likelihood of impulse buying does not apply because the length of the marks differ. The trademark examining attorney is not persuaded by this argument. Pet food is a low-priced, every-day consumer item. The attached evidence from Petsmart.com, Chewy.com, Petco.com, and Amazon.com shows pet food priced at $0.46, $1.52, $1.99, and $4.32, respectively. Notably, the pet food shown on Petco.com is sold in pouch form at $1.52. For products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)). Accordingly, the risk of likelihood of confusion is not dispelled by the differing lengths of the marks in question.
In summary, the marks are identical in part and consumers may perceive the applied-for mark as a shortened form of the registered mark. In addition, the cost of the goods in the application and registration are relatively low and subject to impulse buying. As such, the marks are likely to cause confusion when used on or in connection with highly similar or closely related goods. The high likelihood of confusion supports refusal of the applicant’s mark for registration.
Relatedness of the Goods
In this case, the registration uses broad wording to describe “Food for animals”, which presumably encompasses all goods of the type described, including applicant’s more narrowly identified “Pet food”. 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). Thus, applicant’s and registrant’s goods are 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)).
Additionally, the goods of the parties have 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)). Thus, applicant’s and registrant’s goods are related.
The similarity of the marks and relatedness of the goods supports the refusal of the application.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The previously attached evidence from The American Heritage dictionary shows that the wording “POUCH” means “[a] sealed plastic or foil container used for packaging food or drink”. In addition, the previously attached evidence from Chewy.com, LoyalCompanian.com, and PetCo.com shows that the wording “POUCH” is commonly used in the industry to describe a feature of pet food – namely, the packaging in which the product is sold. Accordingly, the wording “POUCH” in the mark is descriptive of applicant’s identified goods, “Pet food”. Additional evidence is attached to this office action from Amazon.com, PetCo.com and StandUpPouches.Net showing that the word “POUCH” is used to describe an entire type of pet food packaging which preserves and protects. “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). The pertinent question is “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). As such consumers would be used to seeing the applied-for mark being used descriptively in association with the identified goods.
In its response of October 1, 2019, applicant argues that the wording “POUCH” in the mark is not descriptive of its identified goods, “Pet food”, because the wording describes packaging and not pet food. The trademark examining attorney does not find this argument persuasive. A mark is merely descriptive if it describes a feature of an applicant’s goods. See TMEP §1209.01(b). The identified goods, “Pet food”, necessarily must be sold in some form. As demonstrated by previously attached evidence, it is not uncommon for pet food to be sold in a pouch. A term that describes the shape or form of a product is merely descriptive. In re Metcal Inc., 1 USPQ2d 1334 (TTAB 1986) (holding SOLDER STRAP merely descriptive of self regulating heaters in the form of flexible bands or straps); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982) (holding TOOBS merely descriptive of bathroom and kitchen fixtures in the shape of tubes).
The Trademark Trial and Appeal Board has previously held that terms which describe the packaging of applied-for goods are descriptive when used in relation to the goods themselves. See In re Charcoal Box USA, L.L.C, Serial Nos. 86532794 and 865336461 (March 22, 2017) [not precedential] (holding THE BOX merely descriptive of applicant’s charcoal and charcoal packaged in charcoal starter goods); In re Stacked Wines, LLC, Serial No. 85129206 (September 4, 2013) [not precedential] (holding STACKED merely descriptive of a feature of applicant’s wine, i.e., applicant’s wine is sold in vertically “stacked” glasses); see also J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960) (finding that the term MATCHBOX SERIES is merely descriptive of model toy vehicles sold in boxes the size and appearance of matchboxes).
The Trademark Trial and Appeal Board has stated that decisions designated as not precedential are not binding upon the Board but may be cited and considered for whatever persuasive value they might have. In re Soc’y of Health & Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018); TBMP §§101.03, 1203.02(f); TMEP §705.05.
Registration is therefore refused under Trademark Act Section 2(e)(1) because the applied-for mark merely describes a feature of applicant’s goods.
Advisory – Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Based on the foregoing, the refusals of registration under Sections 2(d) and 2(e)(4) of the Trademark Act are made FINAL.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Shinn, Lauren
/Lauren D. Shinn/
Trademark Examining Attorney
Law Office 128
(571) 270-5230
Lauren.Shinn@USPTO.gov
RESPONSE GUIDANCE