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. 88489532
Mark: GALAXY
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Correspondence Address:
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Applicant: Inteplast Group Corporation
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Reference/Docket No. N/A
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.
Issue date: September 18, 2019
1) Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4065693, 4455130, and 4830833. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the attached registration information.
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 and/or services 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 and/or services. 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.
Similarity of the Marks
A. Registration No. 4065693
In the present case, applicant’s mark and the mark in Registration No. 4065693 is “GALAXY.” These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
B. Registration No. 4455130
The mark in Registration No. 4455130 is “GALAXY” and design.
Significantly, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight 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 and/or services. 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). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where 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)).
In this case, consumers would use the wording in the marks to call for the relevant goods and/or services. Significantly, the wording in the marks is the same. Thus the marks appear similar.
More significant, however, is that the marks are phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
The marks also have essentially the same commercial impression as each calls to mind a “galaxy.” Thus, it is likely that consumers would be confused as to the origin of applicant’s goods and/or services.
C. Registration No. 4830833
The mark in Registration No. 4830833 is “BOX GALAXY.” As noted above, applicant’s mark is “GALAXY.”
In this case, applicant’s entire mark is incorporated into and comprises the majority of the registered mark. Moreover, “BOX” in the registered mark is merely descriptive or generic and has been disclaimed. Disclaimed matter that is descriptive of or generic for a party’s goods and/or services 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).
In light of the shared word “GALAXY,” the marks appear and sound similar. The marks also create very similar commercial impressions with each calling to mind a “galaxy.” Thus, it is likely that consumers would be confused as to the origin of applicant’s goods and/or services.
The Goods and/or Services are Related
A. Registration No. 4830833
In this case, the services in Registration No. 4830833 are retail store services featuring green and eco-friendly products in the nature of recycled cardboard boxes and packaging supplies, such as packing peanuts, plastic packaging wrap for commercial or industrial use, and tape.
Applicant’s goods are plastic film for industrial and commercial packing use, plastic film in roll form for general industrial and commercial packaging, and films for wrapping and packaging.
Determining likelihood of confusion is based on the description of the goods and/or services 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)). When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. 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).
Here, registrant’s services are broadly identified and, therefore, presumed to include retail store services featuring plastic film in roll form for general industrial and commercial packaging, and films for wrapping and packaging. Similarly, applicant’s goods are broadly identified and, therefore, presumed to include such goods being green or eco-friendly. In light thereof, it appears that registrant has services featuring goods that are identical to some of applicant’s goods.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Additionally, the goods and/or services 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 and/or services are related.
B. Registration Nos. 4065693 and 4455130
The services in Registration Nos. 4065693 and 4455130 include packaging of chemicals, metals and metal containing compounds. Applicant’s goods are plastic film for industrial and commercial packing use, plastic film in roll form for general industrial and commercial packaging, and films for wrapping and packaging.
As noted above, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. In re Detroit Athletic Co., 903 F.3d at 1307, 128 USPQ2d at 1052. When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. In re Solid State Design Inc., 125 USPQ2d at 1412-15.
Here, it must be presumed that applicant’s goods may be used for the packaging of chemicals, metals and metal containing compounds. Thus, it appears that applicant’s goods may be used in registrant’s services. Thus, they are complementary in terms of purpose or function.
Please also note that the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, packaging and packing goods and related packaging services, are of a kind that may emanate from a single source under a single mark In re I-Coat Co., 126 USPQ2d at 1737; TMEP §1207.01(d)(iii).
Additionally, applicant’s goods/services have no restrictions as to nature, type, channels of trade, or classes of purchasers. Applicant’s goods/services are, therefore, presumed to travel in the same channels of trade to the same class of purchasers as are registrant’s services. In re Viterra Inc., 671 F.3d at 1362, 101 USPQ2d at 1908.
Doubt is Resolved in Favor of Registrant
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
2) Identification of Goods
Some of the wording in the identification of goods/services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).
In this case, applicant must properly classify “plastic film in roll form for general industrial and commercial packaging” in Class 16. Please note that plastic films are generally classified according to the function or purpose of the goods. Class 16 covers those for “wrapping or packaging” purposes, and Class 17 covers those for “packing” or non-wrapping purposes, as well as plastics in extruded form for use in further manufacture.
“Films for wrapping and packaging” must be amended to specify the type of “films.” They also must be properly classified. Please note that plastic films for wrapping and packaging are properly classified in Class 16.
Applicant may substitute the following wording, if accurate.
Plastic film in roll form for general industrial and commercial packaging; Plastic films for wrapping and packaging, in Class 16.
Plastic film for industrial and commercial packing use, in Class 17.
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.
3) Multiple-classification Requirements
(1) List the goods and/or services 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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) 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.
General Response Guidelines
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.
How to respond. Click to file a response to this nonfinal Office action
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
maureen.lott@uspto.gov
RESPONSE GUIDANCE
