United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88490477
Mark: GATOR
|
|
Correspondence Address:
|
|
Applicant: Inteplast Group Corporation
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 14, 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). 1053930 and 5747318 . 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
Applicant’s mark is “GATOR.”
The registered marks are “GATORFOAM” and “WHITE GATOR SUPPLIES.” “GATOR” is the entirety of or a large portion of each mark.
As a result of the shared/similar wording, the marks, as a whole, appear and sound similar. They also create similar overall commercial impression with each calling to mind a particular type of animal, namely, an alligator.
In light of the foregoing, 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. 1053930
Registration No. 1053930 covers laminated plastic sheets in the form of panels (which appear to be foam). Applicant’s goods include “plastic film for industrial and commercial packing use” (and would be properly classified in Class 17).
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).
In this case, registrant’s goods are broad. They are, therefore, presumed to include those for packing use. Thus, both applicant and registrant are presumed to be providing plastic products for the same type of packing use. So, the goods appear highly related and complementary in terms of purposes and function.
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.
Please Note: The refusal as to Registration No. 1053930 applies only to the goods listed above.
B. Registration No. 5747318
Registration No. 5747318 covers, in part, the following: boxes of cardboard or paper; boxes of paper or cardboard; boxes, cartons, storage containers, and packaging containers made of paper or cardboard; boxes, containers, and cartons of paperboard or cardboard for commercial or industrial packaging; cardboard boxes; cardboard packaging boxes in collapsible form; cardboard packaging boxes in made-up form; packaging boxes of cardboard.
Applicant’s goods include the following: plastic film in roll form for general industrial and commercial packaging; films for wrapping and packaging.
In this case, both applicant and registrant are providing goods for packaging or wrapping items. Thus, they are used for similar purposes.
Significantly, 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. In re I-Coat Co., 126 USPQ2d at 1737; TMEP §1207.01(d)(iii).
Please Note: The refusal as to Registration No. 5747318 applies only to the goods listed above.
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