United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88527147
Mark: SOLUPAC
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Correspondence Address: LAW OFFICE OF ERICA CANAS, P.A. 2601 SOUTH BAYSHORE DRIVE, SUITE 1100
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Applicant: TRADEPRO PRODUCTS, LLC
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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: October 12, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
1) Likelihood of Confusion
This refusal applies only to applicant’s following goods presently listed in Class 16:
Plastic products, namely, high density polyethylene (HDPE) t-shirts bags, high density polyethylene (HDPE) and low density polyethylene (LDPE) die cut bags, patch handle and soft loop bags, wicket bags, security bags, mailers and e-commerce bags, film roll stock for packaging, zipper bags in the nature of food storage zipper bags for packaging use, polypropylene (PP) non-woven and mesh bags; paper products, namely, Kraft paper bags, Kraft paper rolls, paper products, namely, paper bags for merchandise packaging
Registration of the applied-for mark is refused as to the above-referenced goods because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4847031. 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 “SOLUPAC” in standard characters. Registrant’s mark is “SOLUPAK” in standard characters. They are identical in appearance except that applicant has replaced the “K” in the registered mark with a “C.”
More significant is that they are phonetic equivalents. 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).
Here, the marks sound identical and appear almost identical. In light thereof and the fact that both call to mind a packaging solutions, the overall impressions of the marks are very similar.
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
In this case, registrant’s goods are liquid degradable portion control pouches, substantially made of paper, for the packaging in the medical and sanitation industries.
Applicant’s goods include the following items presently listed in Class 16:
Plastic products, namely, high density polyethylene (HDPE) t-shirts bags, high density polyethylene (HDPE) and low density polyethylene (LDPE) die cut bags, patch handle and soft loop bags, wicket bags, security bags, mailers and e-commerce bags, film roll stock for packaging, zipper bags in the nature of food storage zipper bags for packaging use, polypropylene (PP) non-woven and mesh bags; paper products, namely, Kraft paper bags, Kraft paper rolls, paper products, namely, paper bags for merchandise 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).
In this case, registrant’s goods listed above cover certain pouches used for packaging in the medical and sanitation industries. Please note that the attached definition establishes that a “pouch” is a type of “bag.”
Meanwhile, applicant’s goods listed above either specifically indicate that they are used for packaging or they are broadly identified so that they are presumed to include those for packaging use. Moreover, applicant’s has not limited the industries that its goods may be used in. It is, therefore, presumed that applicant’s goods encompass those specifically for the medical and sanitation industries. In light thereof, it appears that 1) all of the goods are related as they be used for similar purposes and 2) some of applicant’s paper bags are identical to the paper pouches for packaging in the medical and sanitation industries listed in the registration. Thus, applicant’s and registrant’s goods/services are legally identical in part. 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 attached Internet evidence establishes that many entities commonly provide or manufacture a variety of packaging products under the same mark. Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Additionally, applicant’s goods have no restrictions as to channels of trade or classes of purchasers. Thus, it is presumed that applicant’s goods are provided in the same trade channels to the same types of consumers as are registrant’s goods. 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)).
Doubt is Resolved in Favor of Registrant
In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
2) Identification of Goods
The identifications in Classes 21 and 22 are acceptable.
However, some of the wording in the Class 16 identification of goods 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 regard, “plastic products, namely, high density polyethylene (HDPE) t-shirts bags” requires clarification. In this regard, the wording first identifies the goods as plastic items, but subsequently identifies them as “t-shirt bags.” “T-shirts” and bags made therefrom are generally textile/fabric bags. Thus, the identification appears incongruous and requires clarification. If the goods are actually plastic bags used to package t-shirts, then that must be clarified.
“Security bags, mailers and e-commerce bags” must be clarified to clarify their nature. Please also note that bags for securing valuables are properly classified in Class 22.
“Zipper bags in the nature of food storage zipper bags for packaging use” must be amended to clarify their primary nature. They must then be properly classified. Please note that household plastic food storage bags are generally in Class 16, but industrial storage bags are generally in Class 22. Meanwhile, plastic bags for packaging are generally in Class 16 though.
The general nature or purpose/use of the “polypropylene (PP) non-woven and mesh bags” also must be clarified. They must then be properly classified.
Please also keep in mind that many plastic and paper bags for household use are in Class 16. However, many bags used for specialized purposes fall in other classes. Thus, to ensure proper classification of the bags, the general purpose or use of each type of the bags is necessary.
“High density polyethylene (HDPE) and low density polyethylene (LDPE) can liners” must be amended to specify the type of cans.
“Paper products, namely, Kraft paper bags, Kraft paper rolls” must be amended to specify the type, nature or purposes of the rolls. Similarly, applicant must clarify the nature of “paper products, namely, … junior bath tissue,” e.g., bathroom tissue.
Applicant may substitute the following wording and classifications for the goods presently in Class 16, if accurate.
Plastic products, namely, high density polyethylene (HDPE) and low density polyethylene (LDPE) die cut bags for use in transmitting medical specimens, in Class 10.
General purpose plastic bags, namely, household high density polyethylene (HDPE) t-shirt style bags not made of textile, high density polyethylene (HDPE) bags for packaging t-shirts, and high density polyethylene (HDPE) and low density polyethylene (LDPE) trash can liners; Plastic products, namely, high density polyethylene (HDPE) and low density polyethylene (LDPE) die cut shopping bags; Plastic products for household use, namely, plastic patch handle and soft loop shopping bags; plastic wicket bags for merchandise packaging; plastic security mailers and e-commerce bags, all in the nature of padded plastic envelopes for mailing or packaging; Plastic products, namely, film roll stock for packaging; plastic zipper bags for packaging, namely, household food storage zipper bags for packaging use; plastic bags for household use, namely, polypropylene (PP) non-woven and plastic mesh bags for general household use; paper products, namely, Kraft paper bags, Kraft paper rolls being paper roll stock for packaging, toilet tissue, kitchen paper towels, paper napkins, junior bathroom tissue, hard-wound roll paper-towels; paper products, namely, paper bags for merchandise packaging, paper bags for household use, in Class 16.
Plastic products, namely, plastic security bags for use in securing valuables, in Class 22.
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 (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that could be classified in at least four (4) classes; however, applicant submitted a fee(s) sufficient for only three (3) class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimens are unacceptable. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Specimens
A. Introduction
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
B. Refusal
Registration is refused because the specimens appear to be mere advertising materials, which fail to show the applied-for mark in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Advertising materials are generally not acceptable as specimens to show use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b), (c). Advertising materials may consist of the following: online advertising banners appearing on search engine result pages and in social media; advertising circulars and brochures; price lists; listings in trade directories; and business cards. See TMEP §904.04(b).
Here, applicant has submitted as its specimens screen shots from its website. The first few establish advertise applicant’s manufacturing services. Therefore, they establish that applicant is a manufacturer of packaging products. However, it is noted that applicant has not actually included manufacturing services (Class 40 services) among its goods/services in the present application.
The other specimen screen shots show screen shots of packaging such as applicant’s can liners, die cut bags, cups, and security bags. As noted above, webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). For each of these pages, the mark does appear near a picture of some of applicant’s goods. Moreover, it is noted that a picture of a shopping cart is in the upper corner of the webpages.
HOWEVER, three of the screen shots, namely, those showing the cups and the security and deposit bags, provide only an “add to quote” option, which suggests that the goods may not be directly ordered from the website and perhaps one may only get a quote on the cost to manufacture goods. There also are no other ordering instructions on these webpages.
The other webpage showing the can liners and die cut bags has no “add to quote” nor any “add to cart” options. It also has no instructions to place an order. Finally, it is noted that, in the “specimen description” sections of the application, applicant did not provide any information about how the goods may be directly ordered from the website(s) excerpt(s) shown.
In light of the foregoing, the specimens do not appear acceptable to show use of the mark in commerce in connection with the relevant goods.
C. Responding
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
Advisory
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
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