| To: | Berry Global, Inc. (ericljohnson@berryglobal.com) |
| Subject: | U.S. Trademark Application Serial No. 88910421 - CONTOUR - 1201-US |
| Sent: | June 17, 2020 05:53:07 PM |
| Sent As: | ecom119@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 |
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. 88910421
Mark: CONTOUR
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Correspondence Address:
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Applicant: Berry Global, Inc.
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Reference/Docket No. 1201-US
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: June 17, 2020
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.
SECTION 2(d) REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in each of the below listed U.S. Registration Numbers. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
1586758 CONTOUR for “extruded plastic sheeting for use in manufacturing high temperature resistant thermoformed packaging”
4750423 GHD CONTOUR for [refusal limited to the following goods] “plastic packaging, namely, bags, bubble packs, and film; all the aforesaid goods being in the field of hair care, hairstyling and beauty care”
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.
COMPARISON OF 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this instance, applicant’s mark is CONTOUR. Registrant’s marks either are identical or identical in dominant part.
Where the two marks are identical in appearance, sound, and meaning, they “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.
Where the common portion appears, applicant has deleted the remainder of registrant’s mark. 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)). 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.
Applicant’s mark thus creates a likelihood of source confusion with either registrant’s mark.
COMPARISON OF GOODS/SERVICES
In this instance, applicant’s goods are vaguely recited as “plastic shrink film” thus encompassing or overlapping the registrants goods.
In the first instance, “shrink film” may include “plastic sheeting for use in manufacturing high temperature resistant thermoformed packaging.” Thermoformed packaging molds and shrinks by the use of heat a sheet or film to the product shape. Applicant’s uses are not specified, nor is registrant’s sheeting exclusive of shrink film. 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)). Even if arguendo shrink film does not form rigid thermoformed packaging (which is not precluded from the recitation), applicant’s goods are highly related to packaging and are competitive, offering their own rigid product containers and wide range of packaging solutions.
In the second instance, the plastic film packaging is exactly the type of use for which shrink film is provided (see attached applicant’s webpage). Both use broad wording to describe plastic film, which presumably encompasses all goods of the type described, including the other party’s more narrow description despite registrant’s field limitations. 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 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.
Hence, the overall similarities between the Registrant’s and Applicant’s marks and goods and/or services, and the commercial impressions that they create, are greater than the differences, and refusal of registration of Applicant’s mark under Section 2(d) is appropriate.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF GOODS
The entirety of the identification of goods is indefinite as specified further below and must be clarified. See TMEP §1402.01. 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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods or services, but not to add to or broaden the scope of the goods or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
The identification reads, in Class 17, “plastic shrink film.” The purpose or commercial use is not stated; hence, the identification is indefinite and must be clarified because the wording is unclassifiable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. See, in the Manual
016 Plastic film not for commercial or industrial purposes DELETED
On 07-18-2013, this 04-02-1991 entry was deleted because it is broad enough to encompass goods in Class 17. Plastic films and sheets are generally classified according to function or purpose of the goods: Class 16 for wrapping or packaging purposes, and Class 17 for packing or non-wrapping purposes, as well as plastics in extruded form for use in further manufacture. The identification should indicate the purpose of the goods for proper classification.
Plastic films for wrapping and packaging is acceptable wording in Class 16; further specification as to field or industry is acceptable, but it is not required. Plastic film roll stock for packaging is also acceptable wording in Class 16 because “Plastic materials for packaging” is in the Class 16 Heading, and the analogous goods “plastic cling film, extensible, for palletization” appears in the Nice Alphabetical List in Class 16. Plastic films and sheets are generally classified according to function or purpose of the goods: Class 16 for “wrapping and packaging” purposes, and Class 17 for “packing” or non-wrapping purposes, as well as plastics in extruded form for use in further manufacture.
See also, in the Manual,
017 Heat shrink nylon tubing for covering electrical wire and nylon grommets.”
017 Adhesive plastic film for use in commercial or industrial manufacturing
Applicant must amend the identification to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the goods or services have no common commercial or generic name, applicant must describe or explain the nature of the goods or services using clear and succinct language. See id.
Applicant may adopt the following identification, if accurate:
“Plastic shrink film for wrapping and packaging,” in Class 16;
“Plastic shrink film for use in the further manufacture of a protective housing for industrial and commercial products,” in Class 17.
MULTIPLE CLASSES -- INSUFFICIENT FEES
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:
(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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).
Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Hanno Rittner/
Examining Attorney
Law Office 119
hanno.rittner@uspto.gov
571-272-7188
RESPONSE GUIDANCE
