Tuesday, June 16, 2020

TTABlog Test: Is SPACE PACK Confusable with SPACE BAG for Storage Bags?

The USPTO refused to register the mark SPACE PACK for "Plastic bags with one-way valves, in which air is evacuated for storing household items, namely, clothing, pillows and bedding" [PACK disclaimed], finding a likelihood of confusion with the registered mark SPACE BAG for "evacuatable resealable storage bag made of nylon and polyethylene with a valve made of polyethylene and a closure system made of ABS plastic." Applicant argued that , because the word SPACE is widely used in the "space saving bag market" and thus is a relatively weak formative, the marks are distinguishable. How do you think this came out? In re South Coast Industries LLC, Serial No. 87848470 (June 11, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Goods: The Board found that the bags identified in the registration have the same functionality as the "plastic bags with one-way valves, in which air is evacuated" of the application. Both of the identifications also state that the bags include a valve. The "evacuatable resealable storage bag" of the registration is not restricted to any particular field of use, and thus could be used for "storing household items, namely, clothing, pillows and bedding." The Board therefore agreed with Examining Attorney Christina Calloway that the involved goods are legally identical.

Since there are no restrictions in the application or cited registration as to channels of trade and classes of consumers, the goods are presumed to travel in the same channels to the same classes of consumers.

The Marks: In support of its argument that the cited mark is weak, applicant made of record two third-party registrations (one on the Supplemental Register) for the marks SPACE MAX and SPACESAVER for the involved goods, both of which marks are owned by the same registrant.
Applicant also asserted that  "it is so obvious that ‘SPACE’ is necessary to describe space saver bags, no trademark protection can flow from the term." The Board found that argument to be over-inflated:

Two third-party registrations and a handful of third-party uses, several of which involve descriptive, non-trademark use of the word “space,” are “a far cry from the large quantum of evidence of third party use and third-party registrations that was held to be significant in both [Jack Wolfskin] and [Juice Generation].”

The Board concluded that [a]lthough the term SPACE may be somewhat suggestive with respect to the identified goods, ... the sixth DuPont factor is neutral in our analysis of the likelihood of confusion."

Since the involved goods are legally identical, a lesser degree of similarity between the mark is needed to support a finding of likely confusion. Applicant maintained that the marks differ in appearance, sound, and meaning. It urged that "bag" is generic for a space saving bag, whereas "pack" means "to make into a compact bundle." One is a noun, the other a verb, and consumers will be able to distinguish the marks.

The Examining Attorney asserted that "pack" and "bag" are synonymous, and that applicant's argument that PACK refers to the verb form of the word is contradictory to its disclaimer of the word PACK.

The Board observed that [t]he word SPACE is the first part of both marks, which "''is particularly significant because consumers typically notice those words first.'" Although SPACE may be somewhat suggestive of the goods, the Board found the word to be the dominant element of each mark.

Considering the marks in their entireties, the Board noted that "[d]ifferences in appearance and sound between SPACE BAG and SPACE PACK resulting from the different second words are discernable when the marks are seen or heard together, but the marks 'must be considered . . . in light of the fallibility of human memory’ and ‘not on the basis of side-by-side comparison,'"

For a consumer with a “general rather than specific impression” or a “dim recollection” of the cited mark SPACE BAG, Applicant’s mark SPACE PACK is more similar than dissimilar to SPACE BAG in appearance and sound because the similarities resulting from the presence in both marks of the dominant lead word SPACE outweigh the differences resulting from the presence of the subordinate words BAG and PACK.

Furthermore, the Board found that PACK is more likely to be viewed as a noun modified by SPACE than as a verb, when used in connection with the identified goods. "The nouns 'bag' and 'pack' are not perfect equivalents, but there is sufficient evidence in the record to show that they are similar in meaning when they are used in connection with the involved goods."

We find that in the context of the involved goods, the disclaimed terms BAG in the cited mark and PACK in Applicant’s mark both refer generally to a container, and that when BAG and PACK are combined with and modified by the marks’ common dominant term SPACE, the marks as a whole have a similar connotation and commercial impression of a container that is used to save space when storing items.

Conclusion:: Concluding that the marks are more similar than dissimilar in appearance and sound, and sufficiently similar in commercial impression to lead consumers "to assume a connection between the parties," the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Perhaps this pro se applicant did not do a very good job of marshaling evidence of third-party use of "space" in the storage bag  field.

Text Copyright John L. Welch 2020.


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