Trademark application for plastic products blocked by similar paper product trademark. IN RE ELKAY PLASTICS

Section 2(d) of the Lanham Act provides that the United States Patent and Trademark Office may refuse to register a trademark if it so resembles a prior used or registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists is determined using the factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The DuPont factors are a list of factors that the United States Patent and Trademark Office and courts in the United States will consider when determining if there is a likelihood of confusion between two trademarks. Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 3) Similarity of the products or services, 4) Likelihood that the senior user will bridge the gap, 5) The junior user’s intent in adopting the mark, 6) Evidence of actual confusion, 7) Sophistication of the buyers, 8) Quality of the junior user’s products or services, 9) related products and services. The likelihood of confusion analysis considers all DuPont factors for which evidence is presented but may focus on the similarity of the marks and categories of products branded with the trademarks.

This means that it is important for a trademark applicant to be prepared to explain how their trademark is different than similar trademarks which are already registered. If a trademark applicant can explain why there is not a likelihood of confusion then it is still possible to register a trademark even when there are other similar trademarks already registered.

While all the DuPont factors are considered in a likelihood of confusion analysis, the similarity of the trademarks and the similarity of the products are of particular interest. The products need not be identical or even competitive in order to find a likelihood of confusion. Rather, the question is whether the products are marketed in a manner that could give rise to the mistaken belief that the products come from the same source. This means a trademark applicant should be prepared to explain how confusion between their trademark and an already registered trademark is unlikely, even if the products are in different categories.

IN RE ELKAY PLASTICS CO., INC., Serial No. 88479020 (TTAB 2021) is an example of a case where a trademark application was denied even though the already registered trademark was in a different product category.

Applicant sought to registration the phrase VALUE PLUS as a trademark for: “unprinted and printed polyethylene (PE) merchandise packaging materials, namely, resealable zipper bags and tubing for industrial use ” in International Class 16; and “high temperature polyester (PET) pan liners for use in commercial kitchens that help prevent food from sticking to the pan while storing,
warming and cooking food ” in International Class 21.

The examining attorney refused to register the mark due to a likelihood of confusion between VALUE PLUS OFFICE PRODUCTS Registration No. 2,615,789, and VALUE PLUS+ Registration No. 4870950. The applicant appealed the refusal to the Trademark Trial and Appeal Board (TTAB).

The ’789 Registration VALUE PLUS OFFICE PRODUCTS in typed form for “paper products, namely, copy paper, filing products, namely, file folders and storage boxes, stationery or household adhesives, namely, tapes” was cited by the examining attorney against Applicant’s Class 16 goods, resealable zipper bags. Applicant noted that zipper bags and copy paper are different products. The examiner cited multiple different vendors in the marketplace such as Uline, Staples and others that sell resealable bags next to tape, copy paper, and corrugate boxes. The examiner also cited multiple third party registered trademarks for both plastic and paper packaging to demonstrate the products were similar and confusion was likely.

The ’950 Registration VALUE PLUS+ for “beverage ware; dinnerware; disposable plastic gloves for use in the food service industry,” was cited by the examining attorney against Applicant’s Class 21 goods, pan liners. Applicant’s position again was that pan liners and gloves are different products, therefore confusion was unlikely. The examiner cited multiple third party registered trademarks that covered both pan liners and plastic gloves to demonstrate the products were similar and confusion was likely.

The TTAB found that sufficient evidence had been submitted to demonstrate a similarity between applicant’s trademark and products compared to the already registered trademarks. Based on this conclusion the TTAB affirmed the examiner’s refusal.

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