OFFICE ACTION

ISSUE/MAILING DATE:

THIS IS A FINAL ACTION.

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Jurisdiction of this file is returned to the assigned examining attorney by the Trademark Trial and Appeal Board, to consider the additional evidence submitted by the applicant to establish acquired distinctiveness, in its Request for Reconsideration submitted March 14,2011.

The finality of the prior Office action is withdrawn to consider the new evidence made of record by the applicant.

The applicant seeks to register the term CLEARBAGS in Standard format for goods identified as “plastic or paper bags for merchandise packaging”, under the provisions of Section 2(f); the Request for Reconsideration contains four affidavits, one from a customer, one from an individual involved with packaging trade shows, and two from competitors of the applicant.

The burden of proving that a mark has acquired distinctiveness is on the applicant. Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01. An applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.

The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. TMEP §1212.06(b); see In re Packaging Specialists, 221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).

Evidence Previously Made of Record, and Additional Evidence Made of Record, Shows that the wording “CLEAR BAGS” and Varients thereof, is Widely Used in the Packaging Industry, Indicative of the Highly Descriptive/ Generic Nature of the Term

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); see In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); TMEP §1212.05(a).

More evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1 USPQ2d 1657 (TTAB 1986).

However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances. See In re Bongrain, 894 F.2d at 1317 n.4, 13 USPQ2d at 1728 n.4; H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).

The fact that the applicant has combined the words “ clear” and “bags” to create a unitary term does not, by itself, demonstrate a unique mark.The trademark examining attorney has the burden of establishing that a mark is generic, and thus unregistrable, by presenting “clear evidence” of genericness. In re Hotels.com LP, 573 F.3d 1300, 1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); TMEP §1209.01(c)(i).

Any competent source, including dictionary excerpts, research databases, newspapers and other publications, may serve as evidence to show the relevant purchasing public’s understanding of the wording at issue. TMEP §1209.01(c)(i); see In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d at 1570, 4 USPQ2d at 1143; In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559, 227 USPQ 961, 963 (Fed. Cir. 1985). An applicant’s website and the websites of others are also competent sources of evidence to show genericness. TMEP §1209.01(c)(i); see In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1379, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007).

For a mark that is a compound term, which consists of a combination of two or more words, the evidence of record must show that each of the constituent words is generic, and that each word retains its generic meaning when combined such that the composite formed is generic and does not create a different, non-generic meaning. See In re Gould Paper Corp., 834 F.2d 1017, 1018-19, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2021 (TTAB 2010); TMEP §1209.01(c)(i).

The examining attorney previously made of record definitions of the terms “clear”, and its descriptive nature with respect to the generic goods, “bags”. The combination retains the same meaning, in relation to the packaging industry, as the two separate words, “clear bags”; in fact, many packaging industry entities use the term “clear bags” or “clear ( generic material term—i.e. poly, tec) bags” to identify a type or category or genus of packaging, used in a variety of industries, including the gift and stationery industries.

The most significant enclosure, from the prior Office action, is the material from the IQS Directory website, an Industrial Quick Search Manufacturer Directory. The term “clear” is used to identify a type of plastic bag, in a generic manner: “Find clear plastic bags and clear bags including clear merchandise bags, clear tote bags and more”.

Among the “Clear Plastic bags Types” are listed: biodegradable clear plastic bags; heavy duty clear plastic bags; large clear plastic bags; small clear plastic bags; clear plastic drawstring bags; clear plastic recycling bags; clear plastic storage bags; clear plastic travel bags”.

The directory itself lists 10 bag manufacturers who use the term “clear” as identifying a type of bag- Multi-Pak USA Inc.—“ supplies a variety of companies with wholesale clear plastic bags”; Four Star Plastics—“ supplies a variety of flat, gusseted, zip top & specialty clear plastic bags, from small clear cellophane bags to larger clear poly bags for garments furniture & more”; AR-BEE Transparent Products Inc. states they have bags “ for all your clear plastic bags needs….we have the edge with thousands of stock clear bags”.;Pacateers Inc. state” Our clear ploy bags include clear reloc bags”; bagbarn.com possesses “ thousands of stock clear plastic bags; Associated Bag Company states: “ …we have clear bags for all uses: foods, parts, floral, merchandise, anti-static, medical, environmental, etc.

The directory will refine your search by company type: clear plastic bags distributors; clear plastic bags manufacturers; clear plastic bags service companies or clear plastic bags suppliers.

Finally, in the “Industry Information” category, in a brief explanation of the bag type, it is stated: “… most clear bags are made from low density polyethylene..Thicker extrusions of other poly materials and acrylics are made into clear tote bags for cosmetics…Other clear bag types and applications include pet fish bags, decorative retail or tradeshow bags, produce bags on a roll, archival bags and promotional bags”.

The examining attorney introduces the websites of other merchandising packaging producers, who use the term “clear” to define a type of bag: Anchor packaging promotes “clear frosted bags” and “clear Poly Bags”; Business.com website under the term BAGS: CLEAR, lists a variety of clear bags available from manufacturers and distributors on Ebay, featuring 200 ¼ clear bags for 8x 10 matting; the GlerupRevere Packaging website under bags features “clear-Bopp; Clear-Cellophane; Clear-polypropylene” stating, “ We offer high quality clear bags for chocolate, toffees, dry fruits, sweets and various candies”. Quality Packaging & Supplies Inc. offers a variety of sized and varied density “clear bags” ( at least 5 different catagories) Debarry packaging Inc. , specializing in all types of retail and industrial packaging, offers “clear bags”. Custom packaging Options Incorporated offers “clear poly bags, rolls and accessories”; Polybagcentral.com offers over 2,000 “clear poly bags” as well as other bag types; an article in Top Article Directory on “Using Plastic packaging” states that “…clear bags and polythene sacks help make to make such packaging much easier… Strong clear plastic is good for packing medical supplies and electronic constituents”. Momgen Packing Supplies, specializing in stationery and scrapbooking offers “clear resealable Cello Bags”; Otis Spunkmeyer offers “ individual clear bags to multi-pack packages; The Box Depot offers “ clear Vinyl Bags ( Pouches) & Cosmetic Bags, Polypropylene bags featuring “stand up clear bags” and “standard clear bags” as well as “cellophane bags clear”. MAC Paper Supply Inc. specializing in “whole gift packaging” offers “Clear Lip-Tape Bags” listing 16 different sizes and quality of “clear” bags. Finally, Nashville Wraps specializes in “ clear flat shrink bags: ”These high quality clear bags handle low shrink temperatures”.

While the examining attorney is aware that foreign product websites are often of questionable value to indicate the significance of the term to American consumers, several foreign sites are made of record here, demonstrating that the term “clear bags” is not unique to the U.S. packaging industry, but appears to be a standard globally as well. The IQS Directory , under “clear plastic bags and “clear bags” lists companies serving Western Canada; Kusum Packaging, a Chennai company, states, “ We have expertise in manufacturing clear bags with great printability at cost-efficient prices”. The British firm of HADO devotes a special category to “clear bags”: “Our flexible machinery produces clear bags, printed bags…”Indiamart, a company website for packaging products in the Indian region, lists Tall Boy Stationeries Limited as specialzing in clear bags: “ We offer our range of clear bags in different sizes, shapes and designs to meet the varied requirements of our clients across the globe.”

Furthermore, it should be noted that many of the enclosures can be found ( or related information can be found) using the generic or highly descriptive tag line, “ clear bags” among other generic packaging tag lines—i.e. plastic bags, poly bags, etc..

Such material clearly shows that the term “clear bags” or “clear plastic bags” is used in a highly descriptive or generic manner in the merchandise packaging industry, including stationery products. The applicant has a very high burden to establish acquired distinctiveness of the term CLEARBAGS as a unique source origin indicator for the listed goods, plastic bags for merchandise packaging.

New Evidence of Applicant Remains Insufficient to Establish Acquired Distinctiveness:

The new evidence of record consists of only four affidavits submitted by a former customer, a sales manager of a national stationery show, and two competitors, neither of whom are among the packaging companies who use the term “ clear bags” in a descriptive /generic manner. ( It is uncertain if one of the competitors, Impact Photographics, Inc. is related in some manner to a subsidiary of the applicant, Impact Images, which uses the website address www.clearbags.com for ordering photographic packaging and mounting material—see Exhibit B ( pages 21-25) in response filed by applicant on 2/22/10)

Quantitatively, such a low number of recognition affidavits would not appear to establish acquired distinctiveness of the term among the relevant customers and competitors in the industry, after 16 years of use of the term in connection with the identified goods. As previously stated, proof of distinctiveness requires more than proof of the existence of a relatively small number of people who associate the name as the primary source origin indicator. Poselux Chemical Co., Inc. v. Parsons Ammonia Co. Inc. 132 USPQ 627 (CCPA 1962) .

Qualitatively, the affidavits do not prove that use of the term “clear bags” by other industry parties points uniquely to the applicant as a source origin indicator. Each affidavit contains the identical statement: “ I believe that CLEARBAGS is not a generic term, as the word “clear” describes a characteristic found in many genuses of packaging, rather than a type of bag or film.” However, this statement does not establish that “clear bags” as a term, is not used generically or in a highly descriptive manner by others in the industry. This statement seems to imply that, since the term “clear” is used to describe a characteristic of other genuses of packaging, it is not generic or highly descriptive when applied to bags or film ( the issue of the meaning of the term in relation to film would not appear to be relevant, since such goods are not specifically listed in the current identification clause). The fact that it would possess this generic or highly descriptive significance for other types of packaging, would seem to reinforce the same generic or descriptive meaning of the term “clear” when applied to bags. Such a statement does not lessen the generic/ highly descriptive meaning of the term as used by others in the industry, as seen in prior evidence made of record, and evidence introduced in this letter. In fact, it would appear to support the position that in the packaging industry, use of the word “clear”, applied to a generic term for a type of packaging, would be understood as being merely descriptive or generic of such packaging, defining a category of packaging.

Given the extensive industry use of the term “clear bags” and variants of the term, by all types of bag suppliers and manufacturers, for all types of packaging purposes, from industrial to stationery and craft and gift items, it would appear that the statement found in all affidavits that the term “CLEARBAGS has become distinctive of plastic or paper bags for merchandise packaging, plastic envoelops, bags and pouches for packaging consumer and retail items, polypropylene films for commercial and industrial packing use and polypropylene films for use in the manufacture of envelopes sold in commerce” ( the last two items not contained in the current identification clause and therefore, not relevant to this issue) is an unsupported statement, which does not rebut the factual circumstances of industry of the term “clear bags” as a generic or highly descriptive term of art for packaging bags for all types of uses.

The affidavits also rely on applicant’s extensive use of the term in connection with the identified goods. However, Applicant amended the application to assert acquired distinctiveness based on five years’ use in commerce. However, because the applied-for mark is highly descriptive of applicant’s goods and/or services, the allegation of five years’ use is insufficient to show acquired distinctiveness. In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a).

Moreover, it is uncertain what aspect of the overall mark used by the applicant in its catalogs and promotional materials, and inserted as an exhibit in the affidavits, is recognized by consumers and the persons making the affidavits. The most prominent use of the term CLEARBAGS in exhibit A and B involves use of the wording in what is called the applicant’s logo—in other words, the exhibits emphasize not only the word CLEARBAGS, but a particular display of the term—with two squares positioned underneath the letters “C” and “B”, the design of a goldfish beside the wording, and the phrase, “ Be Seen” immediately underneath the term CLEARBAGS. It is uncertain, therefore, if recognition of the term is based solely on the word itself, or the word in connection with arbitrary design elements and terminology, which creates a separate commercial impression apart from the term CLEARBAGS. Moreover, an examination of the material submitted by the applicant to establish distinctiveness of the term CLEARBAGS alone in its response of 2/22/10 and other responses clearly shows the applicant’s logo, rather than the word CLEARBAGS alone, as the most prominent feature promoting its products: it is displayed on the corporate headquarters, on stationery and receipt and payment forms, and on advertising and promotional items generally. Therefore, it would appear that the applicant’s promotional efforts have not been solely in relation to the word, but rather with respect to the corporate logo, involving design elements apart from the wording itself.

Finally, the term “clear” as used in the applicant’s own catalog and other promotional material made of record in prior responses from the applicant, is used in the same generic or highly descriptive manner as other packaging manufacturers to identify types of packaging products. The applicant’s vision statement is : “To make Clearbags the product customers demand when it comes to clear packaging “ ( emphasis supplied). In its catalog, the applicant promotes specialty packaging such as “Clear Hang Tabs: “ Hang tabs are clear and have adhesive on the lower section”. Such packaging also includes: “Clear Colored Gift Bags” and “ Clear Poly Tubing” Moreover, in some of applicant’s advertising, the applicant alternates between use of the term “CLEARBAGS” as its source indicator, and what would be perceived as generic or highly descriptive useage: Biodegradable Clear Bags. The advertisement for such products states :” Clearbags Biodegradable Clear Bags ( emphasis added) use Earthfirst PLA film…” ( see p.59 applicant’s response of 2/22/10 in TICRS application file)

Applying the analysis conducted by the Trademark Trial and Appeal Board for evidence submitted to establish acquired distinctiveness in the recent published decision, In re Charles N. Van Valkenburgh, 97 USPQ2d 1757 (TTAB 2011), none of the evidentiary material ( length and manner of use; direct consumer and industry testimony) are sufficient to demonstrate acquired distinctiveness, particularly for a term which appears to be either a generic or highly descriptive identifier in the packaging industry for a type of packaging bag, regardless of the particular uses or channels of trade for such packaging bags.

In sum, the evidence submitted in the Request for Reconsideration is insufficient to prove acquired distinctiveness of the term CLEARBAGS for the following reasons:

1). Based on third party evidence of record, the term CLEAR BAGS is used extensively and generically in the packaging industry to identify a type of packaging—bags made of a clear material, usually different grades of plastics. Moreover, such usage is not restricted to the United States market, but is used in such a manner internationally, as well.

2). The addition of four affidavits is quantitatively insufficient to overcome the high burden the applicant must meet to establish that this industry term also functions as a unique source origin indicator for the same type of goods manufactured by the applicant.

3). Qualitatively, such affidavits do not demonstrate that “clear bags” is not regarded as a generic or highly descriptive product identifier for a type of bag used in the packaging industry, for bags used for a wide variety of packaging purposes, in many different industries, including stationery or gift packaging.

4). Given the prominent use of the applicant’s logo, incorporating distinctive design elements and phrases apart from the term CLEARBAGS, on almost every type of promotional, advertising and business operations material submitted by the applicant and the exhibits in the affidavits, it is uncertain if the wording CLEARBAGS itself is recognized as a source origin indicator , apart from its logo usage. Moreover, the applicant, in such promotional material , intermingles generic or descriptive usage of the term CLEAR BAGS with the term it seeks to register as a source indicator, CLEARBAGS.

For these reasons, the refusal to register under the provisions of Section 2(e)(1) of the Trademark Act and the rejection of the evidence submitted under the provisions of Section 2(f) of the Trademark to establish acquired distinctiveness is again MADE FINAL.

The application file will be returned to the Trademark Trial and Appeal Board for resumption of the appeal. TMEP section 715.04(a).

Henry S. Zak

/Henry S. Zak/

Trademark Examining Attorney

Law Office 117

(571) 272-9354

henry.zak@uspto.gov

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