Free-Flow Packaging Corp.

Trademark Trial and Appeal Board

Dec 21, 1998

No. 74675535 (T.T.A.B. Dec. 21, 1998)

Paper No. 14
SIMMS/md
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB DEC. 21, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Free-Flow Packaging Corporation
________
Serial No. 74/675,535
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Edward S. Wright of Flehr, Hohbach, Test, Albritton &
Herbert LLP for Free-Flow Packaging Corporation
Jeri J. Fickes, Trademark Examining Attorney, Law Office
108 (Dave Shallant, Managing Attorney)
_______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Free-Flow Packaging Corporation, a California
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark shown
below
Ser No. 74/675,535
2
for fan-folded or pleated paper sheets which can be
crumpled and wrapped about objects packed in cardboard
cartons such as cardboard boxes.1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15
USC §1052(d), on the basis of Registration No. 1,643,593,
issued May 7, 1991, for the mark DIAMOND-PAK for dunnage
devices, namely, selectively expandable cellular void
fillers constructed from corrugated paperboard.2
Applicant’s attorney and the Examining Attorney have
submitted briefs but no oral hearing was requested.
We affirm.
Relying upon a dictionary definition of dunnage
(“cushioning or padding used in a shipping container to
protect fragile articles against shock and breakage”), the
Examining Attorney argues that registrant’s selectively
expandable void fillers made from corrugated paperboard are
closely related and potentially competing products to
applicant’s paper sheets which are used to protect objects
packed in cardboard cartons. According to the Examining
Attorney, both products are paper shipping products which

1 Application Serial No. 74/675,535, filed May 15, 1995, based
upon applicant’s bona fide intention to use the mark in commerce.
Applicant has disclaimed exclusive rights to use the words “PAPER
PACKAGING” apart from the mark as shown.
2 Office records show that a Section 8 and 15 affidavit or
declaration has been filed.
Ser No. 74/675,535
3
can perform the function of cushioning goods being shipped.
The Examining Attorney argues that these products could be
sold in the same channels of trade to the same purchasers
or users. The Examining Attorney argues that the
respective goods may differ in form but not in function.
In support of her refusal, the Examining Attorney has
submitted a number of third-party registrations purportedly
demonstrating that a supplier of one type of packaging
material also makes other types.3
With respect to the marks, the Examining Attorney
argues that the words DIAMOND PACK dominate in applicant’s
mark and that that dominant portion of applicant’s mark
closely resembles the registrant’s phonetic equivalent
DIAMOND-PAK. Also, the Examining Attorney argues that the
diamond design in applicant’s mark simply reinforces the
word “DIAMOND,” and that the other words in applicant’s
mark are laudatory words with little trademark
significance.

3 For example, one registration lists the following description:
“core and panels of paper, coated and uncoated, for packing and
protective products, packaging containers made primarily of
paper, void fillers made primarily of paper used for packaging,
pads and containers for packaging and transporting of material,
panels made of paper products for use in material handling, and
dunnage panels made of paper products.” Another registration,
since canceled, lists the following goods: “Protective
packaging, shipping and cushioning material made predominantly of
paper and cardboard but including plastic forms and foils and
Ser No. 74/675,535
4
Applicant, on the other hand, maintains that the
respective marks are different in commercial impression.
With respect to the goods, applicant argues that the
respective goods are different and are sold in different
channels of trade. More particularly, applicant relies
upon a different definition of “dunnage” (“temporary
blocking or bracing installed by the shipper in the hold of
a ship, in railroad car, or in a truck to protect freight
during shipment”) and argues that a “void filler” is a term
of art in the trucking industry to denote a material which
is used to prevent loads from shifting during transport.
Applicant’s attorney has also submitted two product sheets
from the registration file of the cited mark indicating the
nature of registrant’s goods. Therefore, according to
applicant, registrant’s goods are honeycomb panels with
diamond-shaped cells which are used in the trucking
industry. Applicant, on the other hand, is a manufacturer
of loose fill protective packing material with applicant’s
particular products here being either wrapped about items
or crumpled and placed in a cardboard box with the items
being shipped. Applicant maintains that its goods are not
selectively expandable, are not void fillers, and are not

combinations thereof, all made in the form of envelopes, boxes,
bags, sheets and rolls.”
Ser No. 74/675,535
5
cellular products made of corrugated paperboard. Applicant
also maintains that its goods are used by manufacturers who
sell products and are not used in the transportation
industry. With respect to the third-party registrations,
applicant maintains that these do not show that the
manufacturers of void fillers also make loose fill
materials or protective wraps for the packaging industry.
In response to applicant’s arguments, the Examining
Attorney maintains that registrant’s product sheets do not
contain a definition of the term “void filler” and that
such products could fill voids between cartons or within a
carton, or both. Moreover, the Examining Attorney argues
that applicant is using product literature to limit a
description of goods in a registration, which is not
permissible. Finally, the Examining Attorney argues that
even if one product is for external cushioning of a package
and one is for use within a cardboard container, these
products are nevertheless closely related and may emanate
from the same source.
First, we agree with the Examining Attorney that the
respective marks are very similar in commercial impression.
In this regard, the dominant part of applicant’s mark is
almost identical to the registered mark. While we must
consider the other aspects of applicant’s mark, the diamond
Ser No. 74/675,535
6
design and the phrase “THE CROWN JEWEL OF PAPER PACKAGING”
do little to distinguish the marks as to source or origin.
Any differences do not serve to avoid confusion, in our
judgment. In fact, these other aspects of applicant’s mark
tend to reinforce the “DIAMOND” portion of its mark.
With respect to the goods, the Examining Attorney is
correct that, generally, extrinsic evidence may not be used
to limit a description of a product or service. See, for
example, In re Elbaum, 211 USPQ 639 (TTAB 1981). All we
know about registrant’s goods are that they are selectively
expandable cellular void fillers constructed from
corrugated paperboard. There is no restriction in that
identification of goods with respect to the channels of
trade in which those goods are sold, nor is there any
indication that those goods are sold only to the trucking
industry.4 Likewise, there is no restriction in applicant’s
application to indicate that its paper sheets designed to
cushion objects within cardboard cartons are limited as to
any particular channel of trade or class of purchaser. We
agree with the Examining Attorney that registrant’s
corrugated paperboard void fillers are related to
applicant’s paper sheets designed to cushion objects within

4 Indeed, even the definition which applicant relies upon does
not restrict dunnage material to the trucking industry.
Ser No. 74/675,535
7
cardboard cartons. Accordingly, when such commercially
related products are sold under such similar marks as we
have here, we conclude that purchasers, aware of
registrant’s DIAMOND-PAK corrugated paperboard products,
may well believe that applicant’s paper packing sheets
emanate from or are otherwise sponsored or endorsed by
registrant.
Decision: The refusal of registration is affirmed.
R. L. Simms
T. J. Quinn
B. A. Chapman
Trademark Administrative
Judges, Trademark Trial
and Appeal Board