PopPack LLC

Trademark Trial and Appeal Board

Mar 31, 2011

No. 77544768 (T.T.A.B. Mar. 31, 2011)

Mailed: March 31, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PopPack LLC
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Serial No. 77544768
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Burt Magen of Vierra Magen Marcus & Deniro LLP for PopPack
LLC.

Drew Leaser, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Holtzman, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

PopPack LLC has filed an application to register in
standard characters BUBBLESEAL for goods ultimately
identified as “non-metal seals for use in opening a
package, sold as an integral component of plastic packaging
for commercial use” in International Class 20.1
Registration was originally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that BUBBLESEAL is merely descriptive of applicant’s

1 Application Serial No. 77544768, filed August 12, 2008.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77544768
2
goods. Applicant subsequently filed an amendment to allege
use and amended the application to seek registration on the
Supplemental Register. In response, the examining attorney
refused registration on the Supplemental Register under
Section 23 of the Trademark Act, 15 U.S.C. §1091, on the
ground that BUBBLESEAL is incapable of identifying
applicant’s goods.
In view of applicant’s amendment, the sole issue in
the appeal is whether BUBBLESEAL is generic for applicant’s
goods and, thus, unregistrable on the Supplemental
Register.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence." In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987); see also In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987). The
critical issue is to determine whether the record shows
that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of goods or services in question. H.
Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
Serial No. 77544768
3
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
We find that the genus of goods at issue in this case
is adequately defined by applicant’s identification of
goods, specifically, “non-metal seals for use in opening a
package, sold as an integral component of plastic packaging
for commercial use.”
Turning to the second inquiry, as noted by the
examining attorney, “no restrictions have been placed on
the consumers to whom the packages incorporating
applicant’s seals are offered[; therefore,] it is presumed
that the relevant purchasing public is the general public.”
Br. pp. 4-5. The examining attorney argues that the word
BUBBLE “refers to the name of a key characteristic or
feature of Applicant’s packaging seals, namely, ‘a bubble-
Serial No. 77544768
4
seal formed by one or more bubbles along the edge to be
opened’ ... [and t]he word ‘SEAL’ is also generic because
the class or genus of the goods at issue is non-metal seals
for use in opening a package.” Br. pp. 5-6. The examining
attorney continues asserting that the “mark as a whole
maintains its generic nature when these words are combined,
as the joining of the individual terms into one compound
word lends no additional meaning to ‘BUBBLESEAL,’ which is
a packaging seal that incorporates bubbles.” Br. p. 6.
In support of his position that BUBBLESEAL is generic
the examining attorney submitted the following dictionary
definitions:
Bubble: a small body of gas;

Seal: a closure that must be broken to be
opened.

Merriam-Webster Online Dictionary (2010) retrieved at
www.merriam-webster.com.

In addition, he relies on excerpts from applicant’s
patent submitted by applicant. The title of the patent is
“Bubble-seal apparatus for easily opening a sealed package”
and representative excerpts are set forth below:
The package has a bubble-seal formed by one or
more bubbles along the edge to be opened;

It is another object of this invention to provide
such a bubble-seal which permits the consumer to
manually open a tough, hermetically sealed
package using only his fingers without tearing
Serial No. 77544768
5
the closure material or employing a separate tool
or appliance;

It is a further object of this invention to
provide such a bubble-seal which permits a
consumer to open a package without employing a
sharp instrument or cutting edge.

Based on this evidence the examining attorney
concludes that “the relevant purchasing public, when
confronted by the term ‘BUBBLESEAL’ on packages that
contain seals that are formed by one or more bubbles along
the edge to be opened, would primarily understand the
applied-for mark to refer to packaging seals with bubbles
as a key feature or characteristic of those seals [and
a]pplicant has provided no evidence of a non-generic
meaning created by the term ‘BUBBLESEAL’ that contradicts
this conclusion.” Br. p. 11.
In traversing the refusal, applicant “does not dispute
that the packaging technology described in its patents
incorporates one or more bubbles along the edge of a
package, and pressing or popping the bubbles opens the
package” but contends that the relevant public would not
“understand that the term BUBBLESEAL is the generic name
for ‘non-metal seals for opening a package.’” Br. p. 2.
Applicant continues arguing that the examining attorney has
improperly parsed the words BUBBLE and SEAL to conclude
that the proposed mark is generic. Citing to In re
Serial No. 77544768
6
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1831
(Fed. Cir. 1999), applicant asserts that the examining
attorney “has not provided substantial evidence that the
mark as a whole would be considered generic.” Id.
On this point, applicant is incorrect. The
appropriate standard to be applied in this case is set
forth in In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110, 1111-12 (Fed. Cir. 1987) (“[T]he PTO has satisfied
its evidentiary burden [with] evidence including dictionary
definitions that the separate words joined to form a
compound have a meaning identical to the meaning common
usage would ascribe to those words as a compound”) and as
delineated by American Fertility, 51 USPQ2d at 1837 (“Gould
is limited, on its facts, language, and holding, to
compound terms formed by the union of words.”) It is
entirely appropriate for the examining attorney to present
evidence that the constituent parts of the mark are generic
for significant aspects of the goods and when combined do
not magically create a term capable of registration.
American Fertility, 51 USPQ2d at 1836 (“[I]f the compound
word would plainly have no different meaning from its
constituent words, and dictionaries, or other evidentiary
sources, establish the meaning of those words to be
generic, then the compound word too has been proved
Serial No. 77544768
7
generic. No additional proof of the genericness of the
compound word is required.”)
Put simply, applicant’s proposed mark precisely names
what its goods are as applicant itself has had occasion to
experience in writing its patent application where it calls
its new invention a “bubbleseal.” Applicant’s argument
that the excerpts from its patent are not relevant is
untenable. Applicant’s own usage of its mark in a generic
manner is certainly relevant to the issue. See Gould, 5
USPQ2d at 1019 (“Gould’s own submissions provided the most
damaging evidence [that the word is generic]”). Further,
the absence of public use of the compound term or
dictionary entries is not fatal to the examining attorney’s
case. See Gould, 5 USPQ2d 1110 (fact that generic
designation not found in dictionary not controlling on the
question of registrability). Moreover, it is not clear to
what extent applicant’s type of product has been on the
market. Applicant’s patent would indicate that this is a
new invention and the fact that applicant may be the first
and only user of this generic designation is not
dispositive on the issue of genericness. See In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983). As noted by the examining attorney, he must
show that the relevant public would understand the applied-
Serial No. 77544768
8
for mark as a whole to have generic significance, not that
they use it in that manner. Cf. In re 1800Mattress.com IP
LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).
The record establishes that the individual components
of applicant’s mark are generic for the offered goods,
specifically non-metal seals for use in opening a package,
sold as an integral component of plastic packaging for
commercial use, and their combination lends “no additional
meaning to the term.” In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir.
2001).
Applicant’s reference to third-party registrations
where the Office allowed registration for marks that
contain the word BUBBLE or SEAL are not persuasive. See,
e.g., Reg. No. 1247076, issued August 2, 1983, for the mark
BUBBLE WRAP for “cellular cushioning packaging material
which contains entrapped bubbles of air or other gases”;
Reg. No. 1078920, issued December 6, 1977, for the mark
BUBBLE PAK for “cushioning material for wrapping and
packaging of articles and which contains entrapped bubbles
of air or other gases”; and Reg. No. 1913324, issued August
22, 1995, for the mark STEEL SEAL for “adhesive sealant for
general use in the heating and ventilating industry; gasket
material in the form of extruded elastomers and slit to
Serial No. 77544768
9
width sheets for use in the heating and ventilating
industry.” First, the third-party registrations with the
term SEAL often have it disclaimed or somehow joined to
non-descriptive elements in the mark and are, for the most
part, registered in connection with somewhat dissimilar
goods. With regard to all of the proffered third-party
registrations, including the “BUBBLE” registrations owned
by one entity, we are not bound by prior decisions, in
particular ones made decades ago, and whether a proposed
mark is generic must be determined based on the evidence of
record at the time registration is sought. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001).
Based on this record, the examining attorney clearly
established that BUBBLESEAL is generic for the identified
goods, or more precisely under the language of Section 23,
is not “capable of distinguishing the applicant’s goods or
services.” 15 U.S.C. §1091(c).
Decision: The refusal to register on the Supplemental
Register based on genericness under Section 23 is affirmed.