Ranpak Corp.

Trademark Trial and Appeal Board

Apr 29, 2009

No. 77202698 (T.T.A.B. Apr. 29, 2009)

Mailed:
April 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ranpak Corp.
________

Serial No. 77202698
_______

Don W. Bulson of Renner, Otto, Boisselle & Sklar, LLP for
Ranpak Corp.

Shannon M. Twohig, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Introduction
Applicant, Ranpak Corp., seeks registration on the
Principal Register of the mark AUTOFILL (in standard
character form) for goods identified in the application as
“automated equipment for dispensing dunnage into
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77202698
2
containers, and components therefor,” in International
Class 9.1
At issue in this appeal are (1) the Trademark
Examining Attorney’s final refusal to register applicant’s
mark on the ground that applicant has failed to comply with
a requirement for an amended identification of goods, and
(2) the Trademark Examining Attorney’s final refusal to
register applicant’s mark under Trademark Act Section 2(d).
Applicant and the Trademark Examining Attorney have
filed briefs on appeal.
After careful consideration of the evidence of record
and the arguments of counsel, we reverse the refusal which
is based on applicant’s failure to comply with the
requirement for an amended identification of goods. We
affirm the Section 2(d) refusal to register.

Identification of Goods
We turn first to the final refusal based on
applicant’s failure to comply with the Trademark Examining

1 Serial No. 77202698, filed on June 11, 2007. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and April 14, 2005 is alleged in the application
to be the date of first use of the mark anywhere and the date of
first use of the mark in commerce.

Ser. No. 77202698
3
Attorney’s requirement for an amended identification of
goods.
Trademark Rule 2.32(a)(6), 37 C.F.R. §2.32(a)(6),
requires that the application include “a list of the
particular goods or services on or in connection with which
the applicant uses or intends to use the mark.” The Office
has discretion to require a more particularized statement
of the goods in the identification of goods, including in a
case where the goods as identified could be classified in
two different International Classes of goods. See In re
Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1544 (Fed.
Cir. 2007). See also TMEP §1402.01 (5th ed. 2007).
Applicant’s goods as currently identified in the
application are “automated equipment for dispensing dunnage
into containers, and components therefor,” in Class 9.
With regard to “dunnage,” applicant explains (brief at page
2):
Dunnage is defined as a packing material used to
protect a product or products from damage during
transport. Typical forms of dunnage include, for
example, plastic peanuts, air bags, bubble wrap,
rigid foam bracing, and crumpled paper. Dunnage is
placed in a container around the product or products
that are packed in the container to protect the
product or products from damage and/or shifting
during shipment.

The Trademark Examining Attorney contends that the
current identification of goods is indefinite and must be
Ser. No. 77202698
4
clarified to adequately identify the nature of the goods
and the proper classification of the goods.
Specifically, the Trademark Examining Attorney
contends that the current identification of goods is
unacceptably indefinite because it does not specify whether
the “automated equipment for dispensing dunnage into
containers” dispenses metered amounts, or random amounts,
of dunnage.2 In the March 21, 2008 final Office action, the
Trademark Examining Attorney asserted: “Random dispensing
of dunnage would be machinery properly classified in
International Class 007. If the goods are dispensing
metered amounts of dunnage each time, then the goods are
automated equipment in International Class 009.” Also in
the final Office action, the Trademark Examining Attorney
suggested that an acceptable identification of goods would
be either “machinery for use in dispensing dunnage into
containers and components therefor” in Class 7, or

2 In her appeal brief, the Trademark Examining Attorney contends
that the current identification of goods also is indefinite
because it does not specify the “and components therefor.” We
note that in her first Office action, the Trademark Examining
Attorney required applicant to amend the identification of goods
to specify the “and components therefor.” However, this
requirement was not repeated in the final Office action, and it
therefore is not before us as a final requirement and basis for
final refusal. We note as well that the Trademark Examining
Attorney’s suggestions in her final Office action as to what
would be acceptable Class 7 and Class 9 identifications of goods
included the language “and components therefor” without further
specification.
Ser. No. 77202698
5
“automated equipment for the metered dispensation of
dunnage into containers and components therefor” in Class
9.
We are not persuaded that an amendment to the
identification of goods is necessary. There is no evidence
in the record (including any citation to the Office’s
Acceptable Identification of Goods and Services Manual,
such as was before the court in In re Omega SA, supra, 83
USPQ2d at 1542, involving “chronographs”) which shows that
applicant’s goods as currently identified could be
classified in both Class 7 and Class 9, depending on
whether the goods dispense random amounts of dunnage, or
metered amounts of dunnage. There is no basis on this
record for finding that this asserted “random” versus
“metered” distinction is dispositive in determining whether
goods like these, in general, are to be classified in Class
7 or in Class 9.
Moreover, even if the “random” versus “metered”
distinction between Class 7 “machinery” and Class 9
“automated equipment” exists, we reasonably assume that
applicant’s goods, which dispense dunnage, would only
dispense metered amounts of dunnage. It is unlikely that
dunnage would be dispensed in random amounts, since the
amount of dunnage required to pack a particular container
Ser. No. 77202698
6
would seem to depend on the size of the container, the size
of the objects in the container, and the manner in which
those objects are arranged in the container. To that
extent, the amount of dunnage dispensed would be “metered,”
rather than “random,” if in fact that is the distinction to
be made.
For these reasons, we find that “automated equipment
for dispensing dunnage into containers, and components
therefor” is a sufficiently definite identification of
goods. We therefore reverse the refusal which is based on
applicant’s failure to comply with the final requirement
for an amended identification of goods.

Section 2(d) Refusal
We turn next to the substantive ground for refusal,
i.e., likelihood of confusion under Trademark Act Section
2(d).
The Trademark Examining Attorney has refused
registration on the ground that applicant’s mark, AUTOFILL
(in standard character form), as applied to the goods
identified in the application, i.e., “automated equipment
for dispensing dunnage into containers, and components
therefor,” so resembles the mark SCHOLLE AUTO-FILL,
previously registered (in typed or standard character form)
Ser. No. 77202698
7
for goods identified in the registration as “automatic bag
filling machine,”3 as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin our likelihood of confusion analysis with the
second du Pont factor, which requires us to determine the
similarity or dissimilarity of the goods, as identified in
the application and in the cited registration,
respectively. It is settled that it is not necessary that
these respective goods be identical or even competitive in
order to find that the they are related for purposes of our

3 Registration No. 0705202, issued on October 4, 1960. Second
renewal.
Ser. No. 77202698
8
likelihood of confusion analysis. That is, the issue is
not whether consumers would confuse the goods themselves,
but rather whether they would be confused as to the source
of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB
1984). It is sufficient that the goods be related in some
manner, or that the circumstances surrounding their use be
such, that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). For purposes of
this proceeding involving the registrability of applicant’s
mark, our comparison of the goods and/or services must be
based solely on the goods and/or services as they are
recited in the application and the cited registration,
respectively, not on what any extrinsic evidence or
argument might show about the specific nature of the goods.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Ser. No. 77202698
9
Cir. 1993); In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB
2008); In re Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006).
Applying these principles in the present case, we find
as follows.
To review, applicant’s goods are identified in the
application as “automated equipment for dispensing dunnage
into containers, and components therefor.” The goods
identified in the cited registration are “automatic bag
filling machines.”
We find that although applicant’s goods and
registrant’s goods, as identified in the application and
registration, respectively, are not identical and perform
different functions, they nonetheless are complementary
goods which are similar and related for purposes of the
second du Pont factor. They are likely to be used, perhaps
contiguously, on the same factory production line as part
of the final process of packing and shipping the factory’s
goods.
Applicant itself states that registrant’s “automatic
bag filling machines” “would be located in a production
facility of a customer’s facility, where product, such as
syrup,4 is being dispensed into bags. The filled bags may

4 Registrant’s goods, as identified in the registration, are not
limited as to the types of products which are or could be
Ser. No. 77202698
10
later be placed in other containers for shipping and the
containers may pass to the shipping department where the
bags and/or containers for the bags are packed for
shipment.” (Brief at 1-2.) Applicant then states that
“Applicant’s goods are typically located in a shipping area
where dunnage is added to boxes containing one or more
articles for shipment, so as to fill any remaining void in
the box to prevent the article or articles from shifting in
the box during shipment.” (Brief at 2.)
Thus, by applicant’s own description of a production
facility’s packing and shipping process, registrant’s
equipment is used to initially pack the products in bags,
those bags then are packed into containers for shipment,
and applicant’s equipment dispenses dunnage into those same
containers. Applicant’s goods and registrant’s goods serve
different purposes, but they are complementary pieces of
machinery or equipment that are used together in the
process of packaging and shipping a production facility’s
products.
For these reasons, we find that applicant’s goods and
registrant’s goods, as they are identified in the

dispensed into bags. Therefore, applicant’s contention that
registrant’s actual goods are used to dispense syrup only is not
pertinent.

Ser. No. 77202698
11
application and the registration, respectively, are
complementary and related goods. We therefore find that
the second du Pont factor weighs in favor of a finding of
likelihood of confusion.
Under the third du Pont factor, we find that
applicant’s goods and registrant’s goods are likely to be
marketed in the same trade channels and to the same classes
of purchasers. These purchasers are likely to be the
owners or operators of production facilities who require
and would use applicant’s and registrant’s machines or
equipment together as part of the process of packing and
shipping their products. These purchasers are likely to
look to the same or similar sources, such as industrial
equipment suppliers, when they want to purchase such
complementary goods. For these reasons, we find that the
third du Pont factor weighs in favor of a finding of
likelihood of confusion.
Under the fourth du Pont factor (conditions of
purchase), we find that applicant’s and registrant’s goods
could be fairly expensive pieces of machinery, and that the
purchasers of the goods are likely to be knowledgeable in
the field. The fourth du Pont factor weighs against a
finding of likelihood of confusion.
Ser. No. 77202698
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We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result.
Applicant’s mark is AUTOFILL. The cited registered
mark is SCHOLLE AUTO-FILL. We find that applicant’s mark
AUTOFILL and the AUTO-FILL portion of the cited registered
are identical in terms of sound, connotation and commercial
impression, and essentially identical in terms of
appearance. The hyphen in AUTO-FILL does not suffice to
distinguish it from AUTOFILL.
Comparing the marks in their entireties, we find that
the only significant difference between the marks is the
presence of the house mark SCHOLLE in the cited registered
mark. Under our case law, the presence of a house mark
generally will not suffice to distinguish two otherwise
similar product marks, unless there are recognizable
Ser. No. 77202698
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differences in the product marks, or unless the shared
product mark is highly suggestive as applied to the
parties’ goods and/or services. Compare In re Fiesta Palms
LLC, 85 USPQ2d 1360 (TTAB 2007)(confusion not avoided by
applicant’s addition of house mark CLUB PALMS to shared
product mark MVP in absence of evidence that MVP is highly
suggestive of casino services), with Knight Textile Corp.
v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005)(confusion avoided by applicant’s addition of house
mark NORTON McNAUGHTON to shared product mark ESSENTIALS
where evidence (dictionary definition, twenty-three third-
party registrations of ESSENTIALS for clothing) established
that ESSENTIALS is highly suggestive for clothing).
We find that neither of the exceptions to the house
mark rule (that the presence of a house mark will avoid
confusion) is applicable here. First, as discussed above,
we find that applicant’s product mark AUTOFILL and the
product mark in the cited registration, AUTO-FILL, are
essentially identical.
Second, we find on this record that the shared product
mark AUTOFILL/AUTO-FILL, though obviously suggestive as
applied to the goods in this case, is however not so highly
suggestive or otherwise weak in the marketplace that the
presence of the house mark SCHOLLE in the cited registered
Ser. No. 77202698
14
mark suffices to avoid confusion. Unlike the situation in
Knight Textile, supra, where the record included dictionary
evidence and twenty-three third-party registrations which
established that ESSENTIALS was highly suggestive as
applied to clothing, there is no such dictionary or third-
party registration evidence in this case.
For these reasons, we find that the presence of the
house mark SCHOLLE in the cited registered mark does not
suffice to distinguish applicant’s mark from the cited
registered mark when the marks are considered in their
entireties. We find that the marks are similar in terms of
appearance, sound, connotation and commercial impression.
We therefore find that the first du Pont factor weighs in
favor of a finding of likelihood of confusion.
Considering and balancing all of the du Pont factors
pertinent to this case, and for the reasons discussed
above, we conclude that a likelihood of confusion exists
and that the refusal to register based on Trademark Act
Section 2(d) is proper. To the extent that any doubts
might exist as to the correctness of this conclusion, we
resolve such doubts against applicant. See In re Shell Oil
Co., supra; In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc. supra.
Ser. No. 77202698
15
Decision: The refusal to register based on
applicant’s failure to require with the requirement for an
amended identification of goods is reversed. The refusal
to register based on Trademark Act Section 2(d) is
affirmed.