UFP Technologies, Inc.

Trademark Trial and Appeal Board

Sep 12, 2012

No. 85178012 (T.T.A.B. Sep. 12, 2012)

Mailed:
September 12, 2012

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re UFP Technologies, Inc.
________
Serial No. 85178012
_______
Melanie T. Frazier of Howard & Howard Attorneys PLLC for UFP Technologies,
Inc.
Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Bucher, Mermelstein and Lykos, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
UFP Technologies, Inc. seeks registration on the Principal Register of the
mark MF PLANTABLE PACKAGING for goods identified in the applica-
tion, as amended, as follows:
paper and cardboard packaging materials infused with
seeds, namely, folding cartons, envelopes, die cut compo-
nents in the nature of packaging materials in the nature of
paper and cardboard containers and paper and cardboard
cup sleeves; clamshells infused with seeds in the nature of
cardboard clamshell packaging; bookmarks made of paper
infused with seeds; business cards infused with seeds; paper
hang tags infused with seeds; cup inserts of decorative paper
This Opinion is NOT a
Precedent of the TTAB
Serial No. 85178012
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infused with seeds to be used as decoration in the wall of a
tumbler, in International Class 16. 1
The Trademark Examining Attorney refused registration on the ground
that the two-word term, “Plantable Packaging,” comprises an unregistrable
component of an otherwise registrable mark under Section 6(a) of the Trade-
mark Act of 1946 (as amended), 15 U.S.C. § 1056(a). The Trademark Examin-
ing Attorney takes the position that inasmuch as this expression is merely de-
scriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), this
mark should not be registered for the identified goods herein absent a disclaim-
er of the wording “Plantable Packaging” apart from the mark as shown.
After the Trademark Examining Attorney made the refusal final, appli-
cant appealed to this Board. We affirm the refusal to register.
A mark is merely descriptive if it immediately conveys “knowledge of a
quality, feature, function, or characteristics of the goods or services.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See
also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) (A “mark is merely descriptive if the ultimate consumers im-
mediately associate it with a quality or characteristic of the product or service”);
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). To

1 Application Serial No. 85178012 was filed on November 16, 2010, based upon appli-
cant’s allegation of a bona fide intention to use the mark in commerce. Applicant has
volunteered to disclaim the word “Packaging” alone.

Serial No. 85178012
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be “merely descriptive,” a term need only describe a single significant quality or
property of the goods or services. Gyulay, 3 USPQ2d at 1009 (Fed. Cir. 1987).
Mere descriptiveness of a mark is not considered in the abstract, but in relation
to the particular goods or services for which registration is sought. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
Applicant argues that the term “Plantable Packaging,” creates an inherent
incongruity, and at worst for applicant, is a suggestive term inasmuch as it
only vaguely suggests a characteristic of applicant's goods, and that it still
requires imagination, thought, or perception to reach a conclusion as to what
can be done with the goods once they have served their useful purpose. Appli-
cant argues that it should not be required to disclaim this term because gen-
erally packaging is not used to grow vegetation.
By contrast, citing to dictionary entries and to a variety of third-party
websites, the Trademark Examining Attorney contends that these entries
all “demonstrate that the term ‘Plantable’ is used frequently to describe goods
that have a second life as a plant product after serving an initial purpose as, for
example, a party invitation, a personal journal, or product packaging,” that the
combined wording “plantable packaging” is not incongruous, but rather that
prospective consumers of applicant’s products will immediately perceive the
wording “Plantable Packaging” as describing a feature of these goods.
Serial No. 85178012
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We begin by looking at the dictionary definitions of the term “plantable,”
attached to the Trademark Examining Attorney’s Denial of applicant’s Request
for Reconsideration, October 24, 2011:
plant: transitive verb
1 a: to put or set in the ground for growth …
3 a: to place in or on the ground 2

plant:
12. to put or set in the ground for growth, as seeds, young trees, etc.3

plant: …
— plant·able: adjective 4

plant
RELATED FORMS
— plantable: adjective 5

plantable, a.
Capable of being planted; fit to be planted. 6

The Trademark Examining Attorney notes that directly beneath the
Dictionary.com entry for “plantable” were two paid advertisements for seed-
infused paper items similar to those of applicant:

2 http://www.merriam-webster.com/dictionary/plant, Merriam-Webster, 2011.
3 http://dictionary.reference.com/browse/plantable?s=t, Dictionary.com, 2011.
4 http://www.merriam-webster.com/dictionary/plantable, Merriam-Webster, 2011.
5 http://dictionary.reference.com/browse/plantable?s=t, Dictionary.com, 2011.
6 http://www.freedictionary.org/, also WEBSTER'S REVISED UNABRIDGED DICTIONARY
(1913).

Serial No. 85178012
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The Trademark Examining Attorney also included a number of web-
sites showing third-party businesses offering goods in plantable packaging in
an effort to be environmentally friendly:
Plantable Packaging Creates
Spruce Trees and Wildflowers
by MARK NAGURSKI
in ENVIRONMENT & SUSTAINABILITY
Welcome to IDDICTIVE - your daily fix of great business ideas. If you don't want
to miss a thing make sure to grab updates by RSS feed or email. It's free and
you can cancel them at any time.

Funky Plantable Packaging
Green business trends are hotter than ever as smart businesses add environ-
mentally friendly twists to just about everything they can – making ‘green living’
simpler for everyone.
Even better are the companies who are putting the environment at the heart of
their business models – and making a profit in the process. Two quick spots in-
clude plantable packaging and plantable stationery – both making our use of pa-
per less landfill and more hope filled (sorry).
In keeping with its brand identity, organic cosmetics company Pangea Organics
uses molded fibre packaging that is not only biodegradable but also plantable.
The packaging comes embedded with ‘edible sweet basil or flowering amaranth
seeds’ and this Christmas they went all out with Spruce tree seeds.
On a similar note, Botanical Paperworks sell a range of biodegradable stationery,
cards and calendars – this time embedded with wildflower seeds. When you’re
done with them; simply plant, add water and watch your waste grow!
Serial No. 85178012
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Two simple ways to make traditionally wasteful industries greener and create a
devoted following in the process. How could you do the same? What other
‘waste’ products could be put to better use?
Site: Botanical Paperworks
Site: Pangea Organics 7

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8

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Green Ore Naturals - content area
Sow Tomorrow. Plantable Packaging____
Planting a Bright Green Future with Sow Tomorrow.
Sow Tomorrow This luxury range of organic soap and skincare aims to offer
great products that encourages mindful use of packaging, utilising green and or-
ganic manufacturing principles. The inner wrapper of the soap is designed to be
planted after use by following the planting instructions on the outer sleeve. A
percentage of profits goes to the following charities, The World Land Trust, Tusk,
Send a Cow, Acorn & Bath Cats & Dogs Home.
Plantable Packaging We are now manufacturing our own hand made recycled
palntable packaging!
After some research into various types of recycled card and paper, Suzanna fell
over recycled, handmade seed paper that may grow when planted. The paper
had a lovely rich texture and had just the right feel to complement the hand cut
bars of soap Sue and her husband, a qualified pharmacist, had been working on.
The Sow Tomorrow range of soaps and skincare was inspired by the discovery of
the paper with a view to encouraging thoughtful use of waste products.

7 http://www.iddictive.com/2009/01/08/plantable-packaging-creates-spruce-trees-and-
wildflowers/
8 http://juliaparra.blogspot.com/2007/06/plantable-packaging.html,
http://www.naturalhealthmag.com/
Serial No. 85178012
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9

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10
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plantable packaging July 4th, 2008
we are really excited to be working with ecosource home & garden on their packaging. we
designed candle sleeves, labels for their bulb kits and disks for the herb kits. all of the paper was
handmade by us with wildflower seeds and the herb kits have organic herb seeds embedded in the
paper.

9 http://www.greenorenaturals.com/showtopic.php?org_id=875&kb_ header_id=34101
10 http://herbalsavior.com/uncategorized/plantable-packaging/
Serial No. 85178012
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11

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CREATE MEANING
FEBRUAR 6, 2011
Plantable packaging stops pollution.
By Bjoern von Buchholtz in Allgemein, Design, Innovation
The designer Ben Huttly sets a new mark on developing innovation in
communication.
He invented a packaging/hangtag that is 100% biodegradable as well. The paper is
100% recyclable natural cotton and the type is printed and cutted [sic] by laser.
Not surprising so far.
But the best:
It is made from the seeds of the food to which they’re attached.
So he bridged the subjects: gardening and environmental issues.
Small ideas can help solving big problems.
Well done Mr. Huttly.

11 http://www.porridgepapers.com/plantable-packaging/
Serial No. 85178012
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12

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12 http://createmeaning.com/2011/02/plantable-packaging-stops-pollution/
Serial No. 85178012
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Tree Life Box Creates New Trees from Packaging Waste
An innovative new packaging, Life Box, includes seedlings, so you can plant trees when you dispose of the box.
By Kathryn Hawkins. Posted on July 05 2010

You probably already recycle all of your cardboard and paper
boxes. But now, thanks to mycologist Paul Stamets, your pack-
aging waste may have a far greener future.
Stamets has invented the simple, yet revolutionary Tree Life
Box: a recycled paper fiber box that’s lined with seed mix. Once
opening the package, simply tear up the box, plant it in a patch
of soil, and water it regularly. Before long, new trees will begin
to grow.
If you keep track of carbon credits, the Tree Life Box could be a
bonanza for you: Stamets estimates that one out of every hun-
dred tree seedlings will survive for 30 years. A 30-year-old tree
can provide one ton of carbon.
The creators soon hope to develop additional Life Boxes to help
create vibrant greenery. Some of their future boxes may be
filled with flower or grass seeds, and the boxes can be custom-
ized to fit any form, from DVD mailers to pizza boxes.
Although shipping giants like UPS haven’t changed over to Tree Life Boxes just yet, the company’s
already got one influential early adopter: Al Gore is shipping his newest book, Our Choice, in the
plantable packaging, and other green gurus are sure to follow.
Want to learn more about the new packaging? Check out the Life Box website.
Filed under: Business, Green, 13

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Pangea Organics: This Face Mask Grows Basil

We love any beauty product that does double duty, so we
were immediately sucked in when we heard Pangea Organ-
ics offered a face mask that would not only spruce up our
skin, but also arrives in plantable packaging that grows into
Genovese Sweet Basil.
Made with natural ingredients such as Japanese matcha tea,
acai and goji berry that promise to revitalize with antioxidants
while polishing the skin, the Facial Mask comes wrapped in
rugged paper packaging that you soak, then plant in soil. The
seeds inside the packing should turn into sauce-worthy basil
within just a few weeks.
And while we love the plantable packaging trend and hope it
continues to grow (check out our recent post on Mr. Larkin for
another company embracing plantable fashion), we wouldn’t
waste our money if the mask itself didn’t work.
Turns out, we think it’s as sweet as the basil promised by the packaging. Free of scary parabens and
frightening synthetics, this all-natural mask freshened up our skin without irritating it and left its
surface smooth and glowing.

13 http://gimundo.com/news/article/tree-life-box-creates-new-trees-from-packaging-waste/
Serial No. 85178012
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Other Pangea Organics products with plantable packaging include the Facial Cleanser and Facial
Scrub. The company also recently launched two new products that we’re dying to try: an Eye Cream
and a Balancing Oil made with Himalayan geranium and pomegranate.
Find Pangea Organics locally at Pure Beauty locations or online at www.pangeaorganics.com.
Through May 15, you can save 20 percent on your order via the web site by entering the promo code
NutureMom at checkout.
By Lorraine Sanders on May 12, 2009 8:37 AM 14

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15

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Design Killed The Cliché
Thursday, September 30, 2010
Plantable Packaging

This is an awesome concept! Eco-
friendly packaging that contains seeds
so you can plant it and grow herbs.
BambuEarth is a natural beauty com-
pany that sells handmade natural soaps
and personal care products as well as
natural laundry detergents and dryer
sheet alternatives. They are producing
products free of synthetic chemicals so
they are better for the skin and reduce
water pollution. They even mention that
they work well with cloth diapers! The
best part however is that their bars of
soap come packaged in seeded handmade paper that grows basil and all the tags are
printed on recycled cereal boxes. I just love that idea of being able to plant your packag-
ing and immediately put it to good use.
http://bambuearth.com/
Posted by Thomas Hemmingson at 7:00 16

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14 http://www.7x7.com/fashion/pangea-organics-face-mask-grows-basil
15 http://www.ethicalsuperstore.com/marketplace/
16 http://designkilledthecliche.blogspot.com/2010_09_01_archive.html
Serial No. 85178012
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Clean Waste, Clean Water:
The blessings of waste management innovations

By Katie Clancy

Welcome to imovewater.net´s think tank, a hub where we can share ideas,
dispel myths, advertize gatherings, and dialogue about a common passion: clean
water.
Okay, let me get us started.
Our quest for clean water these days is a viscous paradox. The majority of us
seek clean water in plastic, which, of course, pollutes clean water. Advertisers
sell us “purity” at the same time as their products are contaminating the oceans,
hurting wildlife, and filling landfills. Maybe it’s our culture’s addiction to conven-
ience that is dragging us down. We are a world where single-use disposable
packaging (plastic bottles, bags, and cups) is the number one consumer product
in the world. Plastic bottle production in the US annually alone requires about
17.6 million barrels of oil, which really seems in vain when we realize that 86
percent of those plastic water bottles are not recycled. Every year, 100 billion
plastic bags are used. In fact, if each person were required to carry the average
amount of packing they consumed in one year, we would each be dragging 800
pound bags on our backs.
If we really want to stand witness to the purification of our waters on an ecologi-
cal level, let´s take a good look at our waste.
Luckily, new advancements aim to knock plastic out of the water—literally.
Those innovations, which include plantable packaging by mushroom guru Paul
Stamets, provide a solution to building new dreams using the ruins of old pleas-
ures.
Stamets is known for his groundbreaking re-
search in mycroremediation using mycelium
(aka fungus) to respond to environmental cri-
sis. Mycelium is a network of cells that acts as a
filter, improving water quality and reducing ero-
sion by trapping sediment, harmful bacteria, and
nutrients that escape during runoff. Stamets has
dedicated his life to using mushrooms to clean
up polluted land and water environments that
have suffered from over farming, toxic dumping,
and heavy metal pollution. Known as the Earth’s “great recyclers,” mycelium has
powerful enzymes that breakdown hydrocarbons and suck up heavy metals to
repair a site and bring it back to life.
His devotion to fungi has led him to revolutionize
the packaging industry with his new product,
The Life Box. Forget recycling—with The Life
Box, you can literally grow a forest from the box
in which you ship everyday objects! It looks like
ordinary cardboard, but each box has hundreds
of tree seeds and thousands of mycorrhizal fun-
gal spores infused into the corrugations of the
cardboard. After delivery of goods, the Life Box
can grow a tree nursery.
Serial No. 85178012
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This beats plastic corn cups and regular recycling on every level. Even Coca Co-
la’s new “Plant Bottle” that is made of 30% Brazilian sugarcane
(www.greenerpackage.com) hasn’t solved the way to move out of petroleum-
based recycling.
Permaculture pioneer Penny Livingston, recently featured in Joao Amorim’s film
“2012: Time for Change” described our current corporate design as one that
transforms a living system into a dead, [non-renewable] system. But as we be-
come conscience to reduce what we consume, and we invest in new technolo-
gies like The Life Box that are igniting a 360 degree shift from this cycle.
The Life Box isn’t directly connected to mushrooms, but taking another lesson
from its creators, we can see that mycelium has huge potential for healing our
relationship to waste.
Katie Holgate, a mushroom ecologist, is in the process of developing microfiltra-
tion systems that transform homogenized, polluted habitats into biodiverse sys-
tems using mycelium. In order to start that process, she must become very in-
timate with her garbage. She uses certain waste products such as compost,
cardboard, old newspapers, spent coffee grounds, burlap bags to sprout the
spores on, giving value to what is ordinarily thought as useless.
“Working with mushrooms has transformed my
personal relationship to trash. Like many peo-
ple, I used to be in denial about what I was
consuming and where it went beyond a landfill.
But Stamet’s work with mushrooms really in-
spired my relationship to waste management.
Instead of it being worthless, I have found the
value in what we throw away. In that sense,
trash is a precious resource,” Holgate said. The
benefits of using this mycelium in the environ-
ment, she adds, are imperative to strengthen-
ing the immunity of the ecosystem.
It might not be convenient, but let’s honor
waste streams as we do water: as a valuable
resource rather than a property or consumable
product.
Stay tuned for the next installment of
imovewater.net’s Ecology Blog!
In the meantime, learn more about The Life
Box and Stamet’s current research, at www.fungi.com.
Written by Katie Clancy 17

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17 http://imovewater.net/page0/page11/page11.html
Serial No. 85178012
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EXCLUSIVE INTERVIEW WITH MATHEW
GERSON, CO-FOUNDER OF SIR
RICHARD’S NEW VEGAN CONDOMS
July 7th, 2010

You’ve stocked up on red hot green lingerie for sexy, romantic flings, and soon you’ll be
able to add a benevolent vegan condom to your do-gooding sex repertoire. Sir Richard’s
condoms truly double your pleasure, because for every condom you purchase, one is do-
nated to a developing country to help prevent the spread of sexually transmitted diseas-
es. According to Sir Richard’s co-founder Mathew Gerson, only 10 percent of the global
demand for free condoms is met annually.
I was so intrigued by the news swirling around this company’s innovative condoms and
mission to revolutionize the condom industry and truly “do unto others,” that I contacted
Mathew Gerson to get the lowdown on Sir Richard’s myself. Below is our exclusive inter-
view.
EcoSalon: Which developing countries will you be distributing condoms to, and why are
these countries your top choices?
Mathew Gerson: We are currently in discussions with organizations in Haiti, Thailand
and Uganda. Each of these countries has a significant gap in the number of condoms
needed in relation to the number available. The organizations that we have chosen to
work with are established organizations which have seen success as regards to their ef-
forts in increasing the use and acceptance of condoms in their regions.
EcoSalon: What are Sir Richard’s condoms made out of? Are they Fair Trade latex, ca-
sein-free and made in Malaysia?
Mathew Gerson: They are manufactured in Malaysia by one of the finest condom manu-
facturers in the world. To date we have not been able to source a supplier of Fair Trade
latex, but we are in discussion with both TransFair USA as well as U.K. based Fair Deal
Trading in the hopes that they might be able to provide for our future production runs.
Sir Richard’s condoms are casein-free and vegan-friendly. We hope to have third party
vegan certification in time for our next run of product.
Serial No. 85178012
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EcoSalon: Is the packaging design (colorful plaid print) meant to appeal to gays and
women – and why?
Mathew Gerson: If you go to the condom aisle in any major supermarket you will see
that the condoms that are currently marketed in the U.S. are overwhelmingly designed
for a younger male user. We felt that the messaging and design tended to be clinical, in-
dustrial and pretty sophomoric.
There is a lack of any uplifting sense of design or subtlety in the entire conversation
brands are having with their customers. We wanted the experience of the Sir Richard’s
brand to be one that is positive, both by design as well as the way in which we communi-
cated our message and mission. Women currently purchase around 38 percent of con-
doms in the U.S., so we felt it was about time that their aesthetic sensibilities were finally
honored.
EcoSalon: Will the Sir Richard’s condom box be able to be planted to sprout wildflowers,
and will the wrappers be recyclable? Are the condoms themselves biodegradable?
Mathew Gerson: The condom is an Over The Counter (OTC) Medical Device and is heav-
ily regulated by the FDA. That said, we don’t have a tremendous amount of creative free-
dom with regard to many aspects of packaging and production. We are looking into the
possibility of utilizing “plantable packaging” as the company grows up. Currently our box-
es are 100 percent recyclable and/or compostable paper board. The wrappers are made
out of Mylar, as regulated by the FDA, which unfortunately cannot yet be recycled. One of
the most environmentally responsible things you can do with your condom is to never
flush them down the toilet in order to ensure the proper conditions for them to break
down. Latex is 100 percent biodegradable.
EcoSalon: What is the launch date when Sir Richard’s condoms will become available in
the states, and where will they be sold?
Mathew Gerson: The condoms will be available in October of this year, both online via
our website www.SirRichards.com as well as in select stores and boutiques. 18

We agree with the Trademark Examining Attorney that these pages
demonstrate that “the term ‘plantable’ is used frequently to describe goods that
have a second life as a plant product after serving an initial purpose as, for
example, a party invitation, a personal journal, or product packaging.”

18 http://sirrichards.com/blog/press/interview-with-mathew-gerson-co-founder-on-ecosalon/
Serial No. 85178012
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Nonetheless, applicant argues as follows:
[M]any objects are not thought to be plantable, e.g., au-
tomobiles, furniture, jewelry and packaging. Packaging
is a container which is used by consumers to hold an-
other item. Packaging is not meant to be planted into the
ground. People do not buy packaging to plant it. The use
of the term PLANTABLE with PACKAGING together cre-
ates an incongruity.
While packaging has not historically been thought of as “plantable,” it is
clear from this record that is no longer the case. Applicant may be right that
there are no indications of “plantable automobiles,” for example, and when a
consumers is wanting to plant greenery, the first impulse is probably to seek
out seeds or seedlings, not product packaging. However, based upon the entirety
of this record, we find no incongruity in the combination of the two words
“plantable packaging.” Third-party vendors have also been using the term
“plantable packaging,” to describe biodegradable packaging infused with seeds.
The term “plantable packaging” is actually a more concise formulation for such
a material, but is certainly no less descriptive. The fact that some of the web
pages may explain to the reader how items of biodegradable packaging infused
with seeds actually work is consistent with the relative newness of this technol-
ogy. Under the test we apply to make a determination under Section 2(e)(1), we
find that this term immediately conveys knowledge of a significant feature of
the involved goods.
Decision: The refusal to register absent a disclaimer of the words “Planta-
ble Packaging,” is hereby affirmed. However, this decision will be set aside if,
Serial No. 85178012
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within thirty (30) days of the mailing date of this decision, applicant submits to
the Board a proper disclaimer of the words “Plantable Packaging.” See Trade-
mark Rule 2.142(g), 37 U.S.C. § 2.142(g); and TBMP § 1218 (3d ed. rev. 2012). A
proper disclaimer should read as follows: “No claim is made to the exclusive
right to use the words ‘Plantable Packaging’ apart from the mark as shown.”