92070752 (T.T.A.B. Aug. 21, 2020)

PAC Worldwide Corporationv.ePac Holdings, LLC

Trademark Trial and Appeal BoardAug 21, 2020

92070752 (T.T.A.B. Aug. 21, 2020)

Mailed: August 21, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ PAC Worldwide Corporation v. ePac Holdings, LLC _____ Opposition No. 91246806 (parent) Cancellation No. 92070752 _____ Leslie C. Vander Griend and Elizabeth A. Findley of Stokes Lawrence, P.S., for PAC Worldwide Corporation. Joshua G. Gigger of Stoel Rives LLP, for ePac Holdings, LLC. _____ Before Cataldo, Wolfson, and English, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Applicant, ePac Holdings, LLC, seeks registration on the Principal Register of the standard character mark EPAC FLEXIBLE PACKAGING (“FLEXIBLE PACKAGING” disclaimed) for “Printing services and digital printing; and lamination of packaging, corrugated paper and cardboard” in International Class 40 and “Computer aided graphic design, graphic design services and visual design services THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 2 - in the nature of designing visual elements for on-line, broadcast, print, outdoor and other communication media” in International Class 42.1 PAC Worldwide Corporation (“Opposer”) opposes registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles Opposer’s previously used mark PAC and its “family of PAC-formative marks” for packaging-related goods and services as to be likely to cause confusion, mistake, or deception.2 Opposer also seeks to cancel Applicant’s Registration No. 5203069 for the mark (“DIGITAL PACKAGING” disclaimed) for “Printing services and digital printing” in International Class 40 and “Computer aided graphic design, graphic design services and visual design services in the nature of designing visual elements for on-line, broadcast, print, outdoor and other communication media” in International Class 423 on the same likelihood of confusion grounds. 1 Application Serial No. 87923157, filed May 16, 2018, based on Applicant’s allegation of first use and first use in commerce on October 1, 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 1 TTABVUE 10. All citations in this opinion to the opposition and cancellation records are to TTABVUE, the docket history system for the Trademark Trial and Appeal Board, in the parent case (Opp. No. 91246806). 3 Filed April 1, 2016; Issued May 16, 2017. The description of the mark reads: “The mark consists of the wording ‘DIGITAL PACKAGING’ in lower case letters below the word ‘EPAC’ in larger lowercase letters in which the letter ‘P’ is divided into shaded segments and in which the tail of the letter ‘P’ appears to dissolve into pixels.” Color is not claimed as a feature of the mark. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 3 - On December 20, 2019, the parties entered into two Stipulations, one confidential (9 TTABVUE) and one non-confidential (12 TTABVUE). In the non-confidential filing, the parties agreed that PAC has used the designation “PAC” alone and in several variant forms (hereafter “the PAC-Formative Marks”) in association with certain packaging-related products and services in the United States. (Stip. No. 16, 12 TTABVUE 6). The parties do not identify in Stip. No. 16 which marks the parties consider to be included in the phrase “PAC-Formative Marks,” for what goods or services these marks have allegedly been used, or when Opposer first used any of them in commerce. In Stip. Nos. 18 and 19 of that document, the parties agreed that Opposer “uses and owns” the marks PAC WORLDWIDE, PACZIP, COOLPAC, PAC CONTRACT SERVICES, and .4 12 TTABVUE 7-8. The stipulation does not indicate the goods or services for those marks, but does stipulate that the marks were first used “after 2016.” Id. at 7. Based on Stip. Nos. 16, 18, and 19, we consider the “PAC-formative” marks to comprise the following marks: PAC, PAC WORLDWIDE, PACZIP, COOLPAC, PAC CONTRACT SERVICES, and , as well as the marks in the following pleaded registrations:  Reg. No. 4252285 for the standard character mark PAC for “Envelopes, mailing labels, cardboard mailing boxes, plastic 4 The wording in this mark is PACLIFE CARE CONNECT CREATE. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 4 - mailers, corrugated cardboard and paper containers” in International Class 20.5  Reg. No. 3704163 for the mark for “Packaging materials, namely, plastic bubble sheets, paperboard, polyethylene envelopes and bubble sheets, and Kraft paper; cushioning made of paper for packing; letter express envelopes; corrugated cardboard and paper containers; polyethylene bubble mailer pouches; polyethylene bubble mailer envelopes; plastic bubble mailer pouches; plastic bubble mailer envelopes; plastic envelopes; plastic pouches; polyethylene mailer pouches; polyethylene mailer envelopes; paperboard envelopes; paperboard mailer pouches; paperboard mailer envelopes; Kraft paper bubble mailer pouches; Kraft paper bubble mailer envelopes; printed and paper materials, namely, adhesive mailing labels and cardboard boxes for mailing” in International Class 16 and “Assembly of articles, namely, packaging containers, mailing pouches, and mailing envelopes, for transportation of goods to the order and specification of others” in International Class 40.6  Reg. No. 4671325 for the mark for “Automated machines for the manufacture of polyethylene bubble mailers” in International Class 7.7 5 Issued December 4, 2012, Sections 8 & 15 combined affidavit filed November 9, 2018; Section 15 portion of combined affidavit acknowledged; Section 8 portion refused pending receipt of substitute specimen and supporting declaration, which were filed March 19, 2019 and are under review. Registration corrected April 7, 2020 to reflect updated dates of use. Claim of acquired distinctiveness entered as to the mark as a whole under Trademark Act Section 2(f). 6 Issued November 3, 3009, renewed. Claim of acquired distinctiveness in part entered as to “PAC WORLDWIDE” under Trademark Act Section 2(f). 7 Issued January 1, 2015. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 5 -  Reg. No. 5312069 for the mark for “Plastic mailing envelopes” in International Class 16.8 The Petition to Cancel and Notice of Opposition were filed on the same day. In each proceeding, Applicant denied the salient allegations in the pleading and raised the affirmative defenses of laches, estoppel and acquiescence. The cases were consolidated on May 8, 2019 (5 TTABVUE) and have been presented on the same record and briefs.9 We dismiss the opposition and deny the petition to cancel on the basis of Opposer’s Section 2(d) claim, and do not reach Applicant’s affirmative defenses.10 I. Evidentiary Issues Following the filing of the parties’ two Stipulations, the Board held a telephone conference with the parties to clarify the record. The Board observed that “these 8 Issued October 17, 2017. 9 On July 26, 2019, the Board acknowledged Opposer’s withdrawal of its pleaded claim under Trademark Act Section 2(a). 6 TTABVUE. 10 We also deny Opposer’s petition to cancel Applicant’s registration on the ground of abandonment. The petition to cancel neither pleaded abandonment nor included an allegation of non-use or intent not to resume use. See TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP) § 314 (2020) (plaintiff may not rely on an unpleaded claim). As the claim was fully briefed, we exercise our discretion to consider it, and deny the claim on its merits. The proposed amendment to the mark was considered an impermissible material alteration by the Office, 15 U.S.C § 1057(e), but the post-registration examination did not determine whether the elements of abandonment—nonuse with intent not to resume use—were satisfied. Cf. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. v. New Millennium Sport S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1132 n.4 (Fed. Cir. 2015) (citing J. Thomas McCarthy, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 17:26 (4th ed. 2015) (“[i]mproper tacking [by using a modified mark that materially alters the earlier mark] can result in ‘abandonment’ of the old form of the mark” if the elements of abandonment—nonuse with intent not to resume use—are satisfied.”); In re Dewitt Int’l Corp., 21 USPQ2d 1620, 1622 (Comm’r 1991) (finding “the question of whether a specimen supports a claim of current use of a registered mark is different from the question of whether an amendment to a mark is permissible under Section 7”; refusal to renew registration under Section 9 that had been based on denial of Section 7 amendment vacated). Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 6 - ‘stipulations’ compromise voluminous filings, some of them more than 500 pages.” Board’s February 4, 2020 Order, 63 TTABVUE 2. Indeed, nearly 9,000 pages of evidence was attached to both Stipulations, plus a DVD.11 Compounding the difficulty in accessing the record, the parties identified the exhibits attached to the non- confidential Stipulation (over 7400 pages) by Bates Nos. only and did not group them into exhibits, but simply filed them one page after another, not always in numerical order. To ease the burden of determining the probative value of the exhibits, the Board’s order required that “[t]he parties must refer to a particular document in their briefs in order for it to be considered.” Id. Under the Board’s inherent authority to manage cases on its docket and pursuant to the Board’s clarification order, we have considered only those documents that are referred to in the parties’ briefs. Cf. Coffee Studio LLC v. Reign LLC, 129 USPQ2d 1480, 1482 n.7 (TTAB 2019) (Board may exercise its inherent authority to consider a filing on the merits) (citing Carrini Inc. v. Carla Carini S.R.L., 57 USPQ2d 1067, 1069 (TTAB 2000) (inherent authority extends from Board’s power to manage its docket, to prevent undue delays, and to regulate conduct of those who appear before it)). Both parties have objected to evidence filed by the other party on grounds of, inter alia, authenticity, improper opinion testimony, hearsay and lack of foundation. 66 TTABVUE, 72 TTABVUE. In reviewing the evidence referred to in the parties’ briefs, it is clear that none of the testimony or exhibits sought to be excluded is outcome 11 The confidential Stipulation (9 TTABVUE) references Exhibits A-L (at 9-11 TTABVUE and 59 TTABVUE). The non-confidential Stipulation (12 TTABVUE) references Bates-numbered pages (at 12-56 TTABVUE and 60 TTABVUE). Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 7 - determinative.12 Given this fact, we do not discuss the objections in detail here. We address below only those objections to the cited evidence on which we rely. See Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104 (TTAB 2007) (“[W]e see no compelling reason to painstakingly go through all of the objections one by one except insofar as they relate to the outcome determinative testimony and evidence.”).13 II. The Record The record includes the pleadings, and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of the subject application and registration. The record also includes evidence submitted as exhibits to the stipulations filed at 9 and 12 TTABVUE that has been referred to in a party’s brief. In addition, each party attached the below-identified testimony declarations to their briefs. 12 Moreover, Opposer refers to objectionable evidence by Bates No. only; Applicant refers to a substantial amount of the evidence by Bates No. only. Although the Board’s clarification order does not specify use of the TTABVUE docket entry and page numbering system, the order implies such practice. Cf. AT&T Mobility LLC v. Thomann, 2020 USPQ2d 53785, at *12 (TTAB 2020) (parties required to file an appendix of all testimony and documentary evidence, explaining relevance, location in record where found, and TTABVUE docket entry and page number where evidentiary item appears; parties required to add electronic bookmarks to any testimony or evidence filed as a PDF document in ESTTA); TBMP § 702.05. 13 After the Board found all evidence attached to both stipulations to be “considered authenticated documents that may be relied on by either party for any purpose,” 63 TTABVUE 2, the parties filed a Notice (65 TTABVUE) stating that they do not stipulate to the authenticity of certain documents filed at 9-57 and 60 TTABVUE. There are well over 100 pages comprising such documents at 9-57 and 60 TTABVUE, referred to only by Bates Nos. and not presented in any apparent order. We construe and grant the Notice as a partial request for reconsideration, but again, because of the obscure manner in which the evidence has been presented, we have considered only those documents identified in the parties’ briefs to the extent we are able to identify them. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 8 - A. Opposer’s Testimony a. Confidential Declaration of Jeff Snow, Opposer’s Chief Financial Officer (64 TTABVUE); b. Non-confidential Declaration of Jeff Snow (67 TTABVUE 55-60); c. Declaration of Sierra Liggett, Opposer’s Specialty Products Division Manager, and Exhibit A (67 TTABVUE 61-70); d. Declaration of John Bartell, Opposer’s Vice President of Sustainability, and Exhibits A-D (67 TTABVUE 71-113); e. Declaration of Lance Fletcher, Opposer’s Vice President of Business Development (67 TTABVUE 114-116); f. Declaration of Leslie Vander Griend, Opposer’s counsel, and Exhibits A and B (67 TTABVUE 117-182); g. Rebuttal Declaration of Jeff Snow (79 TTABVUE 27-30); and h. Rebuttal Declaration of Leslie Vander Griend and Exhibits A-F (79 TTABVUE 31-79). B. Applicant’s Testimony a. Declaration of Jack Knott, Applicant’s co-founder and Chief Executive Officer, and Exhibits 1-8 (70 TTABVUE 60-310);14 b. Declaration of Carl Joachim, Applicant’s co-founder and Chief Marketing Officer, and Exhibits A-Q (70 TTABVUE 311-490); c. Declaration of Joshua G. Gigger, Applicant’s counsel, and Exhibits A-FF (71 TTABVUE); and d. Declaration of Virag Patel, Applicant’s co-founder and Chief Operating Officer, and Exhibits 1-3 (70 TTABVUE 491-502). 14 Confidential versions of Applicant’s witness’s declarations at 69 TTABVUE 59-309 (Knott); 69 TTABVUE 311-490 (Joachim); 69 TTABVUE 310-899 (Gigger). Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 9 - III. Entitlement to Statutory Cause of Action15 Opposer made its four pleaded registrations of record by attaching to its Notice of Opposition printouts obtained from the USPTO’s Trademark Status & Document Retrieval (TSDR) database showing the registrations’ current status and title in Opposer. Trademark Rule 2.122(d)(1). The registrations establish Opposer’s entitlement to a statutory cause of action under Section 13 of the Trademark Act. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). IV. Priority Because Applicant has not counterclaimed to cancel Opposer’s pleaded registrations, priority is not at issue in the Opposition as to the mark and goods covered in Opposer’s pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). See also Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (counterclaim to partially cancel pleaded registration to restrict scope of goods therein did not preclude opposer’s reliance on pleaded registration to establish priority in the opposition). 15 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Mindful of the Supreme Court’s direction in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125- 26 (2014), we now refer to this inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain equally applicable. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 10 - In order to prevail in the cancellation, however, because both parties own registrations that are entitled to the presumptions accorded registrations under Section 7(c) of the Trademark Act, Opposer (as cancellation Petitioner) must prove its priority. See, e.g., M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010). Either party may rely on its registration(s) “for the limited purpose of proving that its mark was in use as of the application filing date.” Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). The filing dates of Opposer’s pleaded registrations (the latest date is December 7, 2015)16 predate Applicant’s (as cancellation Respondent) filing date of April 1, 2016. They also predate the date Applicant opened its first plant in July, 2016. See Knott Decl., 70 TTABVUE 68 (“On July 2016, ePac Holdings opened its first plant in Madison, Wisconsin.”). Applicant does not dispute Opposer’s priority as to the goods and services listed in its registrations. Applicant does dispute Opposer’s priority with respect to use of its marks beyond those listed goods and services. Applicant argues that Opposer has failed to prove priority with respect to “any flexible packaging printing services in the U.S, and the provision of graphic design, visual design, and lamination services in connection therewith.”17 Applicant’s brief, 70 TTABVUE 29. 16 September 9, 2010 (PAC, Reg. No. 4252285), June 24, 2008 (PAC WORLDWIDE and design, Reg. No. 3704163), June 10, 2014 (PACJACKET, Reg. No. 4671325), and December 7, 2015 (COOLPAK, Reg. No. 5312069). 17 “Flexible packaging” is a package or part of a package “whose shape can be readily changed.” Knott Decl., 70 TTABVUE 71, citing the 2019 “State of the U.S. Flexible Packaging Industry Report” prepared by the Flexible Packaging Association. Exhibit 1, 70 TTABVUE 100-223. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 11 - Opposer’s registrations do not cover printing or design services. In order for Opposer to prevail on a claim of likelihood of confusion based on its ownership of common-law rights in its marks for printing and design services, “the mark must be distinctive, inherently or otherwise, and plaintiff must show priority of use.” See Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1023, (TTAB 2009) (citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981)). See also Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1834 (TTAB 2013) (“[O]pposer must prove by a preponderance of the evidence that its common law rights were acquired before any date upon which applicant may rely.”). The earliest date upon which Applicant may rely is April 1, 2016; accordingly, Opposer must show that it used the PAC mark prior to that date on printing and design services. The parties stipulated that evidence marked with Bates Nos. PAC_01027-01356: is an accurate depiction of advertising and promotional materials using the PAC mark dated between 2011-2012, as submitted to the USPTO on February 13, 2012 (PAC_01014-01016).18 Opposer referred to these documents in its brief at 67 TTABVUE 21.19 Examples of printing services include: 18 Stip. No. 25, non-confidential Stipulation at 12 TTABVUE 9. The documents marked “PAC_01014-01016” identify a Trademark Snap Shot Amendment & Mail Processing Stylesheet, showing that a response to an Office Action was entered in Reg. No. 4252285 for the mark PAC in Class 16. 42 TTABVUE 81-83. The documents marked “PAC_01027-01356” identify evidence attached to that response, at: 42 TTABVUE 94-137; 43 TTABVUE 3-56; 44 TTABVUE 3-43; 45 TTABVUE 3-56; 46 TTABVUE 3-53; 47 TTABVUE 3-35; 48 TTABVUE 3-44; and 49 TTABVUE 3-13. Much of the evidence is duplicative. The wasted time and effort in sifting through the evidence places an undue burden on the Board’s limited time and resources and is strongly discouraged. 19 Jeff Snow, as Opposer’s Fed. R. Civ. Pro. 30(b)(6) witness, testified that Opposer “first printed pouches for customers in December 2002,” Snow Decl., 67 TTABVUE 56 . He also stated that Opposer “has manufactured and distributed printed flexible packaging in pouch form for 7-8 years, that is, since around 2011-2012.” Id. Mr. Snow also stated that Opposer Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 12 -  Advertisements (stipulated as having been used during 2011-2012) advertising Opposer’s “color printing capabilities” on plastic mailers and bubble mailers. E.g., 42 TTABVUE 126:  PAC mailers from 2011-2012 showing the PAC mark. 47 TTABVUE 4, 5: “has manufactured and distributed digitally printed flexible packaging in roll stock for about 10-15 years. i.e., starting somewhere between 2004-2009.” 67 TTABVUE 56. On the other hand, Ms. Liggett stated at her deposition that Opposer first sold digitally printed roll stock (which was printed by Applicant) in 2016 and sold its “first [converted] order using digital print in October 2019.” 11 TTABVUE 20. Because of the contradictions in the testimony, we have not relied on the testimony, but have considered the evidence under the parties’ Stipulation. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 13 -  An advertisement from 2011-2012 for Opposer’s goods and services, including “custom printed corrugated boxes” and design of point of sale displays. 44 TTABVUE 26: Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 14 -  An advertisement from 2011-2012 offering “custom, high quality graphics with up to six ink colors. Custom printed with your logo and other graphics to meet your particular requirements and enhance your corporate image.” 44 TTABVUE 39: Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 15 -  An advertisement from 2014 offering “Digital Print” printing services. 49 TTABVUE 314: Evidence of Opposer’s early offering of design services is scant, but two examples are in the record:  An advertisement from 2011-2012 offering “custom design” (see under the list headed “Contract Packaging”). 45 TTABVUE 4: Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 16 - Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 17 -  A page from Opposer’s website at http://pac.com dated 2012, stating “Customize the packaging your products are mailed in using our design services or your own graphics.” 44 TTABVUE 44: These examples illustrate Opposer’s prior use of its PAC mark for printing and design services. Applicant argues that pre-2019, Opposer filled all customer orders for digitally printed pouches by purchasing printing services from third parties (including Applicant), and that not until October 2019 did Opposer began digitally Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 18 - printing pouches itself. 70 TTABVUE 30. Opposer responds that it is misguided to focus on digital printing and discount Opposer’s prior use of its marks in connection with conventional printing processes because “there is no difference in the appearance of pouches printed digitally from pouches printed by a different method, such as conventional printing.” Bartell Decl., 67 TTABVUE 85. “[Opposer’s] customers could not and do not perceive any difference in the final products.” Id. Applicant does not dispute this statement or argue that the relevant consumers of the parties are different as a result. We find that Opposer is entitled to rely on the dates it first used its marks for printing and design services regardless of the method it used to print information on the goods. Applicant argues that Opposer conceded that it does not digitally print flexible packaging in the United States but only manufactures the goods at its facility in Mexico. 70 TTABVUE 30. Jeff Snow testified that Opposer currently manufactures “digitally printed flexible packaging in roll stock” in Mexico, but that Opposer used to manufacture flexible packaging in Ohio. 11 TTABVUE 358.20 Opposer submitted photographs of its Ohio plant marked with Bates Nos. that were stipulated as being “dated between 2011-2012.”21 For example, Opposer submitted the following photo of 20 This TTABVUE entry was marked confidential in its entirety, but it is clear from the transcript that not all portions of the transcript, including this statement, were intended as confidential. See Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.”); RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1804 n.9 and 1806 nn. 13-15, 25 (TTAB 2018) (Board not bound by parties’ improper designation of material as confidential). 21 Stip. No. 25, 12 TTABVUE 9. The photos are at 46 TTABVUE 27-29; marked PAC_01243- 01250. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 19 - its Ohio plant, marked PAC_01244, that reads in part, “Besides converting, we print in house and offer fulfillment services.” 46 TTABVUE 27: The evidence supports Mr. Snow’s testimony that Opposer manufactured flexible packaging in Ohio in 2011-2012. Based on the above, we find that Opposer has proven its priority with respect to flexible packaging printing and design services. V. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We make that determination on a case-by-case basis, On-Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000), aided by the application of the factors set out in DuPont, and we consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 20 - 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019); In re Country Oven, Inc., 2019 USPQ2d 443903, at *2 (TTAB 2019). “In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services.” In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited in Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *5 (TTAB 2019). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). In this consolidated proceeding, we also consider whether Opposer has established its alleged ownership of a family of marks, the strength of Opposer’s marks, the trade channels for the goods and services and the conditions under which, and buyers to whom, sales are made, and any evidence of actual confusion. For comparison with Applicant’s marks, Opposer’s most relevant mark is the mark PAC. If we find a likelihood of confusion as to Opposer’s mark PAC, we need not find it as to Opposer’s other marks. On the other hand, if we do not find a likelihood of confusion with Opposer’s PAC mark, we would not find it as to the other marks because they include additional visual and phonetic differences. See, e.g., Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015). A. Opposer’s Alleged Family of Marks We begin our likelihood of confusion analysis by determining whether a pleaded family of marks has been proven. Whether Opposer establishes that it owns a family of marks informs our later comparison of the marks and services. See, e.g., New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *6-7 (TTAB 2020) (explaining that whether a mark is part of a “family of marks” may impact other factors). See also Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 21 - DuPont, 177 USPQ at 567 (focusing on “the variety of goods on or in connection with which a mark is or is not used, i.e., as a house mark, ‘family’ mark, [or] product mark.”). A party asserting a family of marks must show that it has used the marks prior to any date its adverse party can rely upon for purposes of priority. See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1419 (TTAB 2018); Hester Inds. Inc. v. Tyson Foods Inc., 2 USPQ2d 1645, 1647 (TTAB 1987) (family of marks must be used and promoted together “prior to the first use by the alleged interloper”). In Stip. No. 19, the parties identify four of Opposer’s marks as having been first used “after 2016.” 12 TTABVUE 8. The four marks are: COOLPAC, , PAC CONTRACT SERVICES, and . Because these four marks were not in use prior to Applicant’s filing date of April 1, 2016, they are not considered to be part of the family. Prior use has been shown for the following marks: PAC, PAC WORLDWIDE, , , PACZIP, and .22 Opposer claims that these marks form a family based on their inclusion of “the common characteristic, ‘PAC,’ which has become distinctive in the packaging industry over 43 years of use.” 22 E.g., 41 TTABVUE 197 shows the PACJACKET and design mark for a packaging system; 40 TTABVUE 27 shows PACZIP on a bubble mailer. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 22 - 1 TTABVUE 12. Applicant argues that Opposer’s claim to a family of marks fails because Opposer “cannot establish that (1) consumers recognize and associate ‘pac’ with [Opposer], and/or (2) ‘pac’ is not descriptive, so highly suggestive, or so commonly used that it can function as a distinguishing characteristic of its marks.” 70 TTABVUE 44. To prove the existence of a family of marks, Opposer “must show that its putative family: (1) has a recognizable common characteristic; (2) that is distinctive; and (3) that has been promoted in such a way as to create ‘recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.’” In re LC Trademarks, Inc., 121 USPQ2d 1197, 1204 (TTAB 2016) (“Mere ownership of a series of similar marks does not suffice to establish a family of marks.”). See also J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.”). Opposer’s marks have a recognizable common characteristic in the term “PAC” followed by another term. Even if Opposer only claims PAC WORLDWIDE, PACJACKET, and PACZIP as members of the family,23 we find this number sufficient to satisfy the first prong of the test. See, e.g., Nina Ricci, S.A.R.L. v. E.T.F. 23 Strictly speaking, “PAC” is not a member of Opposer’s claimed PAC family of marks because it does not fit the pattern of PAC+suffix. See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1276 (TTAB 2014) (finding the mark “Mc” not part of McDonald’s family of “Mc-formative” marks). Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 23 - Enters., Inc., 889 F.2d 1070, 1073 (Fed. Cir. 2011) (finding the plaintiff had a family of marks consisting of three marks); cf. Polar Corp. v. PepsiCo, Inc., 789 F. Supp. 2d 219, 224 (D. Mass. Apr. 28, 2011) (PepsiCo. POLAR SHOCK family of marks consisting of six registered marks); Am. DJ Supply Inc. v. Am. Lighting Inc., 2013 U.S. Dist. LEXIS 200174, at *9 (C.D. Cal. May 2, 2013) (leaving open the possibility of a family of marks consisting of only two marks). However, Applicant’s mark does not share the common characteristic of the family. Specifically, Applicant’s mark is “PAC” preceded by the letter “E” whereas Opposer’s marks are “PAC” followed by other terms. Like PAC used alone, which lacks a suffix, “EPAC” contains an extra prefix (as well as lacking a suffix). Accordingly, whether Opposer has established a family of PAC-formative marks is inapplicable here. Applicant’s mark would not be perceived as belonging to the family. Moreover, Applicant has demonstrated widespread use by others in the packaging industry of the term “PAC” as a recognized abbreviation for “package” or “packaging.” “[A] family of marks cannot be acquired in a nonarbitrary term or a term that has been so commonly used in the trade that it cannot function as the distinguishing feature of any one party’s mark.” Hester Ind., 2 USPQ2d at 1647. For the reasons discussed below, the term “PAC” does not satisfy the second prong of the test.24 24 For the same reasons, Opposer has not satisfied the third prong of the test. In determining whether an alleged family of marks has been sufficiently promoted such that the purchasing public would recognize the common origin of the marks, courts consider the “use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin.” J & J Snack Foods, 18 USPQ2d at 1891-92. Although Opposer demonstrated that it routinely used the mark PAC WORLDWIDE together with PACJACKET and PACZIP, the weakness of the “PAC” Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 24 - To show that “PAC” has a commonly understood meaning, Applicant submitted definitions for the term from dictionary.com. 31 TTABVUE 56-61. The definition of “pac” as a noun directs the reader to the definition of “pack,” which is defined as: “a group of things wrapped or tied together for easy handling or carrying; a bundle, especially one to be carried on the back of an animal or a person: a mule pack; a hiker’s pack.” 31 TTABVUE 61. In addition, Applicant’s CEO, Jack Knott, identified numerous examples of companies in the packaging industry using “pac” to mean “package” or “packaging.” Knott Decl., 70 TTABVUE 73-76. Some of them own registrations for their marks. Joshua Gigger also identified 13 additional registrations for marks containing the terms PAC or PAK but only two of them are live registrations.25 71 TTABVUE 8, Exhibits L-X, 71 TTABVUE 403-449.26 Relevant examples of third-party use and registrations submitted by Applicant include:  ProAmpac offers flexible packaging services under the marks and . 70 TTABVUE 246-286. component undercuts the likelihood that consumers would recognize marks containing a PAC+suffix formulation as establishing a common origin in Opposer. 25 Reg. No. 3108420 for the mark HAN-D-PAC (stylized) for “merchandise packaging, namely, packaging of spices, chilis, herbs, garlic, corn husks for tamales, whole red peppers, pinon nuts, and peanuts from producers of such products” and Reg. No. 0878068 for the mark ABBO-PAC for “blister-packaging containing individual doses of orally administered pharmaceuticals.” 26 A cancelled registration is not evidence of anything except that it issued; any benefits conferred by the registration, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act were lost when the registration expired. See, e.g., Action Temporary Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive notice of anything”); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018). Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 25 -  General Packaging, Inc. offers packaging services under the mark . 37 TTABVUE 59.  Packaging Progressions, Inc. sells food packaging equipment under the mark . 29 TTABVUE 19-32.  Anchor Paper sells “Clear Speedy Pac Bags” at https://www.anchorpaper.com. 23 TTABVUE 72. Aurora Plastics & Packaging also sells SPEEDY PAC bags. 23 TTABVUE 59. A registration for the mark SPEEDY PAC for “pre-opened polypropylene bags dispensed on a roll for packaging, packing and general use by others” is owned by Polyfirst Packaging, Inc. (Reg. No. 2688077). 23 TTABVUE 76.  Modern Ice Equipment and Supply uses and owns Reg. No. 2891043 for the composite mark ICE PAC and design for “plastic bags for packaging ice.” 24 TTABVUE 20-30.  Compac International offers “flexo printing and process printing” under the mark 27 24 TTABVUE 31-34.  MacPac, Inc. uses the mark MACPAC for custom- printed packaging (24 TTABVUE 38) and owns Reg. No. 5335540 for the mark MACPAC DECO BAGS (“deco bags” disclaimed) for “opaque, translucent, metallic-colored and non-metallic colored, optionally self-adhesive, re-sealable or heat-sealable plastic bags for packaging.” 24 TTABVUE 41.  Baker Labels uses the mark BAKPAC for digitally printed flexible packaging. 70 TTABVUE 240-244. 27 The wording in the mark is COMPAC WWW.COM-PAC.COM. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 26 -  Pacific Packaging Industries uses PAC PACKAGING as a trade name for its flexible packaging printing services. 16 TTABVUE 21-29.  FlexPac Products and Consulting offers package design services through its “innoPAC Design Center.” 13 TTABVUE 298-313.  PAC Performance Award Center provides packaging services under the mark . 39 TTABVUE 39-42  PennPac offers flexible packaging film under the mark .28 39 TTABVUE 44-52.  Mpac Group offers packaging services under the mark ONE MPAC. 20 TTABVUE 5.  PAC PRINTERS offers digital printing under the mark . 13 TTABVUE 424, 447.  J-PAC LLC uses the mark J-PAC and owns Reg. No. 3022505 for the mark for “packaging design services for others.” 16 TTABVUE 377-393.  Professional Packaging Systems, Inc. offers custom printed packaging materials, contract packaging and order fulfillment services under the mark PRO PAC. 16 TTABVUE 394-400. Given the prevalent use of “PAC” as part of many third-party marks and trade names in the relevant industry, we find the term so widely used that it does not qualify as the basic element of a purported family of marks. Accordingly, the ninth DuPont factor is neutral. 28 The wording in the mark is “PennPac Providers of Flexible Packaging Solutions.” Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 27 - B. Strength of Opposer’s PAC Mark We have already considered the strength of Opposer’s PAC mark in the context of determining whether it may serve as a “family” trait. We now consider its strength, measured both by its conceptual, or inherent, strength and its commercial, or marketplace, strength to determine the scope of protection to which it is accorded. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). 1. Inherent Strength of Opposer’s Mark “In order to determine the conceptual strength of the cited mark, we evaluate its intrinsic nature, that is, where it lies along the generic-descriptive-suggestive- arbitrary (or fanciful) continuum of words.” In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014). Opposer concedes that lack of inherent distinctiveness is an “established fact for … those marks which were approved for registration under Section 2(f).” 67 TTABVUE 42. Both the standard character mark PAC and the composite mark PAC WORLDWIDE and design were registered with a claim of acquired distinctiveness in whole (as to PAC) and in part (as to PAC WORLDWIDE) under Section 2(f). See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent distinctiveness as an established fact.”); In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994). The third-party registrations and dictionary definition of “pac” discussed above are also relevant to show the inherent weakness of the term “PAC.” Applicant submitted additional third-party registrations for packaging goods and related Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 28 - services, including: Reg. No. 87402734 for the mark FLEXPAC (15 TTABVUE 303); Reg. No.86212610 for the mark PAC PACKAGING CONSORTIUM (15 TTABVUE 495); Reg. No. 75550985 for the mark COM-PAC INTERNATIONAL (16 TTABVUE 48); Reg. No. 85639170 for the mark POSTALPAC (16 TTABVUE 189); Reg. No. 87527638 for the mark STEAM’NPAC (16 TTABVUE 204); Reg. Nos. 87069012 and 87069026 for the mark FRUGALPAC (16 TTABVUE 219, 224); Reg. No. 85669176 for the mark RI-PAC (16 TTABVUE 230); and Reg. No. 76581108 for the mark J-PAC (16 TTABVUE 377). The term “PAC” would likely be viewed by consumers as an abbreviation for package or packaging and therefore, the mark PAC is inherently weak for packaging- related goods and services. 2. Commercial Strength of Opposer’s Mark Commercial strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). In the context of a likelihood of confusion analysis, the commercial strength of a mark is not a binary factor. Rather, it “varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps.,Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). Opposer argues that its “long history of using its marks, its very significant sales revenue, its market share, its advertising expenditures, and Internet articles, all Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 29 - show that PAC (standing alone), and the PAC Formative Marks, have achieved distinctiveness.” 67 TTABVUE 43. Specifically, Opposer argues that it has continuously marketed and sold its services and related goods under the PAC mark over the course of 45 years. Over that time, PAC has spent large sums (over $500,000 annually over the last three years) on promotion of the PAC Marks via tradeshows, websites, magazine advertisements, and other promotions. And PAC has succeeded in educating relevant users that it is the source of package printing services, graphic design services, and packaging products, as demonstrated by over one hundred million dollars in revenue generated annually under the PAC Marks. And in the United States, PAC controls over 20% of the market share for noncorrugate[d] packaging— i.e., the flexible packaging industry. 67 TTABVUE 41; see also Snow Decl., 67 TTABVUE 57-60. Applicant argues to the contrary that the record evidence of third-party registration and use of “PAC” marks by others in the flexible packaging industry “evidences the commercial weakness of ‘pac.’” 70 TTABVUE 40. We agree. As discussed above, the scope of protection for Opposer’s PAC mark has been substantially reduced by the proliferation of third-party usage of the term “PAC” in the flexible packaging industry. See, e.g., Jack Wolfskin, 116 USPQ2d at 1136 (evidence of extensive use and registration of a term by others as a mark can be “‘powerful on its face,’ even where the specific extent and impact of the usage has not been established”) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (26 third-party registrations and uses of marks containing the words “Peace” and “Love” evidencing weakness of terms)). By encountering numerous third-party packaging companies utilizing the term “PAC” under similar marketing conditions, “customers have been educated to distinguish Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 30 - between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. Accordingly, although Opposer’s PAC mark may have achieved marketplace recognition, the prevalent use and registration of “PAC” as part of many third-party marks demonstrates that the term is a commercially weak component of marks in the flexible packaging industry. C. The Marks We next consider whether the marks are more similar or dissimilar in their overall appearance, sound, connotation, and commercial impression, Palm Bay Imps., 73 USPQ2d at 1692. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d at 1812). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” In re i.am.symbolic, 123 USPQ2d at 1748; see also Coach Servs., 101 USPQ2d at 1721; Double Coin Holdings, 2019 USPQ2d 377409, at *6 (TTAB 2019). When making this determination, we consider the marks themselves, as they appear in the parties’ applications and registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (“The similarity of the marks is determined by focusing on ‘the marks in their entireties as to appearance, sound, connotation, and commercial impression.’”) (internal quotations omitted). Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 31 - Applicant’s registered mark is . Applicant seeks to register EPAC FLEXIBLE PACKAGING. Both of Applicant’s marks are for printing and lamination services and design services. Both start with the term EPAC, followed by wording that merely describes or is generic for Applicant’s printing and graphic design services. We consider the term EPAC to be the dominant term in Applicant’s marks because it is larger (in the design mark), it is first to catch a consumer’s eye in both marks, and it is the only term that has not been disclaimed in either mark. See, e.g., In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression.”). There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s marks incorporate Opposer’s mark PAC in its entirety, contributing to the marks’ similarity. See, e.g., Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (applicant’s mark WINEBUD for “alcoholic beverages except beers” likely to cause confusion with BUD for “beer”). The parties’ marks are similar in appearance and pronunciation due to this shared term. However, the marks are dissimilar with regard to the additional wording in Applicant’s marks. Although these disclaimed terms may contribute less to the overall impression of Applicant’s marks, they are nonetheless present and create points of difference from Opposer’s mark. The disclaimer of matter in a mark does Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 32 - not have the effect of removing the matter from the mark. See, e.g., Bordon, Inc. v. W.R. Grace & Co., 180 USPQ 157 (TTAB 1973). The marks are also similar in connotation; as Opposer acknowledges, the term “PAC” “vaguely suggest[s] the packaging industry.” (12 TTABVUE 9, Stip. No. 22). The term “packaging” appears in both of Applicant’s marks. Despite the presence of the same component, however, the parties’ marks differ in their overall commercial impressions due to the conceptual and commercial weakness of the term “PAC.” We find the dissimilarities in overall commercial impression of the marks to outweigh the similarities in appearance, pronunciation and connotation. In their entireties, the marks are more dissimilar than similar. Accordingly, the first DuPont factor favors a finding of no likelihood of confusion. D. The Goods and Services In addressing the relatedness of the parties’ goods and services, we consider Applicant’s services and Opposer’s goods and services as identified in Opposer’s registrations, and as identified in Applicant’s application and registration. See Stone Lion, 110 USPQ2d at 1161-62 (“the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application”). See also Hewlett-Packard Co., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008) (“it is the identification of goods that controls, not what extrinsic evidence may show about the specific nature of the goods”). We also consider any goods or services on or in association with which Opposer has proven its prior use of its PAC mark at common law. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 33 - Applicant’s application is for printing and lamination services in Class 40 and for design services in Class 42. Its challenged registration is for “printing services and digital printing” in Class 40 and design services in Class 42. Opposer established that it has provided printing services for mailers and pouches since at least as early as 2012; thus, Opposer has shown priority of use of its mark PAC for printing services. Snow also testified at his deposition that “for 7-8 years, Opposer has offered laminating services in the U.S., Mexico and perhaps Canada.” 11 TTABVUE 387. As Opposer’s printing and laminating services are similar to Applicant’s Class 40 services, the second DuPont factor favors likelihood of confusion regarding the services in Class 40. As regards Applicant’s design services, Opposer alleges that it has provided graphic design services since 1975. Snow Decl., 67 TTABVUE 57 (“[Opposer] has also provided graphic design services to its customers in the packaging industry since 1975.”). See also Bartell Decl., 67 TTABVUE 72 (“Since 1975, [Opposer] has been using and is currently using the PAC Mark alone and within a variety of PAC- Formative Marks, all in connection with packaging related services and related products, including…graphic and visual design services related to packaging products and services.”). Bartell cites to pages from Opposer’s website that support Opposer’s allegation of prior use with respect to design services.29 Several of the pages are dated 1998, including the following, dated November 11, 1998. It states: “Pac specializes in … 29 Referred to in Opposer’s brief at 67 TTABVUE 22. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 34 - package design,…Pac can manage your entire turnkey production project from making the first CD…to insert printing, complete package design,….” 51 TTABVUE 421: This evidence, together with that discussed under the heading “IV. Priority,” shows that Opposer also has priority of use of its PAC mark with respect to design services. The second DuPont factor thus favors a finding of likelihood of confusion with respect to Class 42 in addition to Class 40. E. Trade Channels and Classes of Consumers The third DuPont factor considers “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 35 - Applicant’s services “have been promoted and distributed through direct sales representatives, through leads obtained through its website and using brokers/distributors.” 12 TTABVUE 6, Stip. No. 14. Opposer promotes its services through “sales persons, trade shows, industry magazines, a website, and other ways usual and customary in the industry, including social channels such as Facebook, LinkedIn and Instagram, as well as direct mail campaigns and sponsorships.” Snow Decl., 67 TTABVUE 57. The trade channels overlap. Applicant argues that there are differences in the parties’ respective trade channels, pointing to several searches its Chief Marketing Officer, Carl Joachim, conducted online. Based on the results of his search, Mr. Joachim concludes that consumers “generally use different terms when searching for the parties online, the parties’ websites are not identified as similar sites by audience overlap, and the parties do not show up in the same Google searches.” 70 TTABVUE 318. The fact that prospective consumers may use different terms when searching for the parties online is not conclusive. It is unsurprising that a search that includes only one of the parties’ marks will not turn up the other party. Applicant implicitly acknowledges an overlap, stating that “to the extent that the services are related or the trade channels are similar, those factors are mitigated by the weakness of PAC Worldwide’s marks.” 70 TTABVUE 51. The third DuPont factor favors a finding of likelihood of confusion. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 36 - F. Purchaser Sophistication Under the fourth DuPont factor, we consider “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Applicant argues that purchasers of flexible packaging printing services are sophisticated, based primarily on the high cost of the services and deliberative buying process involved in purchasing the services. Applicant’s average order is more than $8,500. Knott Decl., 70 TTABVUE 66. Opposer’s average order for digitally printed roll stock is $5,000. Liggett Decl. 67 TTABVUE 64. The high cost of the goods is one consideration in determining that consumers are likely to be sophisticated. Applicant also points to Stip. No. 32, which details Opposer’s response to an Office Action issued during prosecution of its application for the PAC mark. Stip. No. 32 reads as follows: “One quote from a long office action response was: ‘PAC’s customized packaging services are marketed to a sophisticated consumer base that easily recognizes the PAC mark as related to Applicant’s goods and services.’” 12 TTABVUE 11. Although Opposer is not barred from taking an inconsistent position in this proceeding (i.e., its prior statement is not treated as an admission), the statement by Opposer at the ex parte examination level may be considered as “illuminative of shade and tone in the total picture confronting the decision maker ,” Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984) , and “bears on the probative value” of later statements made during this inter partes proceeding. Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *7 (TTAB 2019) ((citing Juice Generation, 115 USPQ2d at 1675 (“such comments have Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 37 - significance as facts illuminative of shade and tone in the total picture confronting the decision maker”) (internal quotations omitted); cf. In re Medline Indus., 2020 USPQ2d 10237, at *n.29 (TTAB 2020) (statements made by cited registration’s owner during prosecution of cited mark considered in later ex parte proceeding). In light of the expensive nature of the goods, the deliberative buying process involved and the customized nature of the services, DuPont factor four favors a finding of no likelihood of confusion. G. Actual Confusion The seventh DuPont factor considers the “nature and extent of any actual confusion” demonstrated by the record evidence, and the eighth factor weighs the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567. Opposer contends that there are a few instances of confusion in the record: First, there is Jeff Snow’s own confusion upon seeing the October 2018 article in Plastic News. Snow Decl. ¶ 24. Second, Ms. Liggett testified that she was aware of at least three instances of confusion. See Liggett Decl. ¶ 29-35, Ex. A. One example was a customer in early 2018 who was contacted by ePac and given a verbal quote by ePac; the customer thought the ePac representative was from PAC until they reviewed the quote. Id. Another example happened in early 2019, when PAC arranged a shipment of printed packaging directly from ePac to a customer, and the customer was confused as to the type of and the source of the packaging it was receiving. Id. 67 TTABVUE 32. Applicant counters that Opposer admitted there were no instances of confusion in response to Applicant’s interrogatories, and that the few instances alleged by Opposer are unsubstantiated. 70 TTABVUE 46. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 38 - Mr. Snow testified that he noticed an article about Applicant in the October 10, 2018 edition of Plastic News and mistakenly thought the article was about Opposer until he read it more closely. 67 TTABVUE 59. This testimony is not hearsay, and is relevant, but it is of little probative value because it is not that of a prospective customer under actual marketing conditions. Ms. Liggett testified to the alleged consumer confusion in paragraphs 29-33 of her declaration. Applicant objects to the testimony, and Exhibit A based thereon, on the grounds of hearsay and relevancy. In paragraph 29, Ms. Liggett testified that she was aware of three occasions where one of Opposer’s customers was confused. In paragraph 30, Ms. Liggett testified that she was contacted by a customer “because they believed that it had been someone from [Opposer] who had contacted them.” 67 TTABVUE 65-66. Ms. Liggett’s testimony in paragraphs 29 and 30 is admissible under the hearsay exceptions set forth under Fed. R. Evid. 803(1) and 803(3) as evidence of what Ms. Liggett heard (present sense impression), or as a statement revealing the declarant’s state of mind (state of mind exception). The statements are not offered for their truth but simply for the fact that Ms. Liggett was made aware of instances of alleged confusion, and in one case was contacted by someone who thought he or she was instead contacting Applicant. See, e.g., Nat’l Rural Elec. Coop. Ass’n v. Suzlon Wind Energy Corp., 78 USPQ2d 1881, 1887 n.4 (TTAB 2006) (statements regarding customers’ confusion fall under the state of mind exception to the hearsay rule); Finance Co. of Am. v. Bank-Am. Corp., 205 USPQ 1016, 1035 (TTAB 1980) (many occurrences of misdirected mail, telephone calls, and the like testified to and Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 39 - documented by opposer’s witnesses; “the testimony is not hearsay for it is accepted not for the truth of the statements made by the non-witnesses to them or the reasons therefor, but rather for the fact that the statements referred to in their testimony were made to them.”). In paragraphs 31-33, Ms. Liggett testified that a customer who had been receiving roll stock sourced from Applicant believed that another shipment was printed by Opposer, while another customer believed that Applicant was a division of Opposer. Exhibit A is an email exchange between Opposer and Applicant mentioning that one of Opposer’s customers received pricing from Applicant. 67 TTABVUE 69. Ms. Liggett’s testimony in paragraphs 31-33 constitutes hearsay. Ms. Liggett does not state that she had contact with either of these customers, but leaves open the possibility that she heard of the alleged confusion second or third-hand. Thus, the exceptions under Fed. R. Evid. 803 are inapplicable. As to the email correspondence, nothing therein suggests actual consumer confusion. These few instances of alleged confusion are de minimus. The seventh and eighth DuPont factors are neutral. VI. Balancing the Factors Although Opposer’s PAC mark registration is entitled to the presumptions of Section 7(b) as prima facie evidence of Opposer’s exclusive right to use the mark, Applicant has shown that as a result of the large number of marks containing “PAC” that are used in association with flexible packaging goods and services, the relevant, sophisticated, consumers have learned to look for differences between the marks and additional indicia of origin to distinguish the source of such goods and services. Opposition No. 91246806 (parent) / Cancellation No. 92070752 - 40 - Comparing the marks in their entireties given such educated consumers, we find the differences between Opposer’s mark PAC and Applicant’s marks EPAC FLEXIBLE PACKAGING and EPAC DIGITAL PACKAGING are sufficient, despite the related services and overlapping channels of trade, that confusion is unlikely. Because we find no likelihood of confusion, we need not reach Applicant’s affirmative defenses.30 Decision: The opposition on the ground of likelihood of confusion is dismissed and the petition to cancel on the ground of likelihood of confusion is denied. 30 This includes Applicant’s prior registration defense (commonly referred to as the Morehouse defense), which is unavailable here, as Opposer has petitioned to cancel the registration upon which Applicant relies. Saint-Gobain Abrasives 66 USPQ2d 1355, 1359 (TTAB 2003) (citing Estate of Ladislao Jose Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991)).