Encina Wastewater Authority

Trademark Trial and Appeal BoardSep 23, 2014

No. 85735568 (T.T.A.B. Sep. 23, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 23, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Encina Wastewater Authority ________ Serial No. 85735568 _______ Lisel M. Ferguson of Procopio Cory Hargreaves & Savitch for Encina Wastewater Authority. Jordan A. Baker, Trademark Examining Attorney, Law Office 102 (Mitchell Front, Managing Attorney). _______ Before Quinn, Cataldo, and Taylor. Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Encina Wastewater Authority (“Applicant”) filed an application to register the mark shown below Serial No. 85735568 2 (“GREEN” and “ORGANIC NITROGEN FERTILIZER” disclaimed) for “organic nitrogen fertilizer comprised of and/or containing biosolids” in International Class 1.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with Applicant’s goods, so resembles the previously registered mark PURE GREEN (in standard characters) (“GREEN” disclaimed) for “fertilizers for agricultural and domestic use, namely, soil amendments which are incorporated into or onto turf, lawns, beddings, and other non-potted soil profiles” in International Class 12 as to be likely to cause confusion. When the refusal was made final, Applicant appealed and requested reconsideration. The request for reconsideration was denied, and Applicant and the Examining Attorney filed briefs. In arguing against the refusal, Applicant asserts that the marks are different; that the goods move in different trade channels; that purchasers of Applicant’s products are highly sophisticated; and that there has been no actual confusion between the marks. Applicant submitted excerpts from its website and Registrant’s website. 1 Application Serial No. 85735568, filed September 21, 2012 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce on September 5, 2012. The application includes the following description of the mark: “The mark consists of the word PURE over the word GREEN with the words Organic Nitrogen Fertilizer under the word GREEN, and to the right of the E in the word PURE a comment balloon in the shape of a teardrop contains an image of a tree, some leaves, grass, and a berry stem.” 2 Registration No. 3703638, issued October 27, 2009. Serial No. 85735568 3 The Examining Attorney maintains that the marks are similar, despite the presence of additional wording and design elements in Applicant’s mark. Further, according to the Examining Attorney, the goods are competing fertilizer products that may be substituted for each other when used. In support of the refusal, the Examining Attorney introduced excerpts from third-party websites. Before turning to the merits, we need to address an evidentiary issue. Applicant in its brief states for the first time that there are a number of third-party registrations of similar marks for goods in Class 1, and argues that the scope of protection afforded to the cited mark is limited. More specifically, Applicant asserts that “a preliminary search of the USPTO” for the words “Pure” and “Green” reveals a certain number of registered marks in Class 1. Applicant concludes that “this is a crowded field of many marks, providing limited protection to any individual mark,” and that consumers are able to distinguish among them based on small distinctions in the marks. (11 TTABVue 12). No copies of the registrations were submitted. The Examining Attorney’s brief is silent on this argument. To make a third-party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office, should be submitted during prosecution/examination of the application. Mere listings of or references to registrations are not sufficient to make the registrations of record. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). Even if Applicant Serial No. 85735568 4 had submitted such evidence with its brief, it would have been untimely. Trademark Rule 2.142(d). Accordingly, Applicant’s argument is of no consequence.3 Our 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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We initially consider the second du Pont factor regarding the similarity/dissimilarity between the goods. It is well settled that the goods of Registrant and Applicant need not be identical or competitive, or even be offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of Registrant and Applicant are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, 3 In any event, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the USPTO); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not be given any weight.”). Serial No. 85735568 5 Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993). The issue here, of course, is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In making our determination regarding the relatedness of the goods, we must look to the goods as identified in the application and the cited registration. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s goods are identified as “organic nitrogen fertilizer comprised of and/or containing biosolids.” Registrant’s identification of goods reads “fertilizers for agricultural and domestic use, namely, soil amendments which are incorporated into or onto turf, lawns, beddings, and other non-potted soil profiles.”4 4 Applicant argues that Registrant does not use its mark as a source-identifier of a stand- alone product, but rather as a service mark for lawn and tree maintenance services. (11 TTABVue 10). Inasmuch as the identification in the cited registration controls our analysis, this argument is irrelevant. Further, Applicant argues that Registrant renders “services” only in Michigan. (11 TTABVue 11). This argument likewise is irrelevant given that Registrant’s registration entitles it to nationwide rights for goods. Applicant also contends that “it is surprising that Registrant’s mark was registered.” (11 TTABVue 6). To the extent that any of these arguments constitutes a collateral attack on the cited registration, the attack is impermissible. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in connection with the goods and/or services identified in the certificate. During ex parte prosecution, including an ex parte appeal, an applicant will not be heard on matters that constitute a collateral attack on the cited registration. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP § 1207.01(d)(iv) (2014). Serial No. 85735568 6 Because Registrant’s goods as identified have no limitations or restrictions, it is presumed that the goods encompass all goods of the type identified. Thus, Registrant’s broadly worded identification would encompass organic nitrogen fertilizers with biosolids. Further, Applicant’s organic fertilizers must be presumed to be suitable for all purposes, including the agricultural use specified in Registrant’s identification of goods. In point of fact, as shown by Applicant’s website, common uses of Applicant’s fertilizer include “direct application to agricultural fields.” Accordingly, the goods must be considered to be legally identical for purposes of the likelihood of confusion analysis. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Further, because the goods identified in the application and the cited registration are legally identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion. Serial No. 85735568 7 The legal identity of the goods, as well as the presumed overlap in trade channels and purchasers, are factors that cumulatively weigh heavily in favor of finding a likelihood of confusion. We next turn to focus on the first du Pont factor. We must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “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.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing the marks, we are mindful that where, as here, the goods are legally identical, the degree of similarity between the marks necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Serial No. 85735568 8 Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering- Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). With respect to Applicant’s mark, the generic wording “ORGANIC NITROGEN FERTILIZER” is disclaimed and is in a much smaller font size than “PURE GREEN.” In view thereof, the “ORGANIC NITROGEN FERTILIZER” portion of the mark plays no source-indicating function in the mark. See, e.g., In re Dixie Rests., Inc., 41 USPQ2d at 1533-34 (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). Where both words and a design comprise the mark, as in Applicant’s mark, then the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods and/or services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a Serial No. 85735568 9 design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430-31 (TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Accordingly, Applicant’s mark is dominated by the wording “PURE GREEN ORGANIC NITROGEN FERTILIZER,” which in turn is dominated by, as indicated above, “PURE GREEN.” The dominant portion of Applicant’s mark is identical to the entirety of Registrant’s mark. We recognize, however, that the marks must be considered in their entireties, including design features and disclaimed wording (which includes the disclaimed word “GREEN” in both marks). When Applicant’s design mark is compared to Registrant’s mark in standard characters, we find the marks to be similar in sound and appearance. Throughout prosecution and in its appeal brief, Applicant depicts Registrant’s mark in a logo format showing the mark as actually used, rather than the standard character format of the registered mark. Contrary to the gist of Applicant’s argument on this point, we do not compare the marks as actually used; rather, our comparison of the marks is based on how they are shown in the application drawing and the cited registration. Because Registrant’s mark is presented in standard characters, Registrant is not limited to any particular depiction of its mark. Thus, Registrant is entitled to all depictions of its standard character mark regardless of the font style, size, or color; Registrant’s mark could at Serial No. 85735568 10 any time in the future be displayed in a manner similar to Applicant’s mark, that is, the words displayed in the same font style and size. In re Viterra Inc., 101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that a mark in standard character format (typed) is distinct from a mark in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be asserted by that party” (emphasis in original)). The marks also convey the same suggestive meaning, that is, use of the respective fertilizers will keep grass green, in a natural or environmentally-friendly way. In view of the above similarities, we find that the marks, when considered in their entireties, engender similar overall commercial impressions. The similarity between the marks weighs in favor of finding a likelihood of confusion. Applicant claims, based on the “important characteristics” of Applicant’s fertilizer, that the relevant customers of its goods are sophisticated. The record is devoid of any direct probative evidence on this point. However, even assuming that the involved goods may involve a careful purchase, it is settled that sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving highly similar marks and legally identical goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); In re Research Trading Corp., 793 F.2d 1276, 230 USPQ Serial No. 85735568 11 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarity between the marks and the legal identity of the goods sold thereunder outweigh any presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Accordingly, this factor is neutral. With respect to the eighth du Pont factor, Applicant states that it is unaware of any instances of actual confusion between its mark and Registrant’s mark, despite Applicant’s mark being widely advertised since September 2012. It is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Applicant’s assertion, particularly in this ex parte proceeding, is entitled to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of Serial No. 85735568 12 confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, the record is devoid of evidence relating to the extent of use of Applicant’s and Registrant’s marks that would enable us to determine whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use of the marks without evidence of actual confusion is considered neutral. We have carefully considered all of the evidence made of record pertaining to the issue of likelihood of confusion, as well as all of the arguments related thereto, including any evidence and arguments not specifically discussed in this opinion. We conclude that purchasers familiar with Registrant’s “fertilizers for agricultural and domestic use, namely, soil amendments which are incorporated into or onto turf, lawns, beddings, and other non-potted soil profiles” sold under the mark PURE GREEN would be likely to mistakenly believe, upon encountering Applicant’s mark PURE GREEN ORGANIC NITROGEN FERTILIZER and design for “organic nitrogen fertilizer comprised of and/or containing biosolids,” that the goods originate from or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed.