Heartland Design Associates, LLCDownload PDFTrademark Trial and Appeal BoardSep 21, 2010No. 77673466 (T.T.A.B. Sep. 21, 2010) Copy Citation Mailed: 9/21/10 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Heartland Design Associates, LLC ________ Serial No. 77673466 _______ Elisabeth Townsend Bridge of Whyte Hirschboeck Dudek for Heartland Design Associates, LLC. Jeffrey J. Look, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Quinn, Kuhlke and Ritchie, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Heartland Design Associates, LLC filed an application to register the mark shown below THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77673466 2 (“GARDENER’S” disclaimed) for “live plants, namely, vegetable plants, fruit plants, herb plants, flowers, annuals and perennials” (in International Class 31).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 shown below (“GARDENER’S” disclaimed) for “fertilizers, plant food and lawn food, soil additives and soil conditioners for domestic uses” (in International Class 1); and “weed killers and insecticides for domestic uses; fungicides for domestic uses” (in International Class 5)2 as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. 1 Application Serial No. 77673466, filed February 19, 2009, alleging first use anywhere and first use in commerce on September 1, 2002. 2 Registration No. 2693991, issued March 4, 2003; Section 8 affidavit accepted; Section 15 affidavit acknowledged. Ser No. 77673466 3 Applicant argues that the following three factors compel a reversal of the refusal: the suggestive nature of the registered mark, and prevalence of similar third-party marks that include “GARDENER’S” or “CHOICE” for similar goods; the distinctions between the involved marks in sound and appearance; and the distinctions between the marks as actually used in commerce. Applicant submitted seven third-party registrations of marks that include “GARDENER’S” or “CHOICE” as a portion thereof. Applicant also points to the coexistence of the cited registration with a third-party registration that is now cancelled. The examining attorney maintains that both marks are dominated by the identical words “GARDENER’S CHOICE.” This identity, according to the examining attorney, outweighs the fact that the marks may be suggestive. Further, the examining attorney contends that the goods are closely related, and travel in the same trade channels to the same classes of purchasers. The examining attorney submitted third-party registrations to show that the same entity has registered the same mark for both types of goods involved in this appeal. Also of record are actual label specimens of third parties showing use of the same mark in connection with both types of products, and excerpts of third-party Ser No. 77673466 4 websites showing that the same online retailers offer for sale both types of products (e.g., plants and plant food). We first turn to address one evidentiary point. Applicant attached to its brief copies of TARR printouts of third-party registrations, identified as Exhibit A (one registration), Exhibit B (seven registrations), and Exhibit C (one registration). The examining attorney acknowledged that the registrations comprising Exhibits A and B were properly made of record during prosecution. The examining attorney objected, however, to the untimely submission of the registration identified as Exhibit C. Because Exhibit C was not timely made of record during prosecution, the objection is sustained. Trademark Rule 2.142(d). Accordingly, this exhibit does not form part of the record on appeal. Even if considered, however, the exhibit is not persuasive of a different result herein. We now turn our attention to the substantive merits of the appeal. Our determination of the issue of likelihood of confusion is based on an analysis of all of 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). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion Ser No. 77673466 5 analysis, however, 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 first focus our consideration on the du Pont factor of the similarity/dissimilarity between the marks. 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 (Fed. Cir. 2005). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). It is well settled that one feature of a mark may be more significant than another, and it is not improper to Ser No. 77673466 6 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.”). Where both words and a design comprise the mark (as in applicant’s and registrant’s marks), 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. In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Thus, although we have taken into account the design features of the respective marks, and the letters “GC” in registrant’s mark, we find that the dominant portion of each mark is the word portion. In this case, the word portion, GARDENER’S CHOICE, of each mark is identical. The marks are similar in sound and Ser No. 77673466 7 appearance, and are identical in meaning, that is, the goods are of such quality that they are the choice of gardeners. Because of the similarities between the marks, the marks engender similar overall commercial impressions. Responding more specifically to applicant’s arguments, the banner design of applicant’s mark is hardly sufficient to distinguish it from registrant’s mark. This banner design lacks distinctiveness and merely serves as a background for GARDENER’S CHOICE. Further, although we have considered the stylized “GC” letters present in registrant’s mark, the letters are insufficient to distinguish the marks. As is readily apparent, the letters “GC” in registrant’s mark stand for “GARDENER’S CHOICE” and, thus, are not as distinctive as would be the case with arbitrary letters. Because the letters “GC” merely represent the first letters of the word portion of the mark, and are just an “abbreviation” for “GARDENER’S CHOICE,” it is likely that consumers will largely ignore the letters and focus their attention on the literal word portion of the mark that is dominant. The first du Pont factor of the similarity between the marks weighs in favor of a finding of likelihood of confusion. Ser No. 77673466 8 We next turn to consider the second du Pont factor regarding the similarity/dissimilarity between the goods. It is not necessary that the respective goods be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods 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 originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The question of likelihood of confusion is determined based on the identification of goods in the application vis-à-vis the goods as set forth in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. We find that applicant’s “live plants, namely, vegetable plants, fruit plants, herb plants, flowers, annuals and perennials” are related to registrant’s Ser No. 77673466 9 “fertilizers, plant food and lawn food, soil additives and soil conditioners for domestic uses.” The goods obviously are complementary inasmuch as plant food would be used to assist the growth and health of live plants. The examining attorney, in connection with his argument that the goods are related, submitted several third-party use-based registrations listing both types of goods involved herein, such as live plants, and plant food and fertilizers. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods are of a type which may emanate from a single source. In re Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988). Buttressing this evidence are copies of the actual specimens in some of the third-party registration files showing use of the same mark in connection with both types of products. Insofar as the trade channels and classes of purchasers are concerned, we note that there are no such limitations in either applicant’s or registrant’s identification of goods. Accordingly, we must presume that the goods, as identified, are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In re Elbaum, 211 USPQ 639 Ser No. 77673466 10 (TTAB 1981). Thus, given the similarity between, for example, live plants and plant food, the respective goods of applicant and registrant are likely to travel in some of the same trade channels (e.g., garden centers, home and garden stores, building supply stores with a garden department, and the like). The examining attorney introduced excerpts retrieved from third-party websites showing that the same retailer will offer for sale both plants and plant food and/or fertilizers. Further, given the absence of any limitations as to purchasers, we presume that the goods are bought by the same classes of consumers, including ordinary consumers who would use nothing more than ordinary care in making their purchases. This is especially the case given the nature of the plant products involved herein, inasmuch as the goods are relatively inexpensive and may be subject to an impulse purchase. In sum, we find that the du Pont factors of similarity between the goods, identical trade channels and purchasers, and conditions of sale all weigh in favor of a finding of likelihood of confusion. We now direct our attention to the remaining du Pont factors that are relevant in this appeal. In connection with its argument that the cited mark is weak under the Ser No. 77673466 11 sixth du Pont factor of the nature and number of third- party uses, applicant submitted six third-party registrations:3 DIRT GARDENER (RN 1326502) for “fertilizers and soil conditioners”; GARDENER’S BEST (RN 2120799) for “organic fertilizers for agricultural and/or domestic use”; TOPCHOICE (RN 2826924) for “fungicides, herbicides, insecticides for environmental health use”; EXPERT GARDENER (RN 3333060) for “plant food; lawn and plant fertilizer for domestic use”; DYNAMIC GARDENER (RN 3505117) for “fertilizers for agricultural use; fertilizers for domestic use”; and SMART CHOICE (RN 3652419) for “insecticides.” Third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, but cannot be used to justify the registration of another confusingly similar mark. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)(“The existence of [third-party] registrations, without proof of actual use on related products do[es] not weaken the mark in issue.”). See also Time Warner 3 Included in applicant’s evidence is a seventh registration, this one of EXPERT GARDENER (RN 2728300) for “fertilizers for domestic use; soil conditioners for domestic use” and other related goods. An update of Office records shows that the registration was cancelled under Section 8. “[A] canceled registration does not provide constructive notice of anything.” Action Temporary Services, Inc. v. Labor Force, Inc., 870 F.3d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). See Kellogg Co. v. Western Family Foods, Inc., 209 USPQ 440, 442 (TTAB 1980). Ser No. 77673466 12 Entertainment Co. v. Jones, 65 USPQ2d 1650, 1659 (TTAB 2002)(“Third-party registrations are not evidence that the marks used therein are in use in commerce or that the public is familiar with them, for purposes of the sixth du Pont factor.”). To the extent the record shows that the marks are suggestive, they suggest the same idea, namely that the goods are the choice of gardeners. Moreover, none of the third-party registrations is of the mark GARDENER’S CHOICE, and none of the registered marks is as similar to registrant’s mark as is applicant’s mark. The evidence falls short of demonstrating that either “GARDENER” or “CHOICE,” let alone GARDENER’S CHOICE, is so commonly used that the public will look to the other elements of applicant’s and registrant’s marks to distinguish the source of the goods. In view of the above, although we have considered the copies of third-party registrations, this evidence does not result in a scope of protection of the cited mark that does not extend to applicant’s mark. In any event, even assuming arguendo that registrant’s mark is weak, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d Ser No. 77673466 13 1400, 182 USPQ 108 (C.C.P.A. 1974). Accordingly, this sixth du Pont factor is neutral. Applicant highlights the prior coexistence of a third- party registration, now cancelled, with the cited registration herein. Registration No. 1482770 issued on March 29, 1988 for the mark GARDENER’S CHOICE (“GARDENER’S” disclaimed) for “mail order services in connection with live plants, trees, shrubs, seeds and accessory items.” The registration was cancelled on January 3, 2009 due to the failure to renew under Section 9. This evidence does not warrant a reversal of the refusal when the likelihood of confusion factors, on balance, weigh in favor of a finding of likelihood of confusion. See In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991). See also In re Davey Products Pty. Ltd., 92 USPQ2d 1198, 1206 (TTAB 2009). As often stated, each case must stand on its own record and, in any event, the Board is not bound by the actions of prior examining attorneys. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the board or this court.”). See also Action Temporary Services, Inc. v. Labor Force, Inc., 10 USPQ2d at 1309. Ser No. 77673466 14 We conclude that consumers familiar with registrant’s plant food, fertilizers and soil additives sold under the mark GARDENER’S CHOICE and design would be likely to mistakenly believe, upon encountering applicant’s mark GC GARDENER’S CHOICE and design for live plants, that these related goods originated with or are somehow associated with or sponsored by the same entity. Lastly, to the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation