Heartland Design Associates, LLC

Trademark Trial and Appeal Board

Sep 21, 2010

No. 77673466 (T.T.A.B. Sep. 21, 2010)

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
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(“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
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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
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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
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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
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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
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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
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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
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“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
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(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
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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
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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
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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
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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.