Master Nurserymen’s Ass’n.v.Star Nursery, Inc.

Trademark Trial and Appeal Board

Nov 24, 1999

No. 91098988 (T.T.A.B. Nov. 24, 1999)

Hearing: Paper No. 38
November 10, 1998 RFC
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB NOV. 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Master Nurserymen’s Association
v.
Star Nursery, Inc.
_____
Opposition No. 98,988
to application Serial No. 74/543,275
filed on June 27, 1994
_____
David Durant of Crosby, Heafey, Roach & May for Master
Nurserymen’s Association.
Michael J. McCue of Quirk & Tratos for Star Nursery, Inc.
______
Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 27, 1994, Star Nursery, Inc., a corporation
organized in existing under the laws of Nevada, filed an
application to register the mark shown below
Opposition No. 98,988
2
for "mulch used to plant trees and flowers," in Class 31.
The basis for the application was applicant’s claim of use
of the mark in interstate commerce since March 15, 1994.
The application was amended to state that the lining shown
in the drawing is a feature of the mark, and does not
indicate color.
A timely Notice of Opposition was filed on September
20, 1995 by Master Nurserymen’s Association, a California
corporation. As grounds for the opposition, opposer
asserted that since January 1960, it had used the mark
"PAYDIRT" in in connection with the sale of all-purpose soil
mulches and soil conditioners; that its mark was registered
in conjunction with its house mark "49’ER" in California;
and that applicant’s mark, as used in connection with the
goods specified in the application, so resembles opposer’s
mark "PAYDIRT," as used in connection with opposer’s
products, that confusion is likely. Attached to the Notice
of Opposition were a copy of opposer’s California state
trademark registration certificate for the mark "49’ER PAY
DIRT" and a photograph of a container of opposer’s "organic
soil builder and top dressing with composted chicken
manure." The trademark "Paydirt" is prominently displayed
on the bag beneath the mark "MASTER NURSERY."
Opposition No. 98,988
3
Applicant timely filed an answer to the Notice of
Opposition, denying the essential allegations set forth by
opposer therein.
A trial was conducted in accordance with the Trademark
Rules of Practice. Both parties filed briefs, and both
presented their arguments at the oral hearing conducted
before the Board.
The record before the Board in this proceeding includes
the file of the opposed application, opposer’s 1986
California state trademark registration referenced above for
the mark "49’ER PAY DIRT,", and the testimonial depositions,
with exhibits, of Stephen Noonan; Betty Immer; Richard
Kline; Harold Mendon, Jr.; Ron Pacinini; Mark Gill; Manuel
Baeta; James Joseph; Paul Bernhard, Jr.; Robert Bateman; and
Kurt Josephson.
The issues before the Board in this appeal are priority
and likelihood of confusion. Based upon a careful review of
the record before us, we hold that opposer has priority and
that confusion is likely.
Opposer was formed in 1958 as a retail nursery
cooperative. At least as early as 1963, it first used "PAY
DIRT" along with its house mark, "49’ER" to identify its
soil amendment product, which is a mixture of, among other
things, chicken manure, peat moss and vegetable byproducts.
Opposition No. 98,988
4
This mixture is used by gardeners to enhance the quality of
their soil for planting trees and flowers.
Opposer’s house mark, "49’ER," was used on many of
opposer’s goods. On packages of opposer’s soil amendment
product, the mark "PAY DIRT" was used separate from the
house mark, beneath it and in a different typeface. Shown
below is a example of how the two marks were promoted by
opposer. (Ehibit 17 to the deposition of Mr. Baeta).
Used as such, "PAY DIRT" clearly created a commercial
impression separate from that of opposer’s house mark.
As early as 1978, opposer was selling its soil
amendment product under both of its trademarks in interstate
commerce. The mark "49’ER PAY DIRT" was registered in the
state of California on December 12, 1986, and that
registration remains in effect.
The record shows that during 1993 and 1994, opposer’s
members discussed expanding from opposer’s Northern
California base of operations into the market in the
Opposition No. 98,988
5
southern part of that state and using a new house mark which
would have more appeal in that area. The thinking behind
the adoption of the "Master Nursery" house mark was that the
references to "49’ER" would not create a favorable
commercial impression in Southern California, where
association with the San Francisco professional football
team or the Northern California gold rush might not attract
customers in the same way that it had for opposer’s members
in the north.
In May of 1994, opposer began selling its soil
amendment product in Southern California under the mark
"PAYDIRT" in conjunction with opposer’s new house mark,
"MASTER NURSERY," although in the northern part of the
state, the same product continued to be marketed under the
mark "PAY DIRT," used in conjunction with the "49’ER" house
mark. An example of how the product was promoted under the
new house mark is shown below. (Exhibit 17 to the Baeta
deposition.)
Shown separately on the Master Nursery product bag as
"Paydirt" in large letters in a different typeface from the
Opposition No. 98,988
6
"MASTER NURSERY" house mark, the product mark still created
a separate commercial impression apart from either the house
mark or the combination of the house and product marks, just
as "PAY DIRT" had created a separate commercial impression
apart from either the"49’ER" house mark or the combination
of "49’ER" and "PAY DIRT."
At the time the trial testimony was taken in this case,
opposer continued to market its soil amendment as both "PAY
DIRT" with the house mark "49’ER" and as "PAYDIRT" under the
house mark "Master Nursery," depending on the geographic
location of the particular retail outlet where the product
was being sold. Although in Southern California the term
was presented with no space between "PAY" and "DIRT," the
commercial impression created by "PAY DIRT" and "Paydirt" is
essentially the same.
Notwithstanding applicant’s argument to the contrary,
opposer has not abandoned either "Pay Dirt" or "49’ER PAY
DIRT" in connection with with its soil amendment. Applicant
argues strenuously that the record establishes that
opposer’s members voted to discontinue selling the "49’ER
PAY DIRT" soil amendment, and applicant uses this argument
as the basis for contending that opposer abandoned use of
"PAY DIRT." While the record does show that the members
indicated their willingness to replace the "49’ER" house
brand with the "MASTER NURSERY" house brand, the record does
Opposition No. 98,988
7
not establish that anyone associated with opposer intended
to abandon the product mark used with opposer’s soil
amendment. Irrespective of the conclusion one may reach
with respect to whether what happened at the annual meeting
of the owners of opposer constituted evidence of abandonment
of the "49’ER" house mark, their actions cannot be
reasonably interpreted as an indication of the intention to
abandon the product mark which continues to be used on their
soil amendment.
Applicant is a chain of nurseries in Nevada, Arizona
and Utah. It first used the mark it seeks to register, a
stylized presentation of the term "PAYDIRT," in April of
1994, the month before opposer began use of "Paydirt" in
conjunction with its new house mark, "Master Nursery."
Although applicant became aware of opposer’s use of
"49’ER PAY DIRT" in connection with opposer’s product prior
to the actual introduction of applicant’s "PAYDIRT" product
and prior to the filing of the opposed application to
register the mark, applicant maintains that it adopted its
mark in good faith. In any event, applicant contends that
it believed that opposer was discontinuing its use of the
"49’ER PAY DIRT" trademark, although applicant did not
contact opposer in order to verify what applicant asserts it
had been told in this regard.
Opposition No. 98,988
8
Applicant has conceded that its "PAYDIRT" product is
also a soil amendment. For purposes of our analysis, the
goods of the parties are the same. They move in similar
channels of trade and are sold to ordinary consumers, who
use them for the same purpose, i.e., as an additive to soil
in which plants are grown. Opposer’s products are sold only
in stores operated by opposer’s members, but these
independent retail nurseries are the same kinds of stores
where applicant’s products are also sold. If similar marks
are used on both applicant’s and opposer’s goods, customers
familiar with opposer’s products are likely to be confused
when they encounter applicant’s goods bearing a similar mark
in competing nurseries. That opposer’s members do not sell
applicant’s goods is not determinative. Both products are
promoted and sold in similar ways to the same types of
consumers.
In view of opposer’s priority of use and the identity
of the goods involved, this case turns on whether
applicant’s "PAYDIRT" mark is so similar to opposer’s marks
that confusion is likely.
Applicant argues that we should consider opposer’s mark
to be "49’ER PAY DIRT," rather than simply "PAY DIRT" or
"PAYDIRT," and that when this is done, the marks in their
entireties are not similar. Applicant further contends that
opposer’s adoption of the "Master Nursery Paydirt" mark
Opposition No. 98,988
9
occurred after opposer had abandoned its "49’ER PAY DIRT"
mark and subsequent to applicant’s adoption of the mark it
seeks to register, so that whether applicant’s mark is
likely to cause confusion with the "Master Nursery Paydirt"
mark is irrelevant.
We cannot adopt this position, however. As noted
above, opposer has used the same term, albeit in two
slightly different formats ("PAY DIRT" and "Paydirt") as its
trademark for its soil amendment product, and by virtue of
such use, has created proprietary rights in the term
separate and apart from the combination of the product mark
with opposer’s house marks.
As opposer points out, the test for likelihood of
confusion is not whether the marks can be distinguished when
they are subjected to a side-by-side comparison. The issue
is whether the marks create similar overall commercial
impressions, notwithstanding the existence of subordinate
design elements. Cemetron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537 (TTAB 1979), Visual Information Institute,
Inc. v. Vicon Industries, Inc., 209 USPQ 179 (TTAB 1980).
Key elements in this regard are appearance, pronunciation
and connotation, and similarities in these characteristics
may outweigh any differences. When the products with which
the marks are used are identical, as is the case here, the
marks do not have to be as similar in order to be likely to
Opposition No. 98,988
10
cause confusion as would be the case if the goods were not
the same. Aires Systems Corp. v. World Book Inc., 26 USPQ2d
1926 (TTAB 1993).
In the case at hand, applicant has essentially adopted
and used opposer’s trademark on the same goods. Moreover,
even if we were to consider opposer’s rights to be limited
to the combination of "49’ER" and "PAY DIRT," applicant has
essentially taken a key element from opposer’s trademark, in
fact, half of that mark, and adopted it, in a stylized
presentation, as its own mark for the identical goods.
Under these circumstances, confusion is clearly likely.
Applicant argues that opposer has failed to establish
that it has proprietary rights in its mark, and that even if
it were able to prove such rights, opposer has failed to
establish that the mark is distinctive. Further, applicant
argues that confusion is not likely because the marks of the
parties, in their entireties, are not similar, the marketing
channels are not similar, there is no evidence that actual
confusion has occurred, and that opposer has failed to
establish that its mark is famous. None of these arguments
is well taken.
Contrary to applicant’s assertions, "PAY DIRT" is not a
term which is merely descriptive of opposer’s goods.
Rather, it is a suggestive term, as applied to the goods
involved in this case, which is inherently distinctive as an
Opposition No. 98,988
11
indicator of the source of opposer’s soil amendment
products. In any event, applicant raised this argument for
the first time in its brief. It was neither pleaded by
applicant nor tried by the parties.
The record shows that "49’ER" is a house mark used by
opposer on many of its products. The combination of this
house mark with the term "PAY DIRT" results in a trademark
that suggests that opposer’s goods, which are added to soil,
will make that "dirt" richer, as the miners who took part in
the gold rush of 1849 became when they hit paydirt.
Opposer points to a dictionary definition of "paydirt" as
"earth, ore, or gravel with a metal content rich enough to
make mining profitable." Even if this suggestive word, or,
for that matter, even if the suggestive combination of the
word with "49’ER," were not inherently distinctive (which
we do not believe to be the case), opposer’s use and
promotion of the mark in connection with opposer’s goods for
over thirty years has clearly resulted in it becoming
distinctive of opposer’s soil amendment product. Contrary
to applicant’s argument, opposer was not obligated to plead
either that its mark is distinctive or that it has become
famous, nor was opposer required to prove such claims, in
view of the fact that its mark is inherently distinctive.
Applicant argues that opposer’s use of the term "49’ER"
in its mark renders the mark sufficiently different from
Opposition No. 98,988
12
applicant’s mark to obviate the possibility of confusion as
to the source of the products on which the marks are used.
Applicant emphasizes that its mark is presented in a
stylized, distinctive typeface which includes gradations of
shading in the lettering and a depiction of lines weaving
around the letters, whereas opposer’s mark is "49’ER PAY
DIRT," which is used along with several other indicators of
source all on opposer’s packaging. Applicant argues that
"49’ER" is the dominant portion of opposer’s mark, in that
it is less descriptive than "PAY DIRT," and that, in any
event, the combination of terms used by opposer is
sufficiently different from applicant’s stylized
presentation of "PAYDIRT" that when the marks are considered
in their entireties, confusion is unlikely.
As noted above, however, we disagree. Opposer uses the
"PAY DIRT" mark and has rights in it separate and apart from
the mark "49’ER." Moreover, with respect to the combination
of the two marks, for those who are familiar with opposer’s
use of the combination of its house mark with this product
mark, the "PAY DIRT" portion of "49’ER PAY DIRT" would
clearly have significance at least equal to that of the
"49’ER" component. Even if "49’ER" had not been shown to be
a house mark used with other product marks on a number of
different goods, applicant’s mark, by incorporating a
significant portion of opposer’s combination mark, creates a
Opposition No. 98,988
13
similar commercial impression. Whether the planting soil
additive is referred to as "49’ER PAY DIRT," "PAY DIRT,"
"Paydirt" or "PAYDIRT," the connotation is essentially the
same because of the clever association between soil and
paydirt. This similarity is not eliminated by applicant’s
use of various design elements in the way the word is
presented.
Additionally, we note that applicant’s trade dress is
evocative of the Gold Rush era, in that the bag in which the
goods are sold features an illustration of half a dozen
miners dressed in clothing from that period, holding shovels
and other mining tools. The connection with opposer’s
"49’ER PAY DIRT" as it appears on opposer’s bags is
unmistakable. The trade dresses of the parties provide
further evidence that the word marks create similar
commercial impressions. See Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281
(Fed. Cir. 1984).
Applicant further argues that "[t]he most critical
factor in determining the likelihood of confusion is whether
there is any evidence of actual confusion." (brief, p.24).
The issue is whether or not confusion is likely. It is well
settled that proof of actual confusion is not required in
order to show that confusion is likely. Bandag, Inc., v. Al
Opposition No. 98,988
14
Bolser’s Tire Stores, Inc., 750 F.2d 903, 223 USPQ 982 (Fed.
Cir. 1984).
Similarly unpersuasive is applicant’s argument that the
potential for confusion is de minimis. Applicant contends
that "…it is hard to imagine that a consumer will go into a
Star Nursery looking for '49'er Pay Dirt' or now 'Master
Nursery Paydirt' and purchase Star Nursery PAYDIRT on the
mistaken belief that the product is from the same source.
Indeed, the more likely scenario is that consumers will
purchase their soil amendment products regardless of brand
wherever they purchase their plants." (brief, p. 24). The
logical extension of this argument is that the trademarks
used on these products make no difference at all and that
even identical marks on identical products will not be
likely to cause confusion because the customers will know
with whom they are dealing. To reach such a conclusion
would be to disregard the marks altogether, a proposition
which is contrary to the fundamental principles upon which
the law of trademarks is founded.
In summary, applicant has adopted essentially the same
term, "PAYDIRT," and applied it to the same product that
opposer had been selling under that mark for years. Even if
we consider opposer's mark to be the combination of its
product mark with its first house mark, when this mark is
considered in its entirety and is compared to applicant's
Opposition No. 98,988
15
mark, the marks create similar commercial impressions and
their use on identical goods is likely to cause confusion.
Purchasers aware of opposer’s "49’ER PAY DIRT" mulch, who
then encounter applicant’s "PAYDIRT" mulch, are likely to
believe, mistakenly as it would turn out, that these
identical goods emanate from the same source.
Accordingly, in view of opposer’s priority of use, the
opposition is sustained and registration to applicant is
refused.
R. L. Simms
R. F. Cissel
E. W. Hanak
Administrative Trademark Judges,
‘ Trademark Trial & Appeal Board