SMG Brands, Inc.

Trademark Trial and Appeal BoardFeb 22, 2011

No. 77672186 (T.T.A.B. Feb. 22, 2011)

Mailed: February 22, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SMG Brands, Inc. ________ Serial No. 77672186 _______ Susan E. Hollander of Manatt Phelps & Phillips LLP, for SMG Brands, Inc. Andrea P. Butler, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Seeherman, Mermelstein, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: SMG Brands, Inc. (“applicant”) filed an application to register the mark PLANTTRUST, in standard character form, for goods identified as “chemicals for use in agriculture, horticulture and forestry, namely, preparations for the treatment of plants; preparations for fortifying plants; plant growth regulant agents; plant nutrient compositions; fertilizers; preparations to expand root structure, increase nutrient uptake, and improve plant health and yield; soil conditioners and amendments; plant growth media containing pesticides, insecticides, fungicides, or herbicides; biological THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77672186 2 and bacterial preparations and compositions for aiding or enhancing the growth of turf, plants, shrubs, or trees.”1 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark TRUST,2 in typed drawing format, for “herbicides for agricultural use,” that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs, and applicant filed a reply brief. For the reasons discussed herein, the Board affirms the refusal to register. 1 Serial No. 77672186, in International Class 1, filed February 17, 2009, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce. We note that applicant’s reply brief requested “in the alternative” that the application be remanded to the examining attorney to consider an amendment to its identification of goods. Applicant’s request should have been filed as a separate document, not buried in its reply brief. See In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001). In any event, we do not find “good cause” for remand, and the request is denied. 37 CFR § 2.142(d); TBMP § 1207.02 (4th ed. 2004). It appears that applicant is requesting that, if we are not persuaded of the registrability of its mark as currently identified, we remand the application in order that the identification can be amended. However, the Board will not make multiple determinations. See Trademark Rule 2.142(g). Furthermore, the offer of a conditional amendment to an identification does not constitute an acceptable showing of good cause. TBMP § 1207.02 (4th ed. 2004). 2 Registration No. 2321694, in International Class 5, issued February 22, 2000, based on first use and first use in commerce on February 18, 1987. Serial No. 77672186 3 We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that the test 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 so that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Serial No. 77672186 4 Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer for the goods at issue, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the cited registration consists solely of the word TRUST, in typed format. This connotes a brand that consumers can “trust” for their “herbicides for agricultural use.” We find the mark to be at most suggestive, and to be (notwithstanding applicant’s arguments to the contrary), inherently distinctive – a presumption to which it is entitled as a mark registered without a Section 2(f) claim on the Principal Register.3 Applicant’s mark incorporates the word TRUST in full, adding, in front of it, the word PLANT. This word describes the purpose of the goods, namely, that they are for use on plants. Accordingly, although applicant’s mark is a single word mark, it is not inappropriate for us to place emphasis on a particular 3 To the extent applicant is arguing that the mark in the cited registration is descriptive, it is not permitted to collaterally attack the validity of a registration in an ex parte appeal. In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (quoting In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)). Serial No. 77672186 5 term or syllable that appears to dominate – in this case “TRUST.” In re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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.”). Accordingly, applicant’s mark also connotes “trust” with “plants,” and we find that the marks have a similar connotation and commercial impression. As for the appearance and sound of the marks, although applicant’s mark contains “PLANT” as an additional element to TRUST in this compound word, our precedent has found that adding a word to a mark does not necessarily obviate likelihood of confusion. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Cola-Cola Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707(TTAB 1985) (“CAREER IMAGE” AND “CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”). Applicant argues that there have been a number of instances where registrations have been granted to different entities for marks consisting of a particular word (such as MASTER) and marks consisting of that same word with the word “PLANT” in front (such as PLANTMASTER), for similar goods. Applicant offered a Serial No. 77672186 6 half-dozen examples of this pairing (including also TERRA and PLANTERRA; PLUS and PLANT PLUS; BEST and PLANT BEST; TRUE and TRUPLANT). Applicant also referred to the case Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983) (PLUS and MEAT PLUS), for the same concept. We are aware, of course, that varying results can be reached depending on varying goods and varying marks. The evidence submitted by applicant does not show an established practice regarding the addition of a word, nor more specifically when a word is added to the inherently distinctive word “TRUST,” and the Board is not bound by those decisions or those records. As the Federal Circuit instructs, every case must be decided on its own merits. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Finally, applicant argues that the cited registration is weak. In support of this argument, applicant cites a handful of third-party registrations that contain the term “TRUST” in class 1 or 54 (and a number in other classes), as evidence that consumers will distinguish its mark from that in the cited registration. Third-party registrations may be used to show that a term has been commonly registered for its suggestive meaning. However, even weak marks are entitled to protection against registration of a similar mark for similar goods. See 4 Applicant’s third-party registrations include a prior, now cancelled, registration, for PLANTTRUST. Nonetheless, a cancelled registration is of no evidentiary value in demonstrating registrability of applicant’s current mark. E.g., Nat’l Pork Bd. v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479, 1484 (TTAB 2010); Kellogg Co. v. Western Family Foods, Inc., 209 USPQ 440, 442 (TTAB 1980). Serial No. 77672186 7 Giant Food Inc. v. Rosso and Mastracco, Inc., 218 USPQ 521 (TTAB 1982). In sum, we find the similarities of the marks to outweigh their dissimilarities, and this du Pont factor to favor finding a likelihood of confusion. The Goods and Channels of Trade Next we consider the similarities or dissimilarities of the goods. In doing so, we keep in mind that the test is not whether consumers would be likely to confuse the goods but rather would be likely to be confused as to their source. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). To show the relatedness of the goods, the examining attorney submitted into the record numerous copies of use-based, third-party registrations identifying goods from both the application and the cited registration. These include, among others, Registrations No. 2913538 (“plant growth regulators” and “herbicides and fungicides for agricultural use”); 3046811 (“plant growth regulators for agricultural and domestic use” and herbicides and acaricides all for agricultural use”); 3017484 (“plant regulators for domestic, agricultural, or horticultural use” and “herbicides, . . . for domestic, agricultural and Serial No. 77672186 8 horticultural use”); 3432575 (“plant growth regulators for agricultural use” and “herbicides and acaricides for agricultural use”); 3304065 (“plant regulators for . . . agricultural use” and “herbicides for . . . agricultural use”); 1767821 (“plant growth regulators . . . for domestic and agricultural use” and “herbicides . . . for domestic and agricultural use”). Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).5 Regarding the channels of trade, both the goods in the application and those in the cited registration include “use in agriculture” or “agricultural use.” Accordingly, there is nothing that prevents applicant from offering for sale its products “for use in agriculture” through the same channels of trade and to the same consumers who purchase registrant’s “herbicides for agricultural use,” and vice-versa. Accordingly, we find that these du Pont factors also weigh in favor of finding a likelihood of consumer confusion. 5 In this regard, we note that applicant appears to base its proposed amendment, which would delete the term “for use in agriculture,” on a misreading of the examining attorney’s brief. A number of the third- party registrations include references to use in the related fields of “horticulture” and/or “forestry.” Serial No. 77672186 9 Consumer Sophistication Applicant urges us to consider consumer sophistication. In this regard, as with the other du Pont factors, we are bound by the parties’ respective identifications of goods. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is legion that 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 regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” [citations omitted]). There is nothing in the record that would give us insight as to the possible sophistication of consumers of these goods. To the extent we accept that they may be marketed to more careful purchasers with some advanced knowledge of agricultural products, we expect that with highly similar marks used on similar goods, even a careful, sophisticated consumer of these goods is not likely to note the differences in the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000). Furthermore, careful purchasers who do notice the difference in the marks will not ascribe it to differences in the source of the goods, but will see the marks as variations of Serial No. 77672186 10 each other, pointing to a single source. Accordingly, we deem this du Pont factor to be neutral. Conclusion In summary, we have carefully considered all of the evidence and arguments of record relevant to the pertinent du Pont likelihood of confusion factors. We conclude that with similar marks used on similar goods, sold through similar channels of trade, even with potentially sophisticated purchasers, there is a likelihood of confusion between applicant’s mark PLANTTRUST for the goods for which it seeks registration and the registered mark TRUST for the items identified therein. Decision: The refusal to register is affirmed.