Soccer Grass Sport Turf, LLC

Trademark Trial and Appeal Board

Sep 17, 2020

88234940 (T.T.A.B. Sep. 17, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Soccer Grass Sport Turf, LLC
_____

Serial No. 88234940
_____

Mark D. Bowen and Kristina M. DiMaggio of Malin Haley DiMaggio & Bowen, P.A.
for Soccer Grass Sport Turf, LLC.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Cataldo, Goodman and Hudis,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Soccer Grass Sport Turf, LLC, seeks registration on the Principal
Register of the mark shown below, identifying the following services, as amended:
“installation, maintenance and repair of artificial sports fields” in International Class
37.1

1 Application Serial No. 88234940 was filed on December 19, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s claim of a bona fide intent to use
the mark in commerce, with the following description and color statements: “The mark
consists of the words ‘TERRA TURF’ in stylized font.” “Color is not claimed as a feature of
the mark.” In response to the Examining Attorney’s requirement, Applicant disclaimed
“TURF” apart from the mark as shown.
Serial No. 88234940
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The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the following registered mark, identifying “installation of
synthetic lawns; construction consultation services relating to landscape renovation
and minimizing the impact on lawns, plants and trees; repair and maintenance of
irrigation systems,” in International Class 37.2

The refusal has been fully briefed by Applicant and the Examining Attorney.
Based upon the record and the arguments made, we affirm the likelihood of
confusion refusal.
I. Likelihood of Confusion
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

2 Reg. No. 4604077 issued on September 16, 2014 with a disclaimer of “LANDSCAPE” and
the following description and color statements: “The mark consists of two suns and the words
‘TERRA LANDSCAPE.’” “Color is not claimed as a feature of the mark.” Section 8 affidavit
accepted; Section 15 affidavit acknowledged. The registration also identifies services in Class
44 that do not form the basis for the likelihood of confusion issue under appeal.
Serial No. 88234940
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also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, 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
(CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
1. Strength of the Term “TERRA” in the Cited Registration
We consider the conceptual strength of “TERRA” in relation to “installation of
synthetic lawns; construction consultation services relating to landscape renovation
and minimizing the impact on lawns, plants and trees; repair and maintenance of
irrigation systems.”3 In re FabFitFun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018).
Inasmuch as neither Applicant nor the Examining Attorney submitted a definition of
“TERRA,” we take judicial notice of the following definition – “earth; land.”4

3 There is little, if any, evidence of record regarding the commercial strength of the cited
mark. In an ex parte appeal, the owner of the cited registration is not a party, and the
Examining Attorney is under no obligation to demonstrate exposure to or recognition of the
cited mark in the marketplace. In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB
2016). For that reason, “in an ex parte analysis of the du Pont factors for determining
likelihood of confusion …, the ‘[commercial strength] of the mark’ … is normally treated as
neutral when no evidence as to [marketplace recognition] … has been provided.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(d)(ix) (Oct. 2018). Thus, because
there is no evidence of record regarding the commercial strength of the cited mark, this
consideration is neutral.
4 Definition from Dictionary.com, based upon Random House Unabridged Dictionary (2020).
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014).
Serial No. 88234940
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In the context of the services identified in the cited registration, we find this
definition indicates that “TERRA” evokes an aspect of landscape renovation, namely,
that it broadly concerns renovating land. Given this meaning, which at worst is only
somewhat suggestive of a characteristic or feature of the identified services, the term
appears to be inherently distinctive. The inherent distinctiveness of the mark in the
cited registration is further evidenced by its registration on the Principal Register
without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act.
Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). 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 its exclusive right to
use the mark in connection with the goods or services identified in the certificate.
We next consider Applicant’s argument concerning the number and nature of
third-party registrations of “TERRA” formative marks. Applicant argues that “the
only common matter between the composite marks is the shared term ‘TERRA’ and
this term is diluted in connection with earth, land, lawns, and related goods and
services.”5 In support of this contention, Applicant introduced into the record with
the April 18, 2019 Response to Office Action copies of 13 registrations owned by 9
different entities, retrieved from a search of the USPTO’s Trademark Electronic

5 Applicant’s brief. 4 TTABVUE 12.
Serial No. 88234940
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Search System (“TESS”) database of applications and registrations that include the
word “TERRA.”6 All marks are in standard character unless otherwise noted:
Reg. No. 5570481 for the mark TERRASHELL identifying “modular,
matted concrete blocks used in landscaping applications; concrete
blocks used in soil revetment;”

Reg. Nos. 2437777, 4794015 and 4880573, owned by the same entity
for the marks TERRA PRO, TERRA VERDE and TERRAVERDE
and design identifying various hand tools, namely, shovels, spades,
spading forks, turf edgers, rakes and hoes, lopping shears, hedge
shears, grass shears, planters and cultivators, long handled hand
tools, namely anvil and bypass pruners;

Reg. Nos. 4710725 and 4710731, owned by the same entity for the
marks TERRA PRIMA and TERRA PRIMA and design identifying
services including “landscape architecture construction services;
repair of existing landscape elements and landscape supporting
systems; consulting services in the field of landscape construction;”

Reg. No. 4771453 for the mark TERRAKING identifying various
leaf collection bags, tractor-towed spreaders, rollers, rakes and
reapers for lawn mowing;

Reg. No. 4665224 for the mark TERRAPLANE identifying various
turf care machines for maintenance and management of grass for
sporting purposes;

Reg. No. 3920763 for the mark TERRACARE ASSOCIATES
identifying “landscaping services, namely, lawn mowing, lawn care,
and landscaping maintenance and gardening services;”

Reg. Nos. 3673790 and 4179648, owned by the same entity for the
marks TERRA-SHIELD and TERRA-FLAGE identifying various
additives consisting of dye pigments or ceramic materials for
hydraulic mulches used for erosion control, revegetation and turf
establishment;

Reg. No. 2584712 for the mark TERRATRAC identifying
“agricultural and ground maintenance machines and parts therefor

6 At 16-33.
Serial No. 88234940
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excluding tires, namely, tractor-driven machines for use in hillside
moving, in turf care, in snow removing and in public service;” and

Reg. No. 2407784 for the mark TERRA-SORB identifying “soil
conditioner which improves soil water retention and prevents water
stress in plants and grasses for domestic, horticultural, and
commercial use.”

With regard to the third-party registration evidence, we note that the “existence
of [third party] registrations is not evidence of what happens in the market place or
that customers are familiar with them.” AMF Inc. v. American Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless, in determining
the degree of weakness, if any, in the shared term, we must “adequately account for
the apparent force of [third-party use] evidence,” regardless of whether “specifics”
pertaining to the extent and impact of such use have been proven. Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015).
“[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’
even where the specific extent and impact of the usage has not been established .”
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), citing to Juice
Generation, 115 USPQ2d at 1674.
In this case, all of the third-party registrations consist, inter alia, of “TERRA” and
a second term that is wholly unlike the following term in either the cited mark
(“LANDSCAPE”) or the involved mark (“TURF”). None of the third-party
registrations includes the term “LANDSCAPE” or a twin suns design. In addition,
only Reg. Nos. 4710725 and 4710731, owned by the same entity for the marks TERRA
Serial No. 88234940
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PRIMA and TERRA PRIMA and design, recite services related to the services in the
cited registration. The remaining third-party registrations recite goods and services
that more tangentially relate to landscaping, gardening and lawn applications. In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)
(disregarding third-party registrations for goods in other classes where the proffering
party “has neither introduced evidence, nor provided adequate explanation to support
a determination that the existence of I AM marks for goods in other classes, …
support a finding that registrants’ marks are weak with respect to the goods
identified in their registrations”); accord Hunt Foods & Indus., Inc. v. Gerson Stewart
Corp., 367 F.2d 431, 151 USPQ 350, 353 (C.C.P.A. 1966). This evidence falls short of
supporting Applicant’s contention that the weakness of “TERRA” will cause
consumers to distinguish between the marks based upon the “additional terms and
design elements.”7 Cf. In re FabFitFun, Inc., 127 USPQ2d at 1675 (evidence of both
third-party registration and use established that the shared term in the marks at
issue is suggestive of the goods and commercially weak).
Based on the totality of the evidence, we find that the shared term “TERRA” has
not been shown to be particularly weak. We find, as a result, that the mark in the
cited registration is entitled to an ordinary scope of protection to be afforded an
inherently distinctive mark. On balance, we do not believe that, on this record, the
relative strength of the cited mark in its entirety or the shared term weighs
significantly one way or the other.

7 4 TTABVUE 12.
Serial No. 88234940
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2. Similarity or Dissimilarity of the Marks
We next compare the marks in their entireties and, in so doing, look to their
appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1692. “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) (quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751. Although we place the marks
alongside each other in the following paragraph for purposes of this decision,
consumers may not have the luxury of viewing the marks in such a manner.
Serial No. 88234940
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Here, upon evaluating the mark and
the registered mark, we agree with the Examining Attorney that the
dominant feature of each mark is the term “TERRA.” Because this term appears first
in each mark, it is most likely to be impressed in purchasers’ memories. Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”). Moreover, for source-identifying purposes, consumers
will likely focus on the “TERRA” element in the marks in view of the fact that the
additional literal portions thereof, namely “TURF” and “LANDSCAPE” are, at best,
highly descriptive of the recited services and thus disclaimed. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In
re Nat’l Data, 224 USPQ at 752 (“Regarding descriptive terms, this court has noted
that the descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”).
The word “TERRA” in the registered mark similarly has more source-identifying
significance than the “two suns” design in the cited mark. It is settled that where, as
Serial No. 88234940
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here, marks comprise both words and a design, the words are normally accorded
greater weight, in part because consumers are likely to remember and use the word(s)
to request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed.
Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant
portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises both a word and a design, then the word
is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”).
As a result, while there are obvious differences between Applicant’s mark and the
registered mark, viewed as a whole, they are more similar than dissimilar in
appearance and sound. In this case, the two suns design evokes nature and the
outdoors and thus reinforces the wording TERRA LANDSCAPE. We thus disagree
with Applicant’s contention that the design in the cited mark may be considered its
dominant portion. Similarly, the minor stylization of Applicant’s mark does not create
an impression that is separate from that of its wording.
With regard to meaning, “TURF” is defined, inter alia, as “a surface layer of earth
containing a dense growth of grass and its matted roots; sod; an artificial substitute
for such a grassy layer, as on a playing field;”8 and “LANDSCAPE” is defined as “a

8 March 18, 2019 first Office Action at 8-9. Definition retrieved from American Heritage
Dictionary of the English Language, 5th Ed. 2019, at ahdictionary.com.
Serial No. 88234940
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section or expanse of rural scenery, usually extensive, that can be seen from a single
viewpoint.”9 As discussed above, “TERRA” evokes earth or land. Applicant argues:
The term TURF as used in Applicant’s mark conveys the impression of
a layer of grass and also cleverly suggests “territory” in the context of
Applicant’s services for artificial sport fields, i.e. a team’s territory. …
In contrast, the additional term “LANDSCAPE” and design of two suns
as used with Registrant’s synthetic lawns, landscape and gardening
services clearly conveys the idea of natural scenery, and maintaining the
appearance of such trees, plants and lawns.10

However, it is not clear on this record to what extent, if any, consumers will perceive
the meanings Applicant assigns to the marks at issue. Further, there is no evidence
that consumers would perceive “TERRA” as possessing a different meaning in
Applicant’s mark than in the registered mark. Based upon the dictionary definitions
and other evidence of record, it appears that Applicant’s mark conveys a meaning of
a layer of grass on the earth or land, and the registered mark conveys a meaning of a
section or expanse of scenery of earth or land. Neither the stylization of Applicant’s
mark nor the two suns design in the registered mark creates a separate, additional
meaning.
In sum, we view the marks in their entireties and find them to be more similar
than dissimilar in appearance, sound and meaning and, overall, to convey similar
commercial impressions. The fact that each mark is dominated by the same term
“TERRA” outweighs the points of dissimilarity. Nat’l Data, 224 USPQ at 751. Thus,
this du Pont factor weighs in favor of finding a likelihood of confusion.

9 Applicant’s April 18, 2019 Response to Office Action at 10. Definition retrieved from
dictionary.com.
10 4 TTABVUE 10-11.
Serial No. 88234940
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3. Similarity of the Services and Trade Channels
We turn now to the du Pont factors involving the relatedness of Applicant’s
services and the services identified by the registered mark, as well as the trade
channels in which they are encountered. It is settled that in making our
determination, we must look to the services as identified in the application vis-à-vis
those recited in the cited registration. Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013) (quoting In re La
Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008)); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). We are mindful that the test is not whether
consumers would be likely to confuse the services, but rather whether they likely
would be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB
2012).
Applicant argues:
While the Examining Attorney based the refusal on Class 037
specifically the installation of “synthetic lawns,” Applicant’s services are
narrowly listed to clarify its market for sport fields, soccer and football
fields for example, and are not related to the lawn care, landscaping and
gardening services of Registrant for maintaining, the appearance and
pruning and fertilizing of trees, plants and shrubs such as in a garden,
yard or park. Applicant’s consumers are sporting facilities, specifically
for the actual field of play, and Applicant’s services for artificial sport
fields serve a functional purpose for a niche market, for sport fields to
withstand team games. Whereas Registrant’s consumers are distinct as
its services are primarily intended for aesthetic purposes, for the
appearance of nature and surrounding scenery. Thus, the respective
services are not related and are not marketed to the same consumers,
Serial No. 88234940
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nor provided through the same trade channels such that consumers will
not be confused as to the source of services.11

However, it is not necessary that the respective services 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 services are related in some manner, or
that the conditions and activities surrounding the marketing of the services 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 belie f that
they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991).
Evidence of record submitted by the Examining Attorney confirms the relatedness
of the services. The Examining Attorney submitted pages from ten third-party
websites for entities providing services under the same marks, trade names or
company names that include Applicant’s “installation, maintenance and repair of
artificial sports fields” and services including “installation of synthetic lawns;
construction consultation services relating to landscape renovation and minimizing
the impact on lawns, plants and trees; repair and maintenance of irrigation systems”
identified in the cited registration.12
xgrass.com provides XGRASS brand installation services for XGRASS turf
synthetic lawns, as well as installation of synthetic sport fields.

syntheticturfnorthwest.com provides installation services for synthetic turf for
sport fields and synthetic lawns under the SYNTHETIC TURF NORTHWEST
mark.

11 4 TTABVUE 13-14.
12 May 10, 2019 final Office Action at 8-65; 103-121.
Serial No. 88234940
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academysportsturf.com provides installation of synthetic sport fields as well as
residential artificial lawns under the ACADEMY SPORTS TURF mark.

progreen.com provides installation of athletic field turf as well as residential
artificial lawns under the PRO GREEN SYNTHETIC TURF SYSTEMS mark.

gtrturf.com provides installation and maintenance of synthetic sport fields as
well as residential and commercial synthetic turf under the GTR TURF mark.

betterthanrealgrass.com provides installation of artificial lawns as well as
artificial sport fields under the BETTER THAN REAL ARTIFICIAL GRASS
mark.

pacificgrassandturf.com provides installation of artificial lawns for, inter alia,
residential applications as well as artificial sport fields under the PACIFIC
GRASS & TURF mark.

turfprep.com provides installation and maintenance of synthetic lawns as well
as artificial sport fields under the TURF PREP mark.

turfix.com provides maintenance and installation of artificial sport fields and
turf lawns under the TURFIX mark.

alwaysgreensyntheticgrass.com provides artificial grass installation for
residential as well as sport applications under the ALWAYS GREEN mark.

This evidence clearly demonstrates that numerous entities provide both Applicant’s
type of services and Registrant’s type of services as well as related services under the
same marks or names, and is probative of the relatedness of these services for
likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-
69, 1271-72 (TTAB 2009).
The Examining Attorney also submitted printouts of fourteen use-based, third-
party registrations that include services of the type identified in the involved
Serial No. 88234940
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application and cited registration.13 These services include installation, maintenance
and repair of artificial and synthetic turf, and synthetic grass lawns. As a general
proposition, although use-based, third-party registrations alone are not evidence that
the marks shown therein are in use or that the public is familiar with them, they
nonetheless may have some probative value to the extent they may serve to suggest
that the goods and services at issue are of a kind that emanate from a single source.
See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Infinity Broad. Corp.,
60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); see also Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company
sells the goods and services of both parties, if presented, is relevant to the relatedness
analysis”).
In this case, we recognize that consumers are able to distinguish Applicant’s
services from the services in the cited registration; however, that is not the standard.
See, e.g., Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (CCPA
1975) (“the confusion found to be likely is not as to the products but as to their source”)
(citation omitted); In re Anderson, 101 USPQ2d at 1919.
We are not persuaded by Applicant’s argument that its services and the services
identified by the registered mark are marketed to different consumers through
different trade channels. Because there are no limitations as to channels of trade or
classes of purchasers in the recitation of services in the involved application or the

13 May 10, 2019 final Office Action at 66-102.
Serial No. 88234940
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cited registration, we must presume that the identified services move in all channels
of trade normal for such services and are available to all potential classes of ordinary
consumers thereof. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In this case, Applicant’s services may include the installation, maintenance and
repair of artificial sports fields such as tennis courts or practice golf fairways and
greens for private or residential use. Similarly, the services in the cited registration
are not limited to residential applications and may include synthetic lawns and
landscape renovation in and around sports fields. As noted above, we may not limit
the scope of services in the subject application or in the cited registration by resort to
arguments or extrinsic evidence. It is the identifications of services that controls, not
what extrinsic evidence may show about the specific nature of the services as
provided in the marketplace. Stone Lion, 110 USPQ2d at 1162; Midwest Gaming, 106
USPQ2d at 1165; In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB
1986). As noted above, the Examining Attorney has introduced evidence that the
services offered under the involved mark and cited mark are offered for sale on the
same webpages of third parties. This evidence supports a finding that these services
are offered in at least one common channel of trade, that is, commercial landscaping
websites and, where applicable, physical locations of these third parties, often under
the same marks, company names or trade names.
Serial No. 88234940
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Based upon the foregoing, we find that Applicant’s services are related to the
services identified in the cited registration and that such services may be encountered
in the same channels of trade by the same classes of consumers. The second and third
du Pont factors weigh in favor of finding a likelihood of confusion.
4. Consumer Sophistication
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567.
Applicant asserts that
Applicant’s consumers are sophisticated commercial purchasers in the
sporting industry with knowledge about sport fields and the complex
installation for large fields. Such professional buyers are less likely to
be confused than the average consumer.

Moreover, Applicant’s services are expensive due to the nature of
installing large and complex artificial sport fields for commercial buyers.
Thus, the expensive nature of Applicant’s services would require
consideration before purchase.14

However, and as noted above, both Applicant’s services and the services identified
in the cited registration may be available to professional purchasers as well as
residential purchasers who may not exercise as great a degree of care . In fact, the
standard of care is that of the least sophisticated potential purchaser. Stone Lion,
110 USPQ2d at 1163 (cited in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB
2018) (“Board precedent requires our decision to be based on the least sophisticated
potential purchasers.”)).

14 4 TTABVUE 14.
Serial No. 88234940
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In the absence of any evidence relating to the degree of care purchasers exercise,
the similarity of the marks and relatedness of the services outweigh Applicant’s
assertion that purchasers are sophisticated or careful in their purchases. See HRL
Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss
Assocs., Inc. v. HRL Assocs., 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). Moreover, were we to accorda level of
sophistication to the purchasers of the services at issue given their nature and
presumed expense (of which there is little evidence in the record), even sophisticated
purchasers are not immune from source confusion. See In re Research Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. 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.”)).
The fourth du Pont factor slightly favors a finding of no likelihood of confusion.
5. Summary
The Examining Attorney has shown that Applicant’s services and Registrant’s
services are related and may emanate from a common source. The evidence of third-
party use discussed above demonstrates that the services are not only
complementary, but will be offered to the same class of consumers, and will be
encountered in at least one common trade channel, namely, the websites and
corresponding physical locations of entities providing both services. Because the
marks are similar, the services are related, and target the same consumers in at least
Serial No. 88234940
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one common trade channel, any consumer sophistication is unlikely to prevent
consumers from experiencing confusion. We find as a result that Applicant’s mark, if
used in association with the services identified in the application, is likely to cause
confusion with the registered mark in connection with the services recited in the
registration.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.