Ufarms, LLC

Trademark Trial and Appeal BoardJul 14, 2016

No. 86345473 (T.T.A.B. Jul. 14, 2016)

This Opinion is not a Precedent of the TTAB Mailed: July 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ufarms, LLC _____ Serial No. 86345473 _____ Sevag Demirjian of Demirjian Law Offices for Ufarms LLC. Sarah E. Kunkleman, Trademark Examining Attorney, Law Office 105, Susan Hayash, Managing Attorney. _____ Before Seeherman, Ritchie and Gorowitz, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: This is an appeal by Ufarms LLC, which is seeking registration on the Principal Register for URBANFARM in standard characters for services that were ultimately identified as “retail convenience store services based in California’s Downtown Urban areas featuring healthy food and beverages for local consumers.”1 The issue on appeal 1 Application Serial No. 86345473, filed July 23, 2014, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (intent-to-use). The application, as originally filed, was for “Retail Convenience Store offering Healthy food, beverage, household and other products,” and showed the mark as Urban Farm. Applicant amended the identification in order to overcome refusals raised by the Examining Attorney. Serial No. - 2 - is whether Applicant’s mark, if used for its identified services, is likely to cause confusion with the mark in Registration No. 4108037. That registration, which issued under the provisions of Section 2(f) on March 6, 2012, is for URBAN FARM STORE in standard characters, with FARM STORE disclaimed, for “retail store services featuring animal feeds, live chickens, farm-fresh food, garden supplies and related items.”2 We affirm the refusal to register. I. Preliminary Matters At page six of its appeal brief Applicant included an amendment to the identification in order to further distinguish its services from those of the cited registration. Applicant is advised that, after an appeal is filed, the proper procedure for submitting an amendment is to file a separate request for remand with the Board. See TBMP § 1205.01 (2016). When a proposed amendment is buried within a brief, as in the present case, the Board will not necessarily realize that an amendment is sought. However, because the Examining Attorney noted the amendment and the proposed identification was entered in the Office records, Applicant’s failure to follow the proper procedure has had no negative effect. 2 In addition to the refusal based on this registration, registration was also refused based on that same registrant’s registration, No. 3721571, for URBAN FARM STORE and design for similar services. However, subsequent to the briefing of the appeal, that registration was cancelled for failure to file a Section 8 affidavit of use. Registration was also refused pursuant to Section 2(e)(1), but that refusal was withdrawn in the final Office action, mailed April 30, 2015. Serial No. - 3 - Applicant also stated in its appeal brief that it “is also open to further suggestions from the Examiner for amendments to the application,” 10 TTABVUE 8, and stated in its reply brief that it “is open to further revisions of the class description to differentiate its services from that of Registrant and is also willing to contact Registrant to work out a concurrent use deal before the present application is cancelled.” 13 TTABVUE 7. Briefing is not the appropriate venue for a negotiation process with the Examining Attorney or the Board. Further, an application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer or upon order of the Director. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g). II. Applicable Law The only substantive refusal that remains is the refusal under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion in view of Registration No. 4108037 for URBAN FARM STORE. 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., 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 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). Serial No. - 4 - We turn first to a consideration of the marks. Applicant’s mark is URBANFARM, and the cited mark is URBAN FARM STORE. Both marks are in standard characters, which means that they can be displayed in any manner. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012). As a result, the marks cannot be distinguished on the basis that Applicant and Registrant may use different fonts. Applicant argues that the absence of a space in its mark helps to distinguish the marks. However, the mark would still be perceived by consumers to be made up of the two words, URBAN FARM. See In re Iolo Technologies LLC, 95 USPQ2d 1498, 1499 (TTAB 2010) (difference between applicant’s mark ACTIVECARE and registered mark ACTIVE CARE has no trademark significance, words retain the same meanings when joined as a compound); In re Carlson, 91 USPQ2d 1198, 1200 (TAB 2009) (compression of the words URBAN HOUSING into a single term, URBANHOUZING, still conveys the commercial impression of two words; consumers would recognize the mark as consisting of the separate elements URBAN and HOUZING). The registered mark also contains the word STORE, but since this word is generic for retail store services, it has no source-indicating significance and does not serve to distinguish the marks. Applicant also offers retail store services, and therefore the generic term STORE would be implied when people see Applicant’s mark URBANFARM for such services. Overall, therefore, the marks are virtually identical in appearance, sound, meaning and commercial impression. This du Pont factor strongly favors a finding of likelihood of confusion. Serial No. - 5 - We next turn to the second du Pont factor, the similarity of the goods or services, keeping in mind that when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant’s services are identified as “retail convenience store services based in California’s Downtown Urban areas featuring healthy food and beverages for local consumers.” The registrant’s services are identified as “retail store services featuring animal feeds, live chickens, farm-fresh food, garden supplies and related items.” The registrant’s identified retail store services featuring farm-fresh food would encompass the retail convenience store services featuring healthy food that are identified in Applicant’s identification. As shown by the definitions made of record by the Examining Attorney, a convenience store is a subset of a retail store.3 Further, the evidence submitted by the Examining Attorney shows that convenience stores feature food that would be considered farm- fresh food. For example, the Allen Bro’s “Mobil Gas and Convenience Store” advertises “Seasonal Items” such as vegetables, strawberries, local produce, apples and pumpkins.4 Papa’s Store, described as a “convenience store,” lists “Organic Fruits & Vegetables” as among the products it offers.5 Farm Stores, a “drive-thru store,” 3 See “The American Heritage Dictionary of the English Language,”5th ed. (2015): “convenience store”: “a small retail store that is open long hours and that typically sells staple groceries, snacks, and beverages.” November 20, 2015 Office action, p. 17. 4 Id., pp. 4-5. 5 April 30, 2015 Office action, p. 2. Serial No. - 6 - lists, inter alia, “milk, bread, eggs, fresh produce.”6 Swiss Farms, a drive-through grocery, features milk “STRAIGHT FROM LOCAL FARMS.”7 Therefore, some of the same types of items that are sold in the registrant’s stores could be sold in Applicant’s stores. We acknowledge that the registrant’s retail stores are different from Applicant’s retail stores in that the registrant’s identification is for stores that sell a number of items that would be used for animals or gardening, while Applicant’s identified services are for convenience stores that sell healthy food and beverages. In other words, the focus of Applicant’s retail store services are food and beverage items that can be eaten or drunk with little or no preparation, while farm-fresh food is the only food item for humans that is featured in the registrant’s stores.8 Nevertheless, a consumer who is familiar with the registrant’s URBAN FARM STORE which sells farm-fresh food who then encounters an URBANFARM convenience store selling healthy food and beverages is likely to believe that the registrant has opened a store specializing in the farm-fresh food products that are offered in its URBAN FARM STORE. This likelihood of this is increased by the fact that Applicant’s retail store services are restricted to “Downtown Urban areas”; consumers are likely to assume, 6 Id. at 4, 7 7 November 20, 2015 Office action, pp. 8-10. 8 In its reply brief Applicant argues that the Examining Attorney has taken “farm-fresh food” out of the context of the full description, making it seem more related to Applicant’s products. We disagree. The plain meaning of “farm-fresh food” is food for humans. Applicant has provided no evidence that food for animals is referred to as “farm-fresh food,” nor do we accept that, simply because other items sold through the registrant’s retail stores are animal feeds, live chickens and garden supplies, “farm-fresh food” should somehow have a meaning other than the obvious one. Serial No. - 7 - upon encountering an URBAN FARM STORE in a downtown urban area, that the registrant had limited its stock to farm-fresh food. With respect to the geographical restrictions in Applicant’s identification, Applicant has specified that its services are based in California’s downtown urban areas and its products are for local consumers.9 Applicant argues that its stores and the registrant’s stores are in separate geographic markets, with the registrant uses its mark exclusively in the Portland, Oregon area. Applicant asserts that this geographic separation prevents confusion. Applicant relies on Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 121 USPQ 430 (2d Cir. 1959) and Brennan’s Inc. v. Brennan’s Restaurant, L.L.C, 360 F.3d 125, 69 USPQ2d 1939 (2d Cir. 2004), and cites, in particular, what it describes as the “Dawn Donut Rule”: Therefore, if the use of the marks by the registrant and the unauthorized user are confined to geographically separate markets, with no likelihood that the registrant will expand his use into the defendant’s market, so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user’s use of the mark. Dawn Donut, 121 USPQ at 434. 9 In her brief the Examining Attorney contends that the language in Applicant’s identification, “retail convenience store services based in California’s Downtown Urban areas featuring healthy food and beverages for local consumers” does not restrict Applicant’s services to downtown urban areas in California, because “based” means only that Applicant is located in that area. The Examining Attorney asks us to take judicial notice of dictionary definitions for “based” and “base,” including “base”: “a center of organization, supply, or activity; a headquarters.” Although we take such notice, we are not persuaded by the Examining Attorney’s argument. A fair reading of the identification is that Applicant’s services are restricted to downtown urban areas in California, not that Applicant itself is based in downtown urban areas, and that its stores could be located throughout the United States. Serial No. - 8 - The problem with Applicant’s position is that these cases involved the registrant’s right to enjoin the defendant, not the defendant’s right to a registration. We agree that when it comes to granting an injunction, the court must consider the geographic reach of the parties’ marks. As the court said in Brennan, 69 USPQ2d at 1945, “Although registration presumptively creates nationwide protection, the Lanham Act only permits an injunction against a party where that party’s use of a similar mark is likely to cause confusion.” But we are not dealing here with whether the owner of the cited registration can enjoin Applicant’s use of its mark if Applicant and the registrant are operating in distinct geographic areas. Rather, we are considering whether Applicant is entitled to a registration for the mark URBANFARM for the services identified in its application. Dawn Donut recognizes that the Trademark Act affords nationwide protection to registered marks, regardless of the areas in which the registrant actually uses the mark. Id., 121 USPQ at 433. Applicant’s arguments are inconsistent with the principles set forth in the cases on which it relies, and with the presumptions granted by the Trademark Act, in particular, that the registrant has the exclusive right to use the mark in commerce. See Section 7(b), 15 U.S.C. § 1057(b). We find that, if Applicant were to be granted a registration with exclusive rights to use its mark in California’s downtown urban areas, it would conflict with the registrant’s right to use its mark throughout the United States. Serial No. - 9 - With respect to the third du Pont factor, Applicant argues that the channels of trade are different, contending that the consumers of Applicant’s retail store services are purchasers of health food in Los Angeles, and that the consumers of the registrant’s retail store services are purchasers of animal feed in Oregon. Applicant’s arguments rely on restrictions on both its and the registrant’s services that are not present in the respective identifications, and it is the identifications that we must consider in determining likelihood of confusion. “‘Likelihood of confusion must be determined based on an analysis of the mark as applied to the . . . services recited in applicant's application vis-a-vis the . . . services recited in [a] . . . registration, rather than what the evidence shows the . . . services to be.’” Canadian Imperial Bank v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987), quoted with approval in In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). The clientele for registrant’s services are not limited to purchasers of animal feed in Oregon. The registrant’s services are not restricted geographically, and therefore must be presumed to be offered everywhere in the country, including in California. Further, as previously noted, the goods sold through the registrant’s retail stores are not limited to animal feed, but also include farm- fresh food. Even if we were to assume that the stores that sell animal feed and live chickens are not located in the downtown urban areas specified in Applicant’s identification, there is no reason why customers who live and shop in downtown urban areas cannot also visit rural areas, or even have second homes in such areas, and purchase goods such as farm-fresh food or garden supplies. Serial No. - 10 - Accordingly, we find that Applicant’s identified services and those identified in the cited registration are related, and that their channels of trade overlap. In its reply brief Applicant makes the further argument that both its and the registrant’s marks are highly suggestive, as both indicate that the products may have come from farms to urban consumers. Therefore, Applicant asserts that the registrant’s mark should be given a narrow scope of protection. The cited registration issued pursuant to the provisions of Section 2(f), i.e., there was a finding that the mark has acquired distinctiveness. In any event, our precedent dictates that even “weak” marks are entitled to protection against the registration, as we have in this case, of a virtually identical mark for closely related services. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982). Although not specifically addressed by Applicant or the Examining Attorney, we note that the consumers of Applicant’s and the registrant’s services are the general public, who would not have any particular sophistication or expertise regarding these services. Further, by the very nature of what a convenience store is, the decision to shop in one may be made on impulse. Although Applicant’s retail convenience stores feature healthy food and beverages, this does not mean that all its customers will choose its services with care; members of the public who simply need something from a convenience store may also shop in Applicant’s establishments. Therefore, this du Pont factor favors a likelihood of confusion. Serial No. - 11 - To the extent that any other du Pont factors are relevant, we treat them as neutral. Having considered all of the evidence and arguments, we find that Applicant’s mark for its identified services is likely to cause confusion with the mark and services identified in the cited registration. Decision: The refusal to register Applicant’s mark URBANFARM is affirmed.