University of Georgia Research Foundation, Inc.

Trademark Trial and Appeal Board

May 24, 2012

No. 77781694 (T.T.A.B. May. 24, 2012)

Mailed:
May 24, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re University of Georgia Research Foundation, Inc.
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Serial No. 77781694
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Todd Deveau and Charles S. Murray, Jr. of Thomas Kayden
Horstemeyer & Risley LLP for University of Georgia
Research Foundation, Inc.

Kevin M. Dinallo, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Cataldo and Ritchie, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
University of Georgia Research Foundation, Inc.
(hereinafter “applicant” or “UGARF”) seeks registration on
the Principal Register of the mark TIF (in standard
character format) for “turfgrass” in International Class
31.1

1 Application Serial No. 77781694 was filed on July 15,
2009, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77781694
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The Trademark Examining Attorney issued a final
refusal to register this designation based upon Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The
Trademark Examining Attorney has taken the position that
applicant’s mark, when used in connection with the
identified goods, so resembles the following mark:

registered for goods identified as “grass seed” also in
International Class 31,2 as to be likely to cause
confusion, to cause mistake or to deceive.
After the Trademark Examining Attorney made the
refusal final, applicant appealed to this Board.
Applicant and the Trademark Examining Attorney have fully
briefed the issues in this appeal.
We reverse the refusal to register.
Preliminary Matters
The Trademark Examining Attorney objected to the
evidence submitted with applicant’s appeal brief as untimely,

2 Registration No. 3430352 issued on May 20, 2008.

Serial No. 77781694
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namely “internet evidence comprising pages of registrant’s
website as well as an unrelated registration owned by
applicant for a different mark.” In its reply brief,
applicant has agreed to withdraw from the record Exhibit 2 (a
copy of registrant’s web page) and Exhibit 3 (a copy of
registrant’s brochure). Inasmuch as Exhibit 1 (Plant
Variety Certificate No. 96600255, showing that TifBlair is a
varietal name) had been previously submitted with
applicant’s request to the Trademark Examining Attorney
for reconsideration, the sole outstanding piece of
evidence under contention is Exhibit 4 – a copy from the
United States Patent and Trademark Office electronic record
of Registration No. 3923735, the TifGrand registration.
Applicant argues that inasmuch as applicant filed its
request for reconsideration and notice of appeal on January
9, 2011, and this relevant registration did not issue until
February 22, 2011, a date after the Trademark Examining
Attorney had denied applicant’s request for
reconsideration, evidence of this registration certificate
should not be considered to be untimely under 37 C.F.R.
§ 2.142(d).
We agree with applicant that this represents a case
where the circumstances warrant our consideration of this
Serial No. 77781694
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evidence. See In re Volvo White Truck Corp., 16 USPQ2d
1417, 1419 n.4 (TTAB 1990) (permitting appellant to submit
settlement agreement executed after filing of appeal because
of unusual circumstances). Hence, the TifGrand registration
is not evidence that applicant could have submitted
earlier, and so we will consider it to be part of the
evidentiary record in spite of the fact that it not
submitted until the filing of applicant’s appeal brief.
Substantive positions of applicant and the Trademark Examining Attorney
Applicant argues that inasmuch as the term TifBlair is a
varietal or cultivar name, and hence is the generic name
of the plant or seed by which such a variety is known to
the public, the Trademark Examining Attorney has erred by
stating that TifBlair is the dominant portion of the cited
mark, and then proceeds to violate the anti-dissection rule
by comparing only the term TifBlair of the cited mark to
applicant’s mark TIF, ignoring that the cited mark is a
composite mark that actually consists of TifBlair, the term
“The Certified Centipede” and a prominent design feature.
Finally, applicant argues that the United States Patent
and Trademark Office’s recent issuance of the TifGrand
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registration to applicant3 further undermines the Trademark
Examining Attorney’s position herein.
By contrast, the Trademark Examining Attorney takes
the position that inasmuch as the term TifBlair is presented
in the cited mark in large, bold, black lettering, that
would clearly be perceived by consumers as the dominant
portion of the mark. The Trademark Examining Attorney
charges that applicant’s focus on the fact that TifBlair is a
generic term for the registered goods actually amounts to
a collateral attack on the registered mark.
In its reply brief, applicant clarifies that it is
not attacking the registered mark, but merely protesting
the Trademark Examining Attorney’s alleged legal error in
attributing trademark significance to a generic term
within registrant’s composite.
Likelihood of confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on this issue. See In re E. I. du Pont

3 Registration No. 3923735 for turfgrass issued on February
22, 2011.
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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); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, however,
two key, although not exclusive, considerations are the
similarities between the marks and the relationship
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
Inasmuch as applicant does not contest the close
relationship of the involved goods, this decision turns
primarily on the similarities and dissimilarities of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
As noted above, it is the position of the Trademark
Examining Attorney that inasmuch as the term TifBlair is the
first term in the composite, and is presented in large,
bold, black lettering, that TifBlair is the dominant portion
of the mark. We disagree with the Trademark Examining
Attorney on this point.
Serial No. 77781694
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On the face of these two marks,
we find the overall dissimilarities
to be fairly significant. The cited TIF
mark is a multi-component, composite mark consisting of the
terms TifBlair in stylized black letters superimposed on the
image of a blue and white mountain range, above the term
“The Certified Centipede,” where the colors are claimed as
a feature of the mark. Applicant’s mark is simply TIF.
Our finding that the overall dissimilarities of the
marks favor a finding of no likelihood of confusion under
this du Pont factor is further strengthened by the fact
that the term TifBlair is shown by the record to be a
varietal name. Applicant argues that there is not a
likelihood of confusion herein when the only similarity
between applicant’s mark [TIF] and a portion of the cited
mark [TifBlair] happens to be a generic term. When comparing
the marks, the Trademark Examining Attorney essentially
ignores applicant’s contention that the term TifBlair cannot
be the dominant feature of the cited mark.
We observe that there is no evidence of record
regarding the extent to which consumers are actually aware
of the generic nature of TifBlair. Nonetheless, that a
particular feature is generic with respect to the goods is
Serial No. 77781694
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a commonly-accepted rationale for giving less weight to a
portion of the mark than an inherently distinctive or even
suggestive term. In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985); and Jack Poust & Co.,
Inc. v. John Gross & Co., 460 F.2d 1076, 174 USPQ 149
(CCPA 1972) (CHERRY JUBILEE does not so resemble CHERRY
JULEP as applied to wine because the word “Cherry” is the
name of the flavor).
Accordingly, while the relationship of the respective
goods weighs in favor of a likelihood of confusion, we
find that factor is more than overcome by the overall
differences in the respective marks.
Applicant argues that the Office’s recent issuance to
applicant of TifGrand for “turfgrass” (which registration we
have considered) undermines the Trademark Examining
Attorney’s position herein. We do not necessarily find that
to be true. Rather, this is yet another example of the
canard that each case must be decided on its own merits. If
it were necessary to distinguish the cases, arguably the
involved TIF mark is closer to the cited mark than is TifGrand.
Finally, we note that in its earlier arguments during
prosecution of this application, applicant argued that
registrant, The Turfgrass Group, Inc. (TTG), is an
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exclusive licensee of UGARF. Although applicant argued
that consistent with UGARF’s certification program, the
term TifBlair has been exclusively licensed to TTG (and its
sublicenses) for sod production, and that TifBlair is grown,
inspected and sold under a rigorous set of rules and
guidelines to insure ongoing purity and uniformity, we
note that evidence corroborating this argument was not
properly made of record. Additionally, while the
Trademark Examining Attorney’s brief refers back to the
final Office action where the Office rejected applicant’s
“unity of control” argument, applicant has seemingly
dropped this line of argument. On yet the other hand, we
observe that a simple consent agreement to applicant from
its licensee would have avoided the need for an appeal and
would have been especially prudent for applicant.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby reversed.