Fusion 360, Inc.

Trademark Trial and Appeal Board

Apr 4, 2014

No. 85582732 (T.T.A.B. Apr. 4, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fusion 360, Inc.
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Serial No. 85582732
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Bret E. Field of Bozicevic Field & Francis LLP for Fusion 360, Inc.

Robert Clark, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman,
Managing Attorney).
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Before Kuhlke, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Fusion 360, Inc., filed an application to register on the Principal
Register the standard character mark SOIL PRIME for goods ultimately identified
as “Chemicals for use in agriculture and industry, namely, microbial nutrient
compositions, bioremediation compositions, mineral fertilizing preparations, and
plant nutrient compositions; inoculum blends of naturally occurring
microoraganisms [sic] for use in agriculture and industry,” in International Class
Serial No. 85582732

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1.1 In response to a request from the examining attorney, applicant disclaimed the
word SOIL.
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with the
identified goods, so resembles the standard character mark SOIL PRIMER
registered on the Supplemental Register for “non-chemical fertilizers; soil
amendments” in International Class 1,2 as to be likely to cause confusion, mistake
or deception.
When the refusal was made final, applicant appealed and filed a request for
reconsideration. On August 8, 2013, the examining attorney denied the request for
reconsideration. The appeal was resumed and briefs have been filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out 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 (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 (CCPA 1976). Marks on the
Supplemental Register are afforded protection under Section 2(d). In re Clorox Co.,
578 F.2d 305, 198 USPQ 337 (CCPA 1978).

1 Application Serial No. 85582732, filed on March 28, 2012, based on an allegation of a bona
fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).

2 Registration No. 3759505, issued on March 9, 2010.
Serial No. 85582732

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We first consider the marks SOIL PRIME and SOIL PRIMER and compare
them “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, 1691 (Fed. Cir. 2005) quoting du Pont, 177
USPQ at 567.
Applicant boldly argues that its mark “SOIL PRIME differs significantly in
meaning, sound, appearance, and commercial impression from the mark SOIL
PRIMER.”3 In fact, applicant’s mark SOIL PRIME and registrant’s mark SOIL
PRIMER are nearly identical in sound, appearance and commercial impression,
beginning with the same word SOIL and differing only in the addition of the “R” to
registrant’s mark. Palm Bay, 73 USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak
Prods., 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”).
Applicant’s reliance on In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998)
(DIGIRAD for apparatus for medical isotopic tracing and medical nuclear imaging
not confusingly similar to DIGIRAY for digital x-ray system) is misplaced. In that
case, the Board found the one letter difference created different connotations
particularly in the context of the goods, RAD connoting a unit of measure of
radiation and RAY connoting x-ray. More significantly, the Board found that the
differences in the goods, the sophistication of the purchasers and the care with

3 App. Br. p. 2.
Serial No. 85582732

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which he products are purchased “mitigate[d] against a finding that the goods of the
parties are related.” Digirad, 45 USPQ2d at 1844.
Here the addition of the “R” to registrant’s mark does not remove the shared
connotation with applicant’s mark. We must consider the marks in the context of
the goods, in this case, non-chemical fertilizers, soil amendments, chemicals for use
in agriculture and industry, and inoculum blends of naturally occurring
microorganisms. In this context, the most relevant meaning of the words PRIME
and PRIMER is to prime soil. PRIME is defined as “to make (something) ready for
use” and PRIMER is defined as “a device for priming” (“priming” is the present
participle of “prime”).4 As shown by the articles made of record, the word “prime” is
used to describe conditioning or preparing soil:5
The fertilizer quickly primes the soil with nutrients bentgrass needs.
(www.ehow.com);

First John “primes” the soil system by applying FOUNDATION as
early as possible in the plant’s life. (www.bmzbio.com).

Thus, applicant’s argument that the other meanings of “prime,” i.e., “of the
first importance,” serve to distinguish the marks is not persuasive. Clearly, “prime”
in the context of these goods has the same connotation as “primer,” i.e., to prime
soil. Moreover, even if the word “prime” in applicant’s mark was perceived as
meaning “of the first importance,” consumers could understand the mark to refer to

4 Merriam-Webster (www.merriam-webster.com). The Board may take judicial notice of
dictionary definitions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See
also University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

5 Final Office Action (January 22, 2013)
Serial No. 85582732

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the superior condition of soil after it is primed with applicant’s fertilizer. Finally,
while we acknowledge that registrant’s mark is weak, and is, in fact, registered on
the Supplemental Register, even marks on the Supplemental Register are afforded
protection, in particular, where the marks are nearly identical and the goods are
closely related. Clorox Co., 198 USPQ 337. See also King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We find the marks to be quite similar in meaning, sound, appearance and
overall commercial impression and, on balance, the similarities in the marks
outweigh their small difference, and this factor weighs in favor of likely confusion.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012).
We turn then to a consideration of the goods, channels of trade and classes of
purchasers. We must make our determinations under these factors based on the
goods as they are identified in the registration and application. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Stone Lion Capital Partners, LP v. Lion Capital LLP, ___ F.3d ___, ___ USPQ2d ___
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled
that it is not necessary that the respective goods be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to the source of the
Serial No. 85582732

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goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be
sufficiently related that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate from, are sponsored or
authorized by, or are otherwise connected to the same source. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In
re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Contrary to applicant’s contention that chemical fertilizers and non-chemical
fertilizers are “substantially different,” we find the goods to be, at minimum, closely
related. As stated by the examining attorney the “goods are both used to promote
the growth of agricultural crops and would be encountered in the same channels of
trade by the same purchasers.”6 In support of his position, the examining attorney
submitted several third-party registrations “that cover chemical fertilizers and soil
amendments, and fertilizers and mineral fertilizing preparations, and fertilizers
and plant nutrient compositions.”7 See, e.g., Reg. No. 3244179 for the mark LILLY
MILLER for “chemical … fertilizer” and “organic … fertilizer”; Reg. No. 3876725 for
the mark HOME GROWN for “chemical fertilizer” and “non-chemical fertilizer”; and
Reg. No. 4091991 for the mark EDUECE for “chemical fertilizers” and “soil
amendments.”8 We find these registrations persuasive evidence that the goods are

6 Ex. Att. Br. p. 12.

7 Id. We have not considered the third-party registrations based on Sections 44 or 66 rather
than use in commerce. Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d
1213, 1221 n. 15 (TTAB 2011); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583
(TTAB 2007).

8 Office Action (July 9, 2012); Office Action (January 22, 2013).
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of a kind that may emanate from a single source under a single mark. In re
Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993). In addition, the examining attorney included
print-outs from a third-party website offering for sale both chemical and non-
chemical fertilizers and online articles discussing the use of chemical and non-
chemical fertilizers and soil amendments. For example:
Scotts Miracle-Gro Organic Choice Garden Soil … Natural fertilizer
provides both quick and slow release nitrogen feeding … Super Turf
Builder Winterguard … Contains more essential nutrients than
regular Scotts Turf Builder with Winterguard9

In general it may be said that chemical and mineral fertilizers are
more readily available for immediate use by plants, while organic
materials (which must undergo more involved decomposition before
they can be absorbed) are slower in action and last longer in the soil.
(www.improve-you-garden-soil.com); 10 and

There are two broad categories of soil amendments: organic and
inorganic. Organic amendments come from something that was alive.
Inorganic amendments, on the other hand, are either mined or man-
made. (www.ext.colostate.edu).11

With regard to applicant’s argument that the goods are not related because
registrant’s goods are limited to non-chemical fertilizers and soil amendments and
applicant’s goods are chemicals or microorganisms, we first note that the
identification of “soil amendments” in the registration is separated by a semi-colon
from its “non-chemical fertilizers.” Therefore, the “soil amendments” are not
restricted by the wording “non-chemical.” In re Midwest Gaming & Entertainment

9 Denial Req. for Recon. (August 8, 2013).

10 First Office Action (July 9, 2012).

11 Denial Req. for Recon. (August 8, 2013).
Serial No. 85582732

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LLC, 106 USPQ2d 1163, 1166 (TTAB 2013); Trademark Manual of Examining
Procedure (TMEP) § 1402.01(a) (October 2013). Moreover, we must confine our
analysis to the identification of goods in the registration and we may not limit it by
extrinsic evidence of registrant’s actual use. In re Thor Tech Inc., 90 USPQ2d 1634,
1637 (TTAB 2009); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986). Thus, the registration of “soil amendments” includes both chemical and non-
chemical soil amendments. Second, as discussed above, the record clearly
establishes the close relationship of chemical and non-chemical fertilizers, in their
common purpose to fertilize, enhance and prime soil, and in their common
marketing emanating from the same source under the same mark.
Considering the channels of trade and classes of purchasers, because the
goods are closely related and there are no limitations as to channels of trade or
classes of purchasers in the cited registration, i.e., it includes applicant’s “use in
agriculture and industry,” we must presume that applicant’s and registrant’s goods
will be sold in the same channels of trade and will be bought by the same classes of
purchasers. Viterra Inc., 101 USPQ2d at 1908. See also Stone Lion Capital
Partners, ___ USPQ2d ___; Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d
1001; Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
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With regard to the conditions of sale, again, because we are bound by the
description of goods in the application and registration and because the descriptions
of goods are not restricted as to price, the goods at issue must include inexpensive
as well as more expensive goods and all channels of trade and classes of consumers.
The standard of care for our analysis is that of the least sophisticated purchaser.
Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). Even if we
consider the phrase “for use in agriculture and industry” to restrict the class of
purchasers to commercial farming, i.e., to exclude the general public, these goods do
not rise to the level of very expensive and/or complex technical equipment that
would obviate likely confusion. See Digirad Corp., 45 USPQ2d 1841. Moreover,
even if purchasers are sophisticated or knowledgeable in a particular field that does
not necessarily mean that they are sophisticated or knowledgeable in the field of
trademarks or immune from source confusion. Imagineering Inc. v. Van Klassens
Inc., 53 F.3d 1260, 1265, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995). Thus, despite the
possibility that the purchasers of these types of goods may exercise a certain
amount of care to ensure they are purchasing what they require, we find this factor
to be neutral.
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The application was filed under Section 1(b) of the
Trademark Act, based on an intention to use the mark in commerce, and there is no
evidence that applicant has actually used its mark. Thus, based on this record,
there has been no opportunity for confusion to occur. See Cunningham v. Laser Golf
Serial No. 85582732

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Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover, the lack of
evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte
context. See also Majestic Distilling Co., Inc., 65 USPQ2d at 1205 (“uncorroborated
statements of no known instances of actual confusion are of little evidentiary
value”); In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)
(stating that self-serving testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not conclusive that actual
confusion did not exist or that there was no likelihood of confusion). Accordingly,
the du Pont factor of the length of time during and conditions under which there
has been contemporaneous use without evidence of actual confusion is neutral.
Applicant also argues that registrant’s mark “does not appear to be a famous
mark” and that it is not “used on a variety of goods.”12 However, neither of these
factors is required in order to find likely confusion based on these facts where the
marks and goods are very similar.
In conclusion, because the marks are highly similar, the goods are closely
related, and the channels of trade and consumers are the same, confusion is likely
between applicant’s mark SOIL PRIME and the mark SOIL PRIMER in the cited
registration.

12 App. Br. pp. 10-11.
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Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.