Middleway Enterprises Ltd.

Trademark Trial and Appeal Board

May 6, 2003

No. 78062505 (T.T.A.B. May. 6, 2003)

Paper No. 11
JQ
Mailed: 5/6/03
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Middleway Enterprises Limited
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Serial No. 78/062,505
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Henry S. Kaplan of Feldman, Gale & Weber for applicant.
Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
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Before Quinn, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Middleway Enterprises
Limited to register the mark HYDROSOIL for “soil
conditioners for agricultural, domestic or horticultural
use.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
1 Application Serial No. 78/062,505, filed May 8, 2001, alleging
a bona fide intention to use the mark in commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78/062,505
2
ground that applicant’s mark, if applied to applicant’s
goods, would so resemble the previously registered mark
HYDRO-SOL for “fertilizers”2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Applicant essentially argues that the cited mark is
weak and entitled to a narrow scope of protection which
does not extend to applicant’s mark. Applicant goes on to
argue that its mark “creates an immediate, clear and vastly
different mental image from that of the cited reference and
the marks also differ in sound and appearance.” Applicant
specifically points to the differences between “the well
known and commonly understood meaning of the English word
‘soil’ as opposed to the equally well known meaning of the
English word ‘sol.’” Applicant further argues that
purchasers are sophisticated, asserting that “[t]here is
nothing casual about taking care of plants and flowers, the
money spent to do so and the care people take in regard to
their plants and flowers.” In support of its position,
applicant submitted printouts of six third-party
2 Registration No. 1,250,790, issued September 13, 1983; combined
Sections 8 and 15 affidavit filed.
Ser No. 78/062,505
3
registrations of SOL marks retrieved from the TESS
database,3 and dictionary definitions of the terms “sol” and
“soil.”4
The Examining Attorney maintains that the marks are
confusingly similar, and that the goods are related and
travel in the same channels of trade to the same
purchasers, not all of whom are sophisticated. In support
of the refusal, the Examining Attorney introduced third-
party registrations which show that a party has registered
a single mark for both fertilizers and soil conditioners.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
3 Applicant also submitted a listing (February 14, 2002 response)
of third-party HYDRO registrations, to which the Examining
Attorney objected, and a TESS printout (June 24, 2002 request for
reconsideration) of the summary of the search for SOL marks which
indicates that 438 records were found. In reaching our decision,
we have considered only the six third-party registrations for
which copies were furnished. Mere listings or search summaries
are not sufficient to make third-party registrations of record;
rather, copies of the registrations must be furnished to properly
make them of record. In re Classic Beverage, Inc., 6 USPQ2d
1383, 1386 (TTAB 1988).
4 Applicant did not submit the dictionary pages in support of the
definitions it has relied upon. Nonetheless, such evidence is
proper subject matter for judicial notice and, accordingly, we
have considered the dictionary definitions. University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594,
596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 78/062,505
4
confusion analysis, two key considerations are the
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We turn first to compare applicant’s “soil
conditioners for agricultural, domestic or horticultural
use” with registrant’s “fertilizers.” Applicant does not
specifically dispute that the goods are similar, and we
readily agree with the Examining Attorney that the goods
are closely related. Both are used to enhance soil for
growing purposes. The third-party registrations, submitted
by the Examining Attorney, which are based on use in
commerce and which individually cover both soil
conditioners and fertilizers, serve to suggest that the
listed goods are of a type which may emanate from a single
source. See: In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Given the close relationship between the goods, we
find that they would travel in the same channels of trade
to the same classes of purchasers. Although applicant
would have us conclude that the purchasers of soil
conditioners and fertilizers are sophisticated, we decline
to do so. The classes of purchasers would include
Ser No. 78/062,505
5
homeowners and other do-it-yourself gardeners who, in our
view, would exercise nothing more than ordinary care in
purchasing such goods.
Turning next to compare applicant’s mark HYDROSOIL
with registrant’s mark HYDRO-SOL, there are obvious
similarities between the marks. These similarities clearly
outweigh the differences pointed to by applicant. Although
there has been discussion between applicant and the
Examining Attorney regarding dominant portions of the
marks, we do not view either mark as having a dominant
portion. Rather, when both marks are considered in their
entireties, it is obvious that they are similarly
constructed; both begin with the identical term HYDRO, and
end in similar sounding and looking terms. When considered
in their entireties, the marks differ only by a hyphen and
the single letter “I.” In finding that the marks are
similar, we have kept in mind the fallibility of
purchasers’ memories, and that they normally retain a
general rather than a specific impression of trademarks
encountered in the marketplace.
We have considered the third-party SOL registrations
and the dictionary evidence which shows different meanings
for the terms “SOL” and “SOIL.” The six third-party
registrations are of limited probative value. The
Ser No. 78/062,505
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registrations do not establish that the marks shown therein
are in use, much less that consumers are so familiar with
them that they are able to distinguish among such marks by
focusing on slight differences between them. Smith Bros.
Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d
1004, 177 USPQ 462 (CCPA 1973). With respect to the
dictionary evidence, we acknowledge that the terms “sol”
and “soil” have different meanings. However, due to the
similarities between the marks in terms of overall sound
and appearance, this difference in meaning is outweighed by
the similarities.
We conclude that consumers familiar with registrant’s
fertilizers sold under the mark HYDRO-SOL would be likely
to mistakenly believe, if they were to encounter
applicant’s mark HYDROSOIL for soil conditioners, that the
goods originated with or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.