SMG Brands, Inc.Download PDFTrademark Trial and Appeal BoardFeb 8, 2011No. 77672183 (T.T.A.B. Feb. 8, 2011) Copy Citation Mailed: February 8, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SMG Brands, Inc. ________ Serial No. 77672183 _______ Susan E. Hollander of Mannatt Phelps & Phillips LLP, for SMG Brands, Inc. Andrea P. Butler, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Seeherman, Mermelstein, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: SMG Brands, Inc. (“applicant”) filed an application to register the mark PLANTTRUST, in standard character form, for goods identified as “preparations for controlling or destroying vermin, weeds or pests, namely, pesticides; insecticides; fungicides; herbicides; rodenticides; miticides for domestic and agricultural use; parasiticides; pesticides mixed with fertilizers; herbicides mixed with fertilizers; turf algaecide, turf fungicide, and turf pesticide; animal repellents, insect THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77672183 2 repellents, insect repellents in topical form; plant protection preparations used to protect plants against diseases and pests.”1 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark TRUST,2 in typed drawing format, for “herbicides for agricultural use,” that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs, and applicant filed a reply brief. For the reasons discussed herein, the Board affirms the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re 1 Serial No. 77672183, in International Class 5, filed February 17, 2009, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce. We note that applicant’s reply brief requested “in the alternative” a remand for applicant to amend its identification of goods. Applicant’s request should have been filed as a separate document, not buried “in the alternative” in its reply brief. See In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001). In any event, we do not find “good cause” for remand, and the request is denied. 37 CFR § 2.142(d); TBMP § 1207.02 (4th ed. 2004). 2 Registration No. 2321694, in International Class 5, issued February 22, 2000, based on first use and first use in commerce on February 18, 1987. Serial No. 77672183 3 Majestic Distilling Company, 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 or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). The Goods and Channels of Trade The items in the application are identical-in-part to those in the cited registration. Specifically, the “herbicides for agricultural use” identified in the cited registration are a subset of “herbicides” identified in the application. Accordingly, we find these goods to be overlapping and legally identical.3 The fact that some of applicant’s goods are identical to registrant’s goods is sufficient to support a finding of likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 3 The examining attorney also introduced evidence regarding the relatedness of the remaining goods identified in the application to the “herbicides for agricultural use” identified in the cited registration. Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). Serial No. 77672183 4 1981). Furthermore, there is nothing that prevents applicant from selling its “herbicides” and various other products (“fungicides;” “pesticides;” “parasiticides”) specifically “for agricultural use” as so designated in the cited registration (as well as in the application for the “miticides for domestic and agricultural use”). Accordingly, these may appear in the same stores, and indeed on the same shelves, as registrant’s products, and may be sold to the same customers. This is particularly true where, as here, the goods are in-part identical. Accordingly, we find that these du Pont factors weigh heavily in favor of finding a likelihood of confusion. The Marks Preliminarily, we note that the more similar the goods at issue, the less similar the marks need to be for the Board to find a likelihood of confusion. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side- by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial Serial No. 77672183 5 impression so that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer for the goods at issue, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the cited registration consists solely of the word TRUST, in typed format. This connotes a brand that consumers can “trust” for their “herbicides for agricultural use.” We find the mark, however, to be at most suggestive, and to be (notwithstanding applicant’s arguments to the contrary), inherently distinctive – a presumption to which it is entitled as a mark registered without a Section 2(f) claim on the Principal Register. Applicant’s mark incorporates the word TRUST in full, adding, in front of it, the word PLANT. This word describes the purpose of the goods, namely, that they are for use on plants. Accordingly, although applicant’s mark is a single word mark, it is not inappropriate for us to place emphasis on a particular term or syllable that appears to dominate – in this case “TRUST.” In re National Data Corp., 224 USPQ 749, 751 (Fed. Serial No. 77672183 6 Cir. 1985) (“[T]here 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 consideration of the marks in their entireties.”). Accordingly, applicant’s mark also connotes “trust” with “plants,” and we find that the marks have a similar connotation and commercial impression. As for the sight and sound, although applicant’s mark contains an additional, compound word “PLANT,” our precedent has found that adding a word to a mark does not necessarily obviate likelihood of confusion. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Cola-Cola Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707(TTAB 1985) (“CAREER IMAGE” AND “CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”). Applicant argues that there have been a number of instances where registrations have been granted to different entities for marks consisting of a particular word (such as MASTER) and marks consisting of that same word with the word “PLANT” in front (such as PLANTMASTER), for similar goods. Applicant offered a half-dozen examples of this pairing (including also TERRA and PLANTERRA; PLUS and PLANT PLUS; BEST and PLANT BEST; TRUE and TRUPLANT). Applicant also referred to the case Plus Products v. Serial No. 77672183 7 Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983) (PLUS and MEAT PLUS) for the same concept. We are aware, of course, that varying results can be reached depending on varying goods and varying marks. The evidence submitted by applicant does not show an established practice regarding the addition of a word, nor more specifically the addition of the word “PLANT,” and the Board is not bound by those decisions or those records. As the Federal Circuit instructs, every case must be decided on its own merits. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Finally, applicant argues that the cited registration is weak. In support of this argument, applicant cites a handful of third-party registrations that contain the term “TRUST” in class 54 (and a number in other classes), as evidence that consumers will distinguish its mark from that in the cited registration. Third-party registrations may be used to show that a term has been commonly registered for its suggestive meaning. However, even weak marks are entitled to protection against registration of a similar mark for in-part identical goods. See Giant Food Inc. v. Rosso and Mastracco, Inc., 218 USPQ 521 (TTAB 1982). In sum, we find the similarities of the marks to outweigh their dissimilarities, and this du Pont factor to also favor finding a likelihood of confusion. 4 including a prior, now cancelled, registration, for PLANTTRUST. Serial No. 77672183 8 Consumer Sophistication Applicant urges us to consider consumer sophistication. In this regard, as with the other du Pont factors, we are bound by the parties’ respective identifications of goods. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” [citations omitted]). We have no doubt that “insect repellents in topical form” and other goods included in the application could be sold to unsophisticated consumers. There is nothing in the record that would give us further insight as to whether “herbicides for agricultural use” may be as well. To the extent we accept that the latter may be marketed to more careful purchasers, with some advanced knowledge of pesticides, we note that with in-part identical goods and similar marks, even a careful, sophisticated consumer of these goods is not likely to note the differences in the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948- 949 (Fed. Cir. 2000). Furthermore, careful purchasers who do notice the difference in the marks will not ascribe it to Serial No. 77672183 9 differences in the source of the goods, but will see the marks as variations of each other, pointing to a single source. Accordingly, we deem this du Pont factor to be neutral. Conclusion In summary, we have carefully considered all of the evidence and arguments of record relevant to the pertinent du Pont likelihood of confusion factors. We conclude that with in- part identical goods, legally identical channels of trade, and similar marks with similar connotations, even with potentially sophisticated purchasers, there is a likelihood of confusion between applicant’s mark PLANTTRUST for the goods for which it seeks registration and the registered mark TRUST for the items identified therein. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation