SMG Brands, Inc.

Trademark Trial and Appeal Board

Feb 8, 2011

No. 77672183 (T.T.A.B. Feb. 8, 2011)

Mailed: February 8, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SMG Brands, Inc.
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Serial No. 77672183
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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
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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
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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
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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
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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.