Viterra Inc.

Trademark Trial and Appeal Board

Jan 21, 2011

No. 77608885 (T.T.A.B. Jan. 21, 2011)

Mailed: 1/21/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Viterra Inc.
________

Serial No. 77608885
_______

Scott A. Duvall of Middleton Reutlinger for Viterra Inc.

James T. Griffin, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Viterra Inc. filed, on November 6, 2008, an intent-to-
use application to register the mark XCEED (in standard
characters) for “agricultural seed” (in International Class
31).
The trademark examining attorney refused registration
under Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark shown below
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77608885
2

for “agricultural seeds” (in International Class 31)1 as to
be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant asserts that the “key issue” presented in
this case is “whether an applicant’s mark in Standard
Characters format must be construed broadly to include the
depiction of a registered mark that appears in special
form, having both wording and a distinctive design, and
multiple color claims.” (Reply Brief, p. 3). Applicant
argues that the registered mark, with its dominant design
feature and color claims, must be narrowly construed in
comparing it with applicant’s mark. Thus, applicant
contends, “the scope of registration rights to be afforded
to the Cited Registration for purposes of likelihood of
confusion must also be exceedingly narrow.” (Brief, p. 5).
In comparing the marks, applicant asserts that they are

1 Registration No. 3339424, issued November 20, 2007. The word
“seed” is disclaimed. The registration includes the following
statements: “The mark consists of the stylized letter X and the
surrounding dots appear in red and the term ‘-SEED’ is black and
outlined in gray. The colors black, red and gray are claimed as
a feature of the mark.”
Ser No. 77608885
3
visually different, and that they are not phonetic
equivalents. Applicant also argues that the marks have
different connotations and commercial impressions. In
support of its position, applicant submitted a dictionary
listing of the word “exceed”; and listings of the letter
“X” in a dictionary and in Wikipedia.
The examining attorney maintains that the marks are
phonetic equivalents; that the literal elements of the
marks are very similar, differing by only one letter and a
hyphen; and because applicant seeks to register its mark in
standard characters, applicant would be free to adopt any
stylization it chooses for its mark, including stylization
similar to that employed by registrant in the cited mark.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont 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). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 77608885
4
We first turn to consider the goods. It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods identified in
the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the
application at issue and/or in the cited registration are
broadly identified as to their nature and type, such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
The goods in this appeal are identical. In view of
the identity between applicant’s and registrant’s
“agricultural seed(s),” we presume that they travel in the
same trade channels (e.g., agricultural supply outlets,
nurseries and the like) and are bought by the same classes
Ser No. 77608885
5
of purchasers (e.g., farmers of both big and small farms,
and home gardeners).
The identity between the goods, and the overlap in
purchasers and trade channels weigh heavily in favor of a
finding of likelihood of confusion.
We next turn to consider the du Pont factor of the
similarity between the marks. Applicant urges that this
appeal presents the Board “with a valuable opportunity to
clarify how an applied-for mark must be compared to a cited
registration in an ex parte prosecution pursuant to Section
2(d), where the applicant’s mark is presented in Standard
Characters and the basis for refusal is a registration the
mark of which is presented in special form.” (Brief, p.
2).
Contrary to the gist of applicant’s remarks, the
present proceeding hardly breaks new ground; in determining
the likelihood of confusion in this appeal, we are required
to compare applicant’s mark in standard characters to
registrant’s cited mark in special form. TMEP
§1207.01(c)(iii) (7th ed. 2010), captioned “Comparison of
Standard Character Marks and Special Form Marks,” reads, in
pertinent part, as follows: “If a mark (in either an
application or registration) is presented in standard
characters, the owner of the mark is not limited to any
Ser No. 77608885
6
particular depiction. The rights associated with a mark in
standard characters reside in the wording (or other literal
element, e.g., letters, numerals, punctuation) and not in
any particular display.” (emphasis added). Trademark Rule
2.52(a) provides that an applicant who submits a standard
character drawing, as in this case, must also submit a
statement that “the mark is in standard characters and no
claim is made as to any particular font style, size, or
color.” See TMEP §807.03(a) (7th ed. 2010).
Prior to 2003, if the application was for the
registration only of a word not depicted in “special form,”
the drawing could consist of the mark typed in capital
letters. Thus, prior to the rules changes in 2003, when a
drawing of the applicant’s mark was typed in capital
letters, this meant that “the application is not limited to
the mark depicted in any special form or lettering.”
Trademark Rule 2.52(a)(1). In this connection, the Federal
Circuit observed that “[r]egistrations with typed drawings
are not limited to any particular rendition of the mark,
and, in particular, are not limited to the mark as it is
used in commerce.” Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
The Trademark Rules were amended in 2003 to replace
the terminology “typed” drawings with “standard character”
Ser No. 77608885
7
drawings, and the statement regarding no limitations with
respect to marks shown in typed drawings was deleted from
the rule. The relevant rule was amended, however, to
indicate, as set forth above, that when using a drawing
showing the mark in standard characters, applicant must
also submit a statement that “the mark is in standard
characters and no claim is made to any particular font
style, size or color.” Trademark Rule 2.52(a).
After the 2003 amendments, the Board continued to cite
to cases decided under the pre-2003 rules, and to state
that the rule remains the same as before, namely when a
mark is presented in typed or standard character form the
mark must be considered as appearing in “all reasonable
manners” in which applicant’s mark could be depicted. In
re Cox Enterprises, Inc., 82 USPQ2d 1040, 1044 (TTAB 2007).
For example, with respect to applicant’s standard character
mark in the present case, the letter “X” may be depicted in
much larger print or type, followed by “ceed” in smaller
print; that is, in a format that is similar to the literal
X-SEED portion of the cited mark. See, e.g., Phillips
Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ
35, 36 (CCPA 1971) (“we must not be misled by considering
[applicant’s] mark only in its printed or typewritten form,
with all of the characters being of equal height”).
Ser No. 77608885
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Thus, when an applicant seeks registration of its word
mark in standard characters, “then the Board must consider
all reasonable manners in which those words could be
depicted.” INB National Bank v. Metrohost, Inc., 22 USPQ2d
1585, 1588 (TTAB 1992). The Board has in the past stated
that “[p]resentation of a mark for registration in
typewritten [now “standard character”] form means that the
mark may be displayed in any style of lettering, including,
presumptively, the same style as that used by the owner of
the cited registration.” In re Deutsche
Calypsolgesellschaft MBH & Co., 220 USPQ 922, 923 (TTAB
1983). See also SquirtCo v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937 93 (Fed. Cir. 1983) (if applicant uses a typed
drawing it asserts rights in no particular display and
cannot argue differences in display when its application is
opposed).
Moreover, there are reported decisions where this
Board found likelihood of confusion when a special form

v.
ZOGGS
TOGGS
mark was cited against applicant’s typed
or standard character mark. See In re
Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007);
and In re Continental Graphics Corp.,
52 USPQ2d 1374 (TTAB 1999).

v.
CONTINENTAL
GRAPHICS

Formatted Table
Ser No. 77608885
9
In view of the above, simply put, the Board sees no
reason to “clarify” what are well established legal
principles that have been consistently applied for many
years, both before and after the 2003 rule changes. See
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §19:58 (4th ed. 2010) (“[A] ‘standard
character’ drawing registration, like a pre-2003 ‘typed’
drawing registration, will not be limited to the exact
format of the mark as it is depicted in the ‘standard
character’ drawing.”).
We thus turn to compare applicant’s mark XCEED in
standard characters with registrant’s mark X-SEED and
design in special form. We must compare the marks in their
entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the
first du Pont factor, 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 impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. Where, as in the present case,
Ser No. 77608885
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the marks are used on identical goods, the degree of
similarity between the marks that is necessary to support a
finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992).
It is well settled that one feature of a mark may be
more significant than another, and it is not improper to
give more weight to this dominant feature in determining
the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985)(“There 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. Indeed, this type of analysis appears to be
unavoidable.”).
Where both words and a design comprise the mark (as in
registrant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. CBS, Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983) (“in a composite mark comprising a design and words,
the verbal portion of the mark is the one most likely to
Ser No. 77608885
11
indicate the origin of the goods to which it is affixed”);
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc.
v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, although we have taken into
account the design and color features of registrant’s mark,
we find that the dominant portion of registrant’s mark is
the literal portion. In this case, the literal portion of
registrant’s mark is X-SEED.
The literal portion of registrant’s mark, X-SEED,
sounds identical or, at the very least, virtually identical
to applicant’s mark XCEED. Although we acknowledge that
there is no correct pronunciation of a trademark, it is
hard to imagine that the two marks will not sound alike
when spoken. Applicant painstakingly points to differences
in sound based upon dictionary evidence, but we simply are
not persuaded that any such difference would even be
noticed by prospective purchasers when they hear the marks.
As to meaning, we recognize that applicant’s mark,
based on the meaning of the word “exceed,” conveys the idea
that its agricultural seed is superior to or surpasses the
quality of the seed offered by competitors. (www.merriam-
webster.com). The meaning of registrant’s mark is less
Ser No. 77608885
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clear, given the different meanings attributed to the
letter “X.” However, given the laudatory suggestiveness of
superiority conveyed by the word “exceed,” it is reasonable
that purchasers will perceive registrant’s mark in a
similar manner, that is, purchasers may give the same
meaning of superiority to registrant’s mark. Thus, both
marks are likely to be perceived as a play on the commonly
known and understood word “exceed,” conveying the same
laudatory suggestion.
There is little question that the most significant
difference between the marks is in appearance. However, as
discussed earlier, applicant’s mark, shown in standard
character form, could be depicted in a variety of
reasonable variations, including a large capital letter “X”
followed by “ceed” in smaller letters, that is, in a manner
that resembles the format of the cited mark. By saying
this, we do not mean to suggest that the specific special
form of registrant’s mark in its entirety constitutes a
“reasonable” variation of applicant’s standard character
mark. We acknowledge that registrant’s mark is highly
stylized, with colors. Nevertheless, we reiterate that a
reasonable variation of applicant’s standard character mark
would be a capital “X” followed by the small letters “ceed”
in a format that is similar to that of registrant’s mark.
Ser No. 77608885
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Because of the similarities between XCEED and X-SEED
(the dominant portion of registrant’s mark), the marks
engender sufficiently similar overall commercial
impressions when the marks are applied to identical goods.
Contrary to applicant’s arguments, we fail to see how
the Board’s decision in In re White Rock Distillers, Inc.,
92 USPQ2d 1282 (TTAB 2009) (no confusion between VOLTA for
energy vodka infused with caffeine and TERZA VOLTA and
design for wines) compels a reversal of the refusal in this
appeal. Firstly, the appeal did not involve identical
goods as is the case herein. Secondly, registrant’s mark
included an additional word, “TERZA,” which the Board found
to be dominant in the cited mark, as well as a design
feature. Further, although the Board ultimately reversed
the refusal in that case, reference was made to TMEP
§1207.01(c)(iii), with the Board indicating that “rights
associated with a word mark in standard character (or
typed) form reside in the wording and not in any particular
display of the word.” Id. at 1284.
In sum, the identical nature of the goods has been
given heavy weight in our analysis. Due to the identity
between the goods, the marks need not be as similar as in
the case of goods that are not identical. Keeping this in
mind, we find that the marks, when applied to identical
Ser No. 77608885
14
goods, are sufficiently similar that confusion is likely to
occur among purchasers. We conclude that purchasers
familiar with registrant’s agricultural seed sold under the
mark X-SEED and design would be likely to mistakenly
believe, upon encountering applicant’s mark XCEED for
agricultural seed, that the goods originated with or are
somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.