CP Bio, Inc

Trademark Trial and Appeal Board

Dec 9, 2014

No. 85692806 (T.T.A.B. Dec. 9, 2014)

This opinion is not a
Precedent of the TTAB

Mailed: December 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CP Bio, Inc.
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Serial No. 85692806
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Jen-Feng Lee, Esq. for CP Bio, Inc.

Brian P. Callaghan, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
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Before Cataldo, Wolfson, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
CP Bio, Inc. (“Applicant”) filed an application to register on the Principal
Register the mark PhotoGro, in standard characters, for “Fertilizers for
agricultural use,” in International Class 1.1 Applicant has voluntarily disclaimed
the exclusive right to use the word “Photo” apart from the mark as shown.
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark PHOTO

1 Application Serial No. 85692806, filed under Trademark Act § 1(a), 15 U.S.C. § 1051(a), on
August 1, 2012, with a claim of first use as of 2001 and first use in commerce as of 2002.
Serial No. 85692806
2
MAX (also in standard characters) as to be likely to cause confusion, or to cause
mistake, or to deceive. The cited mark is registered on the Principal Register for
“Fertilizers; Plant nutrition preparations,” in International Class 1.2 When the
refusal was made final, Applicant appealed. The case is fully briefed.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to the goods of Applicant and Registrant, we find that they are
legally identical. The cited registration covers “Fertilizers” and Applicant seeks
registration of its mark for “Fertilizers for agricultural use.” We must presume that
Registrant’s goods encompass all goods of the nature and type identified in the
registration. In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006). Accordingly,
Registrant’s “fertilizers” encompass within their scope Applicant’s more specifically
identified “fertilizers for agricultural use.” There is no need for us to consider
whether Applicant’s goods are similar to Registrant’s “Plant nutrition
preparations.” In the context of an analysis under Section 2(d), where all of the
goods in the application are in a single International Class, it is sufficient if

2 Reg. No. 4234686, issued on October 30, 2012.
Serial No. 85692806
3
likelihood of confusion is found with respect to use of the mark on any item that
comes within the description of goods in the application or registration. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
2007). Accordingly, the du Pont factor of the similarity or dissimilarity of the goods
weighs in favor of a finding of likelihood of confusion.
Because Applicant’s goods are legally identical to those identified in the cited
registration, we must presume that the goods of Applicant and Registrant move in
the same channels of trade and are available to the same classes of customers for
such goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). These factors also favor a finding of likelihood of
confusion.
We now turn to the similarity or dissimilarity of the marks at issue as to
appearance, sound, meaning, and overall commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). In our analysis under Section 2(d) we compare
the marks at issue in their entireties. However, 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 a consideration of the marks in
Serial No. 85692806
4
their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Applicant and the Examining Attorney have argued extensively over which
portions of the marks at issue should be considered “dominant” for purposes of our
analysis. The Examining Attorney contends that PHOTO is the dominant portion of
each mark because it is the first element of each mark. To reinforce his contention
that PHOTO, rather than -GRO, is the dominant portion of Applicant’s mark, the
Examining Attorney has presented a number of third-party registrations3 of
fertilizer trademarks that include the element GROW with a disclaimer of the
exclusive right to use GROW apart from the mark as a whole. Among these, we note
the following:
Reg. No. Mark
2473308 NUTRI GROW
3590484 MONSTER GROW
3084359
3984093 NACHURS SOY GROW
4104340 Atomic Grow
4178086 Mighty Grow Organics
4257139

The Examining Attorney argues that -GRO in Applicant’s mark is a misspelling of
the word “grow.” In support of this contention, the Examining Attorney has

3 Office Action of July 2, 2013 at 11-44.
Serial No. 85692806
5
submitted a copy of Reg. No. 1948136 for the mark HUMA GRO, for fertilizers,
which contains a disclaimer of the exclusive right to use the word “Grow.”4 The
Examining Attorney argues further that the disclaimers in the registrations listed
above demonstrate that “grow” is a descriptive term in the field of fertilizers; and
that a descriptive term “is typically less significant or less dominant” as a
component of a mark for purposes of an analysis of likelihood of confusion.5 (The
Examining Attorney has not presented any evidence to demonstrate that the
element MAX in Registrant’s mark should be considered less dominant or weak.)
Applicant, in response, argues that PHOTO is not the dominant component of its
mark, because Applicant has disclaimed PHOTO; and that “the greater weight for
overall analysis should be placed on ‘PHOTO MAX’ v.s. [sic] ‘GRO.’”6 However,
Applicant’s voluntary disclaimer of the exclusive right to use PHOTO (which was
not required by the Examining Attorney) does not automatically deprive the
element PHOTO of dominance. The question of whether an element of a mark is
dominant over other elements goes to the expected (or demonstrated) perceptions of
the relevant customers for the goods. When such customers see the mark, they are
not aware of the existence of a disclaimer in the records of the USPTO. In re MCI
Communications Corp., 21 USPQ2d 1534, 1537 (Comr. Pats. 1991) (“Therefore,

4 USPTO procedure indicates that where disclaimable matter is “misspelled,” the
disclaimed word should be set forth in its correct spelling. TMEP § 1213.08(c) (October
2014). See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir.
1987).
5 Examining Attorney’s brief, 12 TTABVUE 7.
6 Applicant’s brief at 6-7, 10 TTABVUE 7-8.
Serial No. 85692806
6
disclaimer of matter will never serve to obviate the issue of likelihood of
confusion.”), citing In re National Data Corporation, 224 USPQ at 751.
Applicant also asks that we consider the dictionary definition of the word
“photosynthesis,” and argues that, in the marks at issue, the term PHOTO is
suggestive of “a product for plants.”7 Applicant argues that this suggestive meaning
renders the PHOTO component of its mark “much less dominant.” We take notice of
the following definition:
Pho•to•synthesis … synthesis of chemical compounds
with the aid of light … esp : the formation of
carbohydrates from carbon dioxide and a source of
hydrogen (as water) in chlorophyll-containing cells (as of
green plants) exposed to light ….
1703 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993).8
Applicant further urges us to consider, without supporting evidence, that
“‘Photo’ is the Greek word for light.”9 However, Applicant submits no evidence to
indicate that the relevant customers for the goods at issue would have knowledge of
this meaning of “Photo.”
Applicant also points out that it owns or owned the following registrations,
arguing that they show that Applicant places commercial emphasis on the -GRO
portion of its marks:

7 Applicant’s Reply Brief at 3, 13 TTABVUE 4.
8 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
9 Applicant’s Reply Brief at 3, 13 TTABVUE 4.
Serial No. 85692806
7
Reg. No. Mark
3126857 HappyGro
3126856 MegaGro
3126853 GoldenGro
2662906 PHOTOGRO (cancelled)

Applicant further points out that Registrant owns the following registrations in
addition to the cited registration of PHOTO MAX, and argues that these
registrations demonstrate that Registrant places commercial emphasis on the MAX
component of its marks:
Reg. No. Mark
3619370 MAX SET
2979919 WECO MAX
4155312 MAX SET ULTRA10

We note that Applicant refers to “the prevalence of various coexisting
trademarks all starting with the word PHOTO which are all being used on
fertilizer.”11 However, there is no evidence of record of such marks. In its reply brief,
Applicant cites a third-party registration of the mark PHOTOTRON. However, such

10 Applicant listed the above registrations of itself and Registrant, without submitting
actual copies of the registrations, in its response of June 5, 2013. The Examining Attorney
did not object or advise Applicant that a listing is insufficient to make such registrations of
record at a time when Applicant could cure the insufficiency. Accordingly, we deem waived
any objection of the Examining Attorney to the consideration of this list of registrations. In
re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012); TBMP § 1207.03.
11 Applicant’s reply brief at 1, 13 TTABVUE 2.
Serial No. 85692806
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a reference is insufficient to make this registration of record. The Board does not
take judicial notice of the files of applications or registrations residing in the Office.
Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012).
Taking into consideration all of the foregoing, we see little cause to give
substantially more weight to any component of either mark. The components
PHOTO, GRO, and MAX are of relatively equal distinctiveness. The fact that
Applicant and Registrant may own, respectively, other -GRO marks and other MAX
marks, is of little relevance. There is no evidence to show that members of the
relevant public are aware of the existence of such other marks. We do, however,
acknowledge that the position of the PHOTO component as the initial element of
each mark may give it slightly more prominence than the remainder of the marks.
Palm Bay Imports, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word).
Considering the two marks PhotoGro and PHOTO MAX in their entireties, we
note that they resemble each other visually, phonetically, and in meaning to the
extent that each begins with the element PHOTO. Although we acknowledge the
differences in sound, meaning and appearance that arise from the different endings
-GRO and MAX, the marks share a structural similarity, in that each consists of
PHOTO with three additional letters. The fact that Registrant’s mark includes a
Serial No. 85692806
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space before the final three letters while Applicant’s mark lacks such a space is
insignificant. The applicable test is not whether the marks can be distinguished
when subjected to a side-by-side comparison. Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). Rather, the proper focus is on the recollection of the average
customer, 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).
Considering the overall commercial impressions of the two marks, we find it
likely that customers would perceive the two marks as related to each other. In
reaching this conclusion, we bear in mind that when marks would appear on
virtually identical goods, the degree of similarity necessary to support a conclusion
of likely confusion declines. Bridgestone Americas Tire Operations LLC v. Federal
Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992). Accordingly, we find that the du Pont factor of the similarity or
dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.
Applicant has raised a number of other issues in support of its appeal. First,
Applicant claims to have made use of its mark prior to Registrant’s adoption of the
cited mark.12 This allegation is unsupported by evidence of record. It is also not
relevant to this ex parte proceeding. In re Calgon Corp., 435 F.2d 596, 168 USPQ

12 Applicant’s brief at 4, 4 TTABVUE 5.
Serial No. 85692806
10
278, 280 (CCPA 1971). The Examining Attorney’s refusal was issued under Section
2(d) of the Trademark Act, which provides for refusal on the basis of a mark’s
resemblance to “a mark registered in the Patent and Trademark Office … ,” without
regard to the applicant’s alleged priority. 15 U.S.C. § 1052(d). An ex parte appeal is
not the proper forum for challenging the validity of a registration. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997).
Applicant discusses in its reply brief the prosecution of applications for other
marks and its own earlier successful prosecution of an application for the mark
PHOTOGRO:
PHOTOTRON 4,166,596 did not prevent the registration
of PHOTO MAX 4234686 several months later. …
PHOTO MAX and PHOTOGRO were not confusingly
similar with each other in 2002, so should not be
confusingly similar with each other now. … Applicant’s
predecessor in interest filed for and received PHOTOGRO
February 7, 2002 while PHOTO MAX was registered by a
different party for the same exact goods, namely fertilizer.
Reply brief at 2, 13 TTABVUE 3. Applicant’s contentions cannot be confirmed
because the prosecution records discussed by Applicant are not of record in this
proceeding. Even if they were, their relevance is questionable. We must decide each
case on its own merits and “[e]ven if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board.” In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Serial No. 85692806
11
Finally, Applicant contends that its mark and Registrant’s mark “have been
coexisting for at least 15 years now” without actual confusion.13 Again, Applicant
has submitted no evidence to support this contention. Uncorroborated statements of
no known instances of actual confusion are of little evidentiary value. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). This is
particularly true in this ex parte proceeding in which we do not have the benefit of
Registrant’s input as to any instances of confusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. In view of the
similarity of the marks at issue, the identical nature of the goods, and our
assumption that they must travel through the same channels of trade to the same
classes of customers, we find that Applicant’s mark so closely resembles the
registered mark as to be likely to cause confusion, mistake or deception as to the
source of Applicant’s goods.
Decision: The refusal to register is affirmed.

13 Id. at 2, 13 TTABVUE 3.