Garden Way Inc.

Trademark Trial and Appeal Board

Jul 20, 2001

No. 75611089 (T.T.A.B. Jul. 20, 2001)

7/20/01 Paper No. 18
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Garden Way Incorporated
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Serial No. 75/611,089
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David P. Miranda for Garden Way Incorporated.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
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Before Simms, Hanak and Rogers, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Garden Way Incorporated of Troy, New York
(applicant) seeks to register TROY-BILT BRONCO in typed
drawing form for “rototillers.” The intent-to-use
application was filed on December 22, 1998.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to rototillers, is likely to
cause confusion with the mark BRONCO, previously
registered in typed drawing form for “fertilizer
spreaders.” Registration No. 1,365,249 issued October
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
15, 1985.
When the refusal to register was made final,
applicant
Ser. No. 75/611,089

appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis two key,
although not exclusive, considerations are the
similarities of the goods and the similarities of the
marks. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Considering first the goods, applicant, while
arguing that rototillers and fertilizer spreaders are
separate products, nevertheless acknowledges at page 2 of
its brief that both products are “in the field of
garden/lawn maintenance products.” Moreover, at page 3
of its reply brief applicant concedes the contention of
the Examining Attorney that both rototillers and
fertilizer spreaders function to “contribute to the
success of plant growth.” In this regard, applicant
acknowledges at page 6 of its brief that “a rototiller is
used for loosening the soil and destroying weeds” and
that “a fertilizer spreader is used for scattering
fertilizer or seed.”
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Ser. No. 75/611,089

Thus, while the goods of applicant and registrant
are by no means identical, they are clearly
complementary. In the spring, an ordinary homeowner
could use a rototiller to loosen the soil and destroy the
weeds in his garden, and then later use a fertilizer
spreader for scattering desirable seeds and fertilizer.
Moreover, many ordinary home gardeners, unlike
professional farmers, are not particularly sophisticated
when it comes to purchasing the various items of
equipment that they will use to maintain their gardens.
In short, we find that rototillers and fertilizer
spreaders are clearly complementary products which are
purchased by ordinary home gardeners who, in many cases,
are not particularly sophisticated.
Turning to a consideration of the marks, it is
important to keep in mind that applicant seeks to
register its mark TROY-BILT BRONCO in typed drawing form.
This is a critical factor because it “means that
[applicant’s] application is not limited to the mark
depicted in any special form.” Phillips Petroleum Co. v.
C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). Hence, in our likelihood of confusion analysis,
we must “visualize what
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Ser. No. 75/611,089

other forms [applicant’s] mark might appear in.”
Phillips Petroleum, 170 USPQ at 36. Stated somewhat
differently, in our likelihood of confusion analysis we
must consider all reasonable manners in which applicant’s
mark could be depicted. INB National Bank v. Metrohost,
Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
One reasonable manner of presentation of applicant’s
mark would be to depict the TROY-BILT portion of the mark
on one line in slightly smaller lettering and the BRONCO
portion on a second line in slightly larger lettering.
When so depicted, applicant’s mark would be very similar
to the registered mark BRONCO per se. Consumers viewing
applicant’s mark depicted in the foregoing manner could
easily assume that the brand name of applicant’s
rototiller was simply BRONCO, and that the words TROY-
BILT depicted in smaller lettering merely indicated that
the rototiller was build in Troy, New York (which is
indeed applicant’s place of business) or by a company
named Troy.
In conclusion, given the fact that rototillers and
fertilizer spreaders are complementary garden products
which can be purchased by ordinary, unsophisticated home
gardeners and the fact that applicant, who is seeking to
register its
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Ser. No. 75/611,089

mark in typed drawing form, would be free to emphasize
the BRONCO portion of its mark, we find that the
contemporaneous use of applicant’s mark TROY-BILT BRONCO
and registrant’s mark BRONCO on their respective goods is
likely to cause confusion.
Two final comments are in order. First, in response
to the first Office Action, applicant voluntarily
disclaimed the exclusive right to use BRONCO. At pages 4
and 5 of its brief, applicant then makes the following
argument: “Applicant respectfully contends that the use
of a disclaimer is significant as it disavows any
exclusive right to the use of a specified word ... Where
the proposed mark consists of two words, one of which is
disclaimed, the word not disclaimed is generally regarded
as the dominant or critical term of the proposed mark.”
Applicant’s logic is fatally flawed. The rule that a
disclaimed word is generally less dominant than a non-
disclaimed word applies only when the disclaimed word is
descriptive or generic. In this case, the word BRONCO is
not even suggestive of rototillers or fertilizer
spreaders, much less is it descriptive of or generic for
rototillers or fertilizer spreaders. Following
applicant’s logic, applicant would be
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Ser. No. 75/611,089

entitled to register TROY-BILT TORO or TROY-BILT LAWN
BOY, simply by disclaiming TORO and LAWN BOY.
Second, applicant attached for the first time to its
brief what purports to be a list of federal registrations
and applications of marks consisting of or containing the
word BRONCO. In her brief, the Examining Attorney quite
properly objected to this “evidence” inasmuch as it was
not made of record during the examination process. The
Examining Attorney’s objection is well taken and we have
not considered the material which applicant submitted for
the first time with its brief. Moreover, even if we were
to consider such material, it is absolutely worthless.
First, this list does not indicate the goods or services
of these other purported BRONCO applications and
registrations. In other words, there is absolutely no
indication that any of these other BRONCO applications
and registrations are for goods that are even remotely
related to garden and lawn care products.
Second, even if applicant had properly made of
record actual copies of these purported third-party
BRONCO registrations reflecting the goods or services,
such third-party registrations by themselves would not
support
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Ser. No. 75/611,089

applicant’s contention that BRONCO is a weak source
identifier. See applicant’s brief page 5 and reply brief
page 3. This is because “in the absence of any evidence
showing the extent of use of any of such marks or whether
any of them are now in use, they [the third-party
registrations] provide no basis for saying that the marks
so registered have had, or may have, any effect at all on
the public mind so as to have a bearing on likelihood of
confusion.” Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973).
Decision: The refusal to register is affirmed.

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