Livetrends Design Group, LLC

Trademark Trial and Appeal Board

Feb 8, 2021

88320133 (T.T.A.B. Feb. 8, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 8, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Livetrends Design Group, LLC
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Serial Nos. 88320133
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Christopher M. Ramsey of Gray Robinson, P.A.
for Livetrends Design Group, LLC.

J. Ian Dible, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____
Before Cataldo, Wellington, and Kuczma,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Livetrends Design Group, LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark URBAN JUNGLE DESIGN (with DESIGN
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disclaimed) for use on “live plants, namely, indoor house plants sold to plant retailers
for resale to consumers” in International Class 31.1
The Examining Attorney refused registration under Trademark Act Section 2(d),
15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered standard
character mark URBAN JUNGLE for “rental of potted plants and floral arrangement
to the public and commercial customers” in International Class 44.2
After the Examining Attorney made the refusal final, Applicant concurrently filed
a request for reconsideration and appealed. When the Examining Attorney denied
the request for reconsideration, this appeal resumed and it has been briefed by
Applicant and the Examining Attorney.
For the reasons set forth below, we affirm the refusal.
Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We must consider each DuPont factor for

1 Application Serial No. 88320133 filed February 28, 2019, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to
use the mark in commerce.
2 Registration No. 5850189 issued on the Principal Register on September 3, 2019.
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which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
relatedness between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. Similarity of the Marks
We first compare the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-
side comparison, but rather whether their overall commercial impressions are so
similar that confusion as to the source of the goods and services offered under the
respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also In re Bay State Brewing Co.,
117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Coach Servs.).
In this case, the first two words of each mark – URBAN JUNGLE and URBAN
JUNGLE DESIGN – are identical. The “identity of the marks’ initial two words is
particularly significant because consumers typically notice those words first.” In re
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Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018). The
marks are thus, aurally and visually, very close.
We do not ignore the single difference between the marks, namely, the addition of
the term DESIGN at the end of Applicant’s mark. However, this disclaimed term has
very little source-identifying value because it is merely descriptive of Applicant’s
goods. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997) (in comparing THE DELTA CAFÉ to DELTA, the generic term CAFÉ lacks
sufficient distinctiveness to create a different commercial impression); In re Detroit
Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“[N]on-source
identifying nature of the words and the disclaimers thereof constitute rational
reasons for giving those terms less weight in the analysis.”). It is highly unlikely
consumers will rely on this term for purposes of distinguishing the marks.
In terms of meaning, the marks convey the same, or nearly the same, commercial
impression. Each mark, when viewed in the context of the involved goods and
services, may be understood as suggestive of tropical plants placed in an urban
environment and a play on the idiom “urban jungle.” These connotations are
expressed in the Internet evidence submitted by Applicant and discussed more fully,
infra.3 For example, a blog article titled “Urban Jungle – House Full of Plants” begins
with “As the world’s population is becoming more and more urbanized – people are
looking for ways to cope in the sterile concrete environment. . . . One popular solution

3 See exhibits attached to Applicant’s request for reconsideration filed June 22, 2020, TSDR
pp. 9-19.
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is bringing more plants and greenery inside, transforming your home into a green
oasis.”4 Use of the term URBAN JUNGLE, by either Applicant on its indoor house
plants or by Registrant in connection with potted plant rental services, has the same
suggestive meaning -- that the plants will help create a lush or greener décor inside
the consumer’s property.
Based on their strong resemblance in sound, appearance, connotation and
commercial impression, we find Applicant’s mark, URBAN JUNGLE DESIGN, is
very similar to the registered mark, URBAN JUNGLE.
B. Weakness of Registered Mark
Applicant argues that “[b]ecause URBAN JUNGLE is a weak mark, the additional
term DESIGN distinguishes Applicant’s mark from the registered mark.”5 In support
of its contention that URBAN JUNGLE is weak, Applicant relies on the following
evidence: copies of online articles or reviews from 7 different websites describing an
“urban jungle” home décor concept of having plants in your home; printouts from 4
different websites showing use of term URBAN JUNGLE in connection with the
wholesale and retail sale, rental or leasing of plants; and copies of 13 third-party, use-
based registrations for marks comprised, in part, of either the term URBAN or the
term JUNGLE, but not both.6

4 Id., TSDR p. 9.
5 7 TTABVUE 12.
6 Attached to Applicant’s response filed December 6, 2019, and request for reconsideration
filed June 22, 2020.
With respect to the third-party registrations, Applicant submitted “hard” copies and they do
not show their current status and title information. “[T]o make a third-party registration of
record, or a registration owned by the applicant or registrant not the subject of the appeal, a
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In terms of the strength or weakness of the cited mark, we consider both its
conceptual strength based on the nature of the mark and its commercial strength
based on the marketplace recognition of the mark, if any. In re Chippendales USA
Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”) A mark may be inherently or conceptually weak due
to its strongly suggestive meaning in the context of the involved goods or services.
As to commercial weakness, the sixth DuPont factor “considers ‘[t]he number and
nature of similar marks in use on similar goods”’ or services. Omaha Steaks Int’l, Inc.
v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir.
2018) (quoting DuPont, 177 USPQ at 567). This factor potentially relates to the
impact of our analysis of the similarity or dissimilarity of the marks under the
first DuPont factor because the “purpose of introducing evidence of third-party use is
‘to show that customers have become so conditioned by a plethora of such similar
marks that customers have been educated to distinguish between different [such]
marks on the bases of minute distinctions.”’ Id. (quoting Palm Bay Imps. v. Veuve

copy of the registration (from either the electronic records of the Office or the paper USPTO
record) showing the current status and title of the registration must be submitted.”
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.02 (June
2020). However, “if the examining attorney discusses the registrations in an Office action or
brief, without objecting to them, the registrations will be treated as stipulated into the
record.” Id. Because the Examining Attorney did not object to the otherwise improperly-
submitted registrations, we have treated them as of record. We do note that, in his brief, the
Examining Attorney did point out that two of the third-party registrations have been
cancelled (Reg. Nos. 3653534 and 4304657), and the third mark URBANATURE (Reg. No.
4576115) was mischaracterized by Applicant as “URBAN NATURE.”
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Cliquot Ponsardin Maison Fondee en 1772, 73 USPQ2d at 1694 (internal quotation
and quotation marks omitted)).
The evidence submitted by Applicant demonstrates that the wording “urban
jungle” is strongly suggestive of a type of interior design concept involving plants. For
example, one article describes “Five houseplants for a stylish Urban Jungle Interior.”7
There is also evidence of a book titled “Urban Jungle: Living and Styling with Plants,”
which is touted as “a manual for anyone looking to bring more plants into their living
space.”8 Because the goods and services involve houseplants, we find the term
URBAN JUNGLE has some inherent weakness as a source-identifier.
With regard to any commercial weakness, Applicant’s evidence shows the term
URBAN JUNGLE used on four different websites in connection with the sale or
rental of plants. While this evidence is probative, it does not come close to matching
the amount of third-party use that courts have previously relied upon for purposes of
finding a mark, or element of a mark, to be so commercially weak to avoid a likelihood
of confusion with another mark based on the same term. See, e.g., Jack Wolfskin
Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (discussing “voluminous
evidence” of registration and use of paw print design elements); Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir.
2015) (referring to evidence of 26 third-party marks as “a considerable number”).

7 Applicant’s request for reconsideration, filed June 22, 2020, TSDR p. 12.
8 Id., p. 10.
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The third-party registrations submitted by Applicant also have little, if any,
probative value for purposes of showing URBAN JUNGLE is weak. As the Examining
Attorney points out, the registrations are for marks that have either the term
URBAN or the term JUNGLE, but not both. There is no evidence of anyone, other
than Registrant, with a registration for a mark containing the term URBAN
JUNGLE. Indeed, many of the third-party registered marks convey very different
meanings, e.g., URBAN SUNSET, THE URBAN BLOSSOM, URBAN LEGEND,
JUNGLE ALL THE WAY, JUNGLE ELF, etc.
In sum, we find that the cited URBAN JUNGLE mark is suggestive and somewhat
inherently weak and there is some evidence of commercial weakness. Nonetheless,
the URBAN JUNGLE mark is registered on the Principal Register without resort to
a claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §
1052(f), and thus is presumed inherently distinctive. Taken together, we find the
cited mark is entitled to a somewhat narrower scope of protection than that accorded
to a strong and arbitrary mark. Nonetheless, even weak marks are entitled to
protection against confusion. See Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246
(TTAB 2010); see also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 109 (CCPA 1974).
C. Relatedness of the Goods and Services
“[L]ikelihood of confusion can be found ‘if the respective goods [and services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
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source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing
the second DuPont factor, we look to the identifications in the application and cited
registration. See Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
At the outset, we note a general or inherent relationship between Applicant’s
goods and Registrant’s services inasmuch as they involve live houseplants. We also
take into consideration the provision in Applicant’s identification of goods that it
offers its house plants for sale “to plant retailers for resale to consumers.” This
provision, however, does not eliminate the possibility that the same consumer may
encounter Applicant’s houseplants, bearing the mark URBAN JUNGLE DESIGNS,
as well as Registrant’s rental of potted houseplants services. That is, the involved
application is for use of the mark on Applicant’s live houseplants and we must
therefore construe this to mean that these houseplants will be encountered by the
end consumers bearing Applicant’s mark. The same consumer, whether it is a
homeowner or commercial business, may also choose Registrant’s URBAN JUNGLE
houseplant rental services to decorate their property with house plants.
The Examining Attorney submitted Internet evidence showing that there are
third parties who provide plant rental services as well as the retail sale of house
plants.9 For example, the website for Beneva Plantscapes offers “residential plant

9 See evidence attached to Office Action issued November 12, 2019, TSDR 4-10,
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sales & rentals.”10 Another website, Foliage Unlimited, offers “plant rental for special
occasions and events,” as well as “plant sales.”11 The Examining Attorney also
submitted printouts from other websites showing several different other entities that
provide wholesale and rental services involving plants.12
It is well established that a “relatedness” which bespeaks likelihood of confusion
may occur from the use of the same or similar marks for goods, on the one hand, and
for services dealing with or related to those goods, on the other hand. See e.g., In re
Detroit Athletic, 128 USPQ2d at 1052 (“[W]e have held that confusion is likely where
one party engages in retail services that sell goods of the type produced by the other
party . . . .”); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988) (holding BIGG’S (stylized) for retail grocery and general merchandise store
services and BIGGS and design for furniture likely to cause confusion); Safety-Kleen
Corp. v. Dresser Indus., Inc., 518 F.2d 1339, 186 USPQ 476, 480 (CCPA 1975)
(“lacking merit is [applicant’s] contention that services [leasing, maintenance and
servicing of apparatus for cleaning mechanical parts] and products [cleaning
equipment] marketed under substantially the same mark cannot be found likely to
cause confusion”); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347, 347-48 (CCPA
1961) (finding that caterers were likely to sell specialty food products as well as to
offer catering services supported conclusion that SEILER’S for catering services and

10 Office Action issued November 12, 2019, TSDR p. 4.
11 Id., pp. 5-6.
12 See evidence attached to Office Action issued December 23, 2019, TSDR pp. 2-4, and Office
Action issued July 7, 2020, TSDR pp. 2-13.
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SEILER’S for smoked and cured meats were related); In re United Serv. Distribs.,
Inc., 229 USPQ 237, 239 (TTAB 1986) (design featuring silhouettes of man and
woman for distributorship services in the field of health and beauty aids likely to
cause confusion with design featuring silhouettes of a man and woman used in
connection with skin cream).
Here, too, we find that there is a close relationship between the Applicant’s indoor
house plants that are sold to plant retailers and for resale to consumers, and
Registrant’s rental of potted plants. Not only is there an inherent relationship based
on the goods and services involving houseplants, but there is persuasive evidence
showing that these are the type of goods and services that may be offered by a single
entity. The same consumer for these goods and services, namely, a person or business
seeking to furnish a home or business with plants, is likely to encounter them. For
example, a consumer seeking to have house plants for a special event or interior
design project, may encounter Applicant’s URBAN JUNGLE DESIGN plants, albeit
being sold indirectly from an unrelated retailer, and also encounter Registrant’s
URBAN JUNGLE house plant rental services.
Accordingly, the second DuPont factor weighs in favor of likely confusion.
D. Conclusion
Given the strong similarity of the marks and our finding that the goods and
services are closely related and will be offered to the same classes of purchasers, we
find that confusion is likely. We make this ultimate finding despite our finding
of some weakness of the registered mark, URBAN JUNGLE, in connection with
Serial No. 88320133
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house plants. That is, in spite of any narrowing of the scope of protection for
Registrant’s mark, we find it is still entitled to protection against registration of a
highly similar mark for goods that are closely related to Registrant’s services. King
Candy Co., Inc., 182 USPQ 109; see also In re i.am.symbolic, 127 USPQ2d 1627, 1636
n.13 (TTAB 2018).
Decision: The refusal to register Applicant’s mark is affirmed.