National Audubon Society, Inc.v.Design Factory International, Inc.

Trademark Trial and Appeal Board

Jul 3, 2008

No. 91172880 (T.T.A.B. Jul. 3, 2008)

Mailed: July 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

National Audubon Society, Inc.
v.
Design Factory International, Inc.
_____

Opposition No. 91172880 to application Serial No. 78644475
filed on September 13, 2006
_____

Deborah K. Squires of Cowan, Liebowitz & Latman, P.C. for
National Audubon Society, Inc.

Design Factory International, Inc., pro se.
______

Before Hairston, Rogers and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Design Factory International, Inc. has filed an
application to register on the Principal Register the mark
shown below,

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Opposition No. 91172880
2
for “garden ornaments namely, urns and vases made of glass,
terra cotta, porcelain and non-precious metal; planters for
flowers and plants; statues made of china, crystal,
earthenware, glass and porcelain.”1 Applicant disclaimed
the term “garden” and entered the following description and
claim to color of the mark into the application record:
“The mark consists of the color green appearing in the
wording of the mark and in the leaf and stem design; the
color red appearing in the flower design; the color mauve
appearing in the brushstroke border of the mark” and “[t]he
color(s) green, mauve and red is/are claimed as a feature of
the mark.”
Registration has been opposed by the National Audubon
Society, Inc. on the ground of likelihood of confusion with
its previously used and registered AUDUBON marks. Opposer
specifically alleges that since prior to June 6, 2005,
applicant’s constructive first use date, opposer, its
licensees and affiliates have used marks that comprise the
word AUDUBON, alone or with other words and designs
(“AUDUBON Marks”) in connection with opposer’s famous
conservation, environmental and educational services and a
wide variety of additional goods and services, including
without limitation goods associated with gardens, backyards

1 Serial No. 78644475, filed on June 6, 2005 and alleging a bona
fide intent to use the mark on the recited goods in commerce.

Opposition No. 91172880
3
and nature, such as bird houses, bird baths, bird feeders,
bird food, butterfly houses, squirrel feeders, bathhouses,
garden trellises, garden stakes, planters, live plants and
seedlings, binoculars, outdoor thermometers, hooks,
brackets, thistle socks, pole kits, window glass hangers and
nature and wildlife videos and printed materials and that
since prior to June 6, 2005, opposer, its licensees and
affiliates have promoted and advertised the sale and
distribution of such goods and services bearing or offered
in connection with its AUDUBON Marks. Opposer further
alleges that as a result of the extensive use, promotion and
notoriety of goods and services being offered in connection
with opposer’s AUDUBON Marks, opposer has built up highly
valuable goodwill in those marks, and said goodwill has
become closely and uniquely associated with opposer; that
opposer owns several United States applications and
registrations for its AUDUBON Marks2; that the goods covered
by the involved application are identical and/or closely
related to the goods offered under and the services rendered
in connection with opposer’s AUDUBON Marks; and that

2 Opposer particularly pleaded ownership of Application
Serial Nos. 78735348 and 78725864 and Registration Nos. 1213257,
2345272, 2338646, 0891611, 2564497, 1190696, 2579943, 2943787,
2436781, 1847753, 2732442, 1890370, 1853671, 1856638, 1856843,
1954847, 2579942, 1851694, 1187650, 1854643, 2840374, 2091017,
1853551, 1852642, 2285416, 1213258, 2565321, 1184914, 2419153,
2329252, 2321150, 1187814, 2181528, 1949150, 2662691, 0743843,
0769589, 1373564, 1947688, 3079056 and 3050834.

Opposition No. 91172880
4
applicant’s AUDUBON GARDEN and design mark so resembles
opposer’s AUDUBON Marks as to be likely, when applied to
applicant’s goods, to cause confusion, to cause mistake, and
to deceive the trade and public, who are likely to believe
that applicant’s goods have their origin with opposer and/or
that such goods are approved, endorsed or sponsored by
opposer or associated in some way with opposer. Opposer
also alleges that on or about June, 2002, applicant
approached opposer seeking a license to use its AUDUBON
Marks on garden items, but in January 2003, opposer
terminated license negotiations with applicant and did not
grant to applicant a license to use opposer’s AUDUBON Marks
for any goods and services.3
Applicant’s answer is in the nature of a general denial
of the essential allegations of the notice of opposition.
THE RECORD
The record consists of the pleadings and the file of
application Serial No. 78644475. In addition, opposer
submitted the testimony deposition, with Exhibits 1-59, of
Sandra Pinto, opposer’s director of licensing, and a notice

3 In addition, opposer alleged that it would be injured by the
granting of a registration to applicant because “Applicant’s
AUDUBON GARDEN mark would falsely suggest a connection between
Applicant and Audubon.” (Not. of opp., ¶ 11). To the extent that
opposer intended this allegation as a separate claim for
opposition, we consider it withdrawn inasmuch as opposer made no
further mention of the allegation in its main brief.

Opposition No. 91172880
5
of reliance on status and title copies of thirty-nine of its
forty-one pleaded registrations.4
FINDINGS OF FACT
Opposer, National Audubon Society, Inc., is an
environmental conservation organization founded or
incorporated in 1905, whose mission is to conserve and
restore natural ecosystems, focusing on birds, other
wildlife and their habitats. (Pinto Tr. p. 6). Opposer has
a membership base of approximately 400,000 people, with more
than 25 state offices located across the country and over 50
centers around the nation open for visitation by members of
the public interested in educational programs about local
ecological issues. (Pinto Tr. pp. 6-7 and 9). Opposer’s
total revenues from contributions, membership, licensing
royalties and other sources totaled approximately $500
million over the past six years. (Pinto Tr. pp. 10-12 and
Ex. 2,4). Opposer and its licensees have used Opposer’s
AUDUBON Marks in connection with a licensing program
spanning a broad range of product and service categories,
including garden/backyard, publishing and home décor.
(Pinto Tr. p. 23). As part of a branding initiative
commenced in the fall of 2000, opposer’s licensing program

4 Opposer did not submit copies prepared by the Office showing
current status of and current title to Registration Nos. 2436781
and 2419153. Accordingly, they are not of record and have not
been considered in this decision.

Opposition No. 91172880
6
focused on the word mark AUDUBON, while also licensing a
logo version of the mark.5 (Pinto Tr. pp. 21-24).
Opposer’s licensing program is designed to promote brand
awareness for the AUDUBON name and also to generate revenue
for opposer. (Pinto Tr. p. 23). The channels of
distribution of opposer’s licensed products include
specialty stores as well as lawn and garden retailers, mass
market stores which include stores such as Target and Ace
Hardware, direct to consumers, catalog sales and Internet
sales. Estimated retail sales of such products for the year
ending 2006 (i.e., the most recent fiscal year at the time
of the Pinto deposition) was $41 million based on the sale
of over 3 million units of licensed produce. (Pinto Tr. pp.
34-35). One of the core categories of opposer’s licensing
program is backyard and gardening, which encompasses any
item that can be used in a backyard or garden. (Pinto Tr.
p. 25 and 36). Opposer and its licensees have sold a wide
variety of products in the backyard and gardening category
which pre-date applicant’s constructive first use date of
June 2005, including bird feeders and related accessories,

5 The “logo” version of mark is:

Opposition No. 91172880
7
thermometers, trellises6, squirrel baffles, butterfly
feeders, ladybug, bat and butterfly houses, branch hooks,
clamp-on hooks, wall brackets, window hangers, extension
hooks, thistle socks, wild bird food, binoculars, birdbaths,
garden sculptures, decorative fountains, and plants for
outdoor living. (Pinto Tr. pp. 50-55, 61-65, 70-71, 73-74,
77-78, 80-82, 89-91). Net sales (wholesale) of licensed
products in the backyard/garden category since 2000 have
exceeded $60 million. (Pinto Tr. pp. 37-38 and Ex. 10).
Further, opposer promotes its AUDUBON AT HOME program, which
encourages consumers to employ the best practices in their
backyards, including planting native species. (Pinto Tr. p.
13-16). This program is featured on opposer’s website,
which receives approximately 100,000 individual visits each

6 Ms. Pinto particularly stated with regard to opposer’s common
law use of the AUDUBON mark on trellises as follows:
Q I am going to show you what has been premarked as
Plaintiff’s Exhibit 18.
Can you identify this document?
A Yes. This is a catalog of Audubon products as produced
by Woodlink.
Q Do all of the products bear the Audubon mark?
A Yes.
Q Are the products listed here also contained in the
license agreement?
A Yes.
***
Q I am going to refer you to the last page of Exhibit 19.
Can you identify what it is?
A Yes. It is the hang tag or the product tag for the
Audubon trellis as produced by Woodlink.
Q And what is the trellis made of?
A Metal.
Q Do you recall the date of first sale of that trellis in
commerce.
A My recollection is May of 2005.
Opposition No. 91172880
8
month, and in brochures distributed by the retail partners
of opposer’s licensees. (Id.) In addition, since 1941,
opposer has published a magazine entitled AUDUBON. This
magazine, which focuses on conservation issues and reports
on opposer’s activities, is published six times annually and
has a readership of 1.6 million people. (Pinto Tr. pp. 17-
20).
Inasmuch as applicant did not take testimony or
introduce any other evidence during its testimony period,
there is little information about applicant or its business.
STANDING

An opposer must have “a ‘real interest’ in the outcome
of a proceeding in order to have standing.” Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999). The record shows that opposer, through its
licensees, manufactures and distributes backyard and garden
products, including trellises and live plants under the
AUDUBON mark, and in view of opposer’s pleading of a
reasonable claim of likelihood of confusion, we consider
there to be no issue regarding opposer’s standing. Ritchie
v. Simpson, supra; and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). In
addition, because opposer has properly made thirty-nine of
its forty-one pleaded registrations of record, opposer has
established its standing. Cunningham v. Laser Golf Corp.,
Opposition No. 91172880
9
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries v. Ralston Purina, supra.
ANALYSIS-Priority and Likelihood of Confusion
Before beginning our discussion, we note that opposer
has pleaded ownership of forty-one registrations in its
notice of opposition, and proven all but two of these.7
Among the proven registrations is Registration No. 2345272
for the mark AUDUBON, in typed format, for “live plants and
seedlings,” in Class 31. In its brief on the case, opposer
focuses its arguments in favor of finding a likelihood of
confusion on its backyard and garden products, particularly
trellises, garden sculpture, decorative fountains and
plants.8 In analyzing likelihood of confusion, we will
likewise focus our discussion on the AUDUBON GARDEN and
design mark and recited goods vis-à-vis the AUDUBON mark for
backyard and garden products, namely, trellises and plants,

7 The registrations cover a wide variety of goods and services,
including, birdhouses, bird feeders, bird seed, walking sticks,
clocks, pillows, clothing, field guides, travel services,
financial services, wildlife and environmental conservation
services and related scientific research and association
services, namely promoting public interest in wildlife
preservation and environmental conservation.

8 Opposer pleaded common law use of the mark AUDUBON on
trellises and common law use of the marks AUDUBON and NATIONAL
AUDUBON SOCIETY and design on garden sculpture, decorative
fountains and planters. While opposer’s first use of the
NATIONAL AUDUBON SOCIETY and design mark on or in connection with
garden sculpture and decorative fountains predates May 2005,
opposer’s first use of the AUDUBON mark on those goods does not.
We also note that it is unclear from this record whether
opposer’s use of the NATIONAL AUDUBON SOCIETY and design mark on
those goods has been continuous.
Opposition No. 91172880
10
those goods being most relevant to applicant’s “garden
ornaments namely, urns and vases made of glass, terra cotta,
porcelain and non-precious metal; planters for flowers and
plants; statues made of china, crystal, earthenware, glass
and porcelain.”
Priority
To establish priority on a likelihood of confusion
claim brought under Trademark Act § 2(d), a party must prove
that, vis-à-vis the other party, it owns "a mark or trade
name previously used in the United States ... and not
abandoned...." Trademark Act Section 2, 15 U.S.C. § 1052.
A party may establish its own prior proprietary rights in a
mark through ownership of a prior registration for the mark,
actual use of a mark or through use of the mark analogous to
trademark use, such as use in advertising brochures, trade
publications, catalogues, newspaper advertisements and
Internet websites which create a public awareness of the
designation as a trademark identifying the party as a
source. See Trademark Act §§ 2(d) and 45, 15 U.S.C. Section
1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d
1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel
Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
Because opposer’s registrations for the AUDUBON Marks have
been made of record, except as noted in footnote 4, Section
2(d) priority is not an issue with respect to the goods and
Opposition No. 91172880
11
services identified in those registrations, particularly,
live plants and seedlings. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In addition, the record is clear that opposer first
used its AUDUBON mark on trellises prior to June 6, 2005,
the filing date of applicant’s involved application.9
Consequently, priority rests with opposer as to trellises.
Applicant mistakenly contends that it owns prior rights
in the AUDUBON name for garden products because it filed the
opposed application prior to opposer’s filing of Application
Serial No. 78725864 for the mark AUDUBON for garden and
backyard products. As noted above, proof of prior use by
opposer may be used to establish Section 2(d) priority, so
that the filing date of opposer’s application is
unimportant.
Likelihood of Confusion
Turning to our discussion of the issue of likelihood
confusion, our determination thereof is based on an analysis
of all 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). In

9 Inasmuch as applicant did not take testimony or otherwise
submit proof that it has commenced use of the mark AUDUBON GARDEN
and design mark, the earliest date upon which applicant is
entitled to rely in this proceeding for purposes of priority is
the filing date of the involved intent-to use application, i.e.,
June 6, 2005. See Zirco Corp. v. American Telegraph and
Telephone Co., 21 USPQ2d 1542 (TTAB 1991).
Opposition No. 91172880
12
considering the evidence of record on these factors, we keep
in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We first consider the du Pont factors which pertain to
the similarity or dissimilarity of the goods, classes of
purchasers and channels of trade. The registrability of
applicant’s mark must be determined on the basis of the
identification of goods as set forth in the involved
application and pleaded Registration No. 2345272. See e.g.,
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian
Imperial Bank v. Wells Fargo Bank, supra. And, because
opposer additionally relies on common law rights acquired
through use of its mark, the goods for which opposer has
established prior rights. Herein, the goods at issue are
applicant’s garden ornaments namely, urns and vases made of
glass, terra cotta, porcelain and non-precious metal;
planters for flowers and plants; and statutes made of china,
crystal, earthenware, glass and porcelain vis-à-vis
opposer’s live plants and seedlings and trellises.
Opposer argues that the parties’ goods are close
complementary products sharing the same backyard and garden
Opposition No. 91172880
13
classification and usage.10 Applicant, on the other hand,
argues that the goods identified in its application are
“specifically different from the gardening and backyard
goods covered under the AUDUBON mark.” (Brief p. 6). It is
a general rule, however, that goods need not be identical or
even competitive in order to support a finding of likelihood
of confusion. Rather, it is enough that the goods are
related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which would give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and the cases cited therein.
In this case, both applicant’s goods and opposer’s
goods are backyard and gardening products that will be sold
alongside one another in garden stores and nurseries to
weekend gardeners looking to improve their yards. We thus
find that opposer’s and applicant’s goods are either, in
part, closely related, i.e., applicant’s urns, vases, and

10 Opposer also alluded to its ownership of a family of marks as
further support for a finding that the goods are related. This
argument has not been considered because it was neither pleaded
nor supported by the record.

Opposition No. 91172880
14
planters and opposer’s trellises are all apparatus used to
grow plants, or complementary in nature, i.e., applicant’s
urns, vases and planters being containers used for growing
opposer’s plants and seedlings. See Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (likelihood of confusion must be found if there
is likely to be confusion with respect to any item that
comes within the identification of goods in the
application).
Moreover, as identified, neither party’s identification
of goods contains any limitations or restrictions as to
types of purchasers or channels of trade. Thus, contrary to
applicant’s contention, we must presume that the parties’
goods move in all channels of trade that would be normal for
such goods, including, through garden centers, home
improvement stores and mass merchandise stores, and that the
goods would be purchased by the same class of purchasers
i.e., ordinary purchasers seeking to beautify and maintain
their yards. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
In addition, the channels of trade and classes of purchasers
of applicant’s goods would overlap with those of opposer’s
trellises, both goods being sought by consumers seeking
products for growing plants. The du Pont factors of the
similarity of the goods, the similarity of the trade
Opposition No. 91172880
15
channels and the similarity of the purchasers thus favor
opposer.
With respect to the conditions under which the parties’
goods would be purchased, applicant argues that “Opposer’s
membership base possesses a certain level of expertise and
[members] are likely to exercise a great deal of care when
examining and purchasing products” and that “[i]n addition,
Opposer has stated that their ‘licensees work very hard at
getting distribution for their line [and t]he buyers are
familiar with the AUDUBON line in association with the
national organization.’” (Brief at 9 quoting Pinto Tr. p.
106). That may well be the case. However, opposer’s plants
and trellises are relatively inexpensive items that will be
sold to the general public at large, and are not sold only
to members of opposer’s organization. There is no evidence
of record to show that these ordinary customers have any
expertise with regard to these products or that more than
ordinary care is needed to select them. Thus, this du Pont
factor is neutral or slightly favors opposer.
The next du Pont factor to consider is the fame of
opposer’s AUDUBON mark. The fame of a prior mark plays a
dominant role in likelihood of confusion cases featuring a
famous mark. Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); and Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
Opposition No. 91172880
16
350, 22 USPQ2d 1453 (Fed. Cir. 1992). Opposer claims that
its mark is “extremely strong” and thus entitled to a broad
scope of protection. The evidence of record establishes
that opposer’s AUDUBON Marks have been in use for over a
century; that opposer has offices in at least 25 states; and
that opposer publishes a magazine under the mark with a
readership of 1.6 million people. The record also shows
that opposer’s revenue for the years 2000 through 2006
totaled almost $500 million and, in particular, that since
2000, net sales (wholesale) of licensed products bearing the
AUDUBON Marks in the backyard and garden category have
exceeded $60 million. Further, the record shows that
opposer’s programs directed to consumers in the backyard
category, i.e., AUDUBON AT HOME, receive substantial
exposure through opposer’s advertising efforts such as on
its website and in its brochures. These facts are
sufficient to establish that opposer’s mark is a strong one,
particularly with respect to its environmental conservation
services.
We now consider applicant's mark AUDUBON GARDEN and
design and opposer’s mark AUDUBON. In determining the
similarity or dissimilarity of the marks, we must, as
applicant points out, consider the marks in their entireties
in terms of sound, appearance, meaning and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Opposition No. 91172880
17
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
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 their entireties that
confusion as to the source of the goods or services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general, rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant argues that when the marks are considered in
their entireties, there are “significant dissimilarities”
between its mark and Opposer’s mark (i.e., the additions of
the word “garden” and the floral design as well as the
script font and color in its mark), such that “this is case
where a single du Pont factor may be dispositive in a
likelihood of confusion analysis.” (Brief p. 5). Opposer,
by comparison, argues that given the parties’ shared use of
AUDUBON, it being the dominant portion of applicant’s mark,
there is a close similarity between the parties’ marks
creating a likelihood of confusion.
Although we must compare the marks in their entireties,
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
Opposition No. 91172880
18
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, (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.). For instance, “that a particular
feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark….”
Id, 224 USPQ at 751.
We find that the dominant and distinguishing portion of
applicant’s mark AUDUBON GARDEN and design is the word
“AUDUBON.” The word GARDEN, as evidenced by the disclaimer,
is merely descriptive, and would not be looked to as a
source-identifying element. Indeed, the term is used by
applicant in its identification to categorize its products.
In addition, although applicant stresses the font style of
the words “Audubon Garden” as a distinguishing feature,
because registrant’s mark is registered in typed format,
registrant’s rights therein encompass the word “Audubon” and
are not limited to the depiction thereof in any special
form. See Phillips Petroleum Co. v. C. J. Webb, Inc. 442
F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Instead, when a
registration for a word mark is in typed form, “then the
Board must consider all reasonable manners in which … [the
Opposition No. 91172880
19
word] could be depicted.” INB National Bank v. Metrohost
Inc., 22 USPQ 1585, 1588 (TTAB 1992). Therefore,
registrant’s mark must be regarded as including the display
thereof in the same lettering style used by applicant, since
such would be a reasonable manner of display and there is no
showing by applicant that the lettering format is unusual or
otherwise unique. Moreover, the color elements of
applicant’s mark are insufficient to avoid a likelihood of
confusion; the colors green, mauve and red, being common to
flowers, thus serve to further emphasize the nature of
applicant’s products.
Nor do we find the border and floral design sufficient
to distinguish applicant’s mark from the registrant’s mark.
It is settled that with a composite mark comprising a design
and words, the word portion of the mark is usually the one
most likely to indicate the origin of the goods to which it
is affixed. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 200 (Fed. Cir. 1983); In re Dakin’s Miniatures, Inc.,
59 USPQ2d 1593 (TTAB 2001) [“words are normally accorded
greater weight because they would be used by purchasers to
request the goods”]; In re Nat’l Data Corp., 753 F.2d at
1056. The border, even though displayed in a mauve color,
has minimal visual impact, merely serving to frame the
literal element and floral design. Further, the colored
Opposition No. 91172880
20
floral design, simply enhances the meaning of the wording
AUDUBON GARDEN.
The dominant portion of applicant’s mark AUDUBON is
identical to opposer’s mark. As such, purchasers of
backyard and garden products who are familiar with opposer’s
AUDUBON mark may view applicant’s AUDUBON GARDEN and design
mark as a variant thereof, and that such mark identifies a
line of products sponsored by or approved by opposer.
While differences admittedly exist between the marks when
viewed on the basis of a side-by side comparison, for the
reasons discussed above, we find that they are substantially
similar in sound, appearance, connotation and convey the
same overall commercial impression. See Palm Bay Imports
Inc. v. Veuve Clicuot Ponsardin, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). Accordingly, the du Pont factor of
similarity of the marks favors opposer.
We next consider the circumstances surrounding
applicant’s adoption of its mark. It is well settled that a
party which knowingly adopts a mark similar to one used by
another for closely related goods does so at its own peril
and, all doubt on the issue of likelihood of confusion must
be resolved against the newcomer. Nina Ricci S.A.R.L. v.
E.T.F. Enterprises, 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.
1989); Kimberly Clark Corp. v. H. Douglas Enterprises, Ltd.,
774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985); and Gillette
Opposition No. 91172880
21
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 9TTAB 1992).
Although we do not find that applicant’s earlier
solicitation of opposer to license opposer’s AUDUBON Marks
for a different selection of goods establishes a clear case
that applicant adopted its AUDUBON GARDEN and design mark in
bad faith, we find it noteworthy that out of an entire
universe of marks to choose from in naming its garden
ornaments, applicant chose a mark that incorporates one
previously used by opposer in connection with other types of
backyard and garden products. Nonetheless, given the other
factors in opposer’s favor in this case, we make no finding
as to bad faith and this factor is not dispositive in our
ruling for opposer.
ADDITIONAL ARGUMENT
A final argument made by applicant requires comment.
Applicant argues that the fact that the examining attorney
found no potential conflict between applicant’s mark and
opposer’s marks is evidence that issuance of a registration
to it would not cause any harm to opposer or injure its
reputation. It is well settled, however, that the Board is
not bound by the decisions of the examining attorney. See
Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres
Inc., 56 USPQ2d 1538, 1541 (TTAB 2000); and In re Sunmarks,
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).

Opposition No. 91172880
22
CONCLUSION
We have considered all relevant evidence in this case
bearing on the du Pont factors and, for the reasons
discussed above, conclude that there is a likelihood of
confusion between opposer’s AUDUBON mark and applicant’s
AUDUBON GARDEN and design mark. We conclude so principally
because the goods are closely related and/or complementary
and the marks are similar in appearance, sound, connotation
and overall commercial impression.

Decision: The opposition is sustained and registration
to applicant is refused.