National Nursery Products, Inc.

Trademark Trial and Appeal Board

Jun 6, 2001

No. 75672042 (T.T.A.B. Jun. 6, 2001)

6/6/01
Paper No. 8
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re National Nursery Products, Inc.
________
Serial No. 75/672,042
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John E. Vanderburgh for applicant.
Inga Ervin, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by National Nursery Products,
Inc. to register the mark shown below
(“NATIONAL NURSERY PRODUCTS” disclaimed) for “cooperative
advertising and marketing for others in the field of
horticultural products, promoting the services of the
horticultural industry through the distribution of printed
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/672,042
2
and audio promotional materials and by rendering sales
promotional advice” (in International Class 35), and
“horticultural services” (in International Class 42).1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark
NATIONAL NURSERIES, LTD. (“NURSERIES” disclaimed) for
“plants, namely, nursery stock including hanging baskets,
aglaonemas, brassaia, codiaemum, dieffenbachia, dracaena,
ficus, palms, spathiphyllum and yucca”2 as to be likely to
cause confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the Examining Attorney have filed
briefs.3 An oral hearing was not requested.
The Examining Attorney maintains that the marks are
dominated by virtually identical portions, “NATIONAL” and
“NURSERY/NURSERIES,” and that the design feature of
1 Application Serial No. 75/672,042, filed March 29, 1999,
alleging dates of first use of July 1, 1983. The application
includes the following statement: “The lining shown in the
drawing is not intended to indicate color.”
2 Registration No. 1,327,298, issued March 26, 1985 pursuant to
Section 2(f); Section 8 affidavit filed and accepted.
3 The final refusal under Section 2(d) was based on two cited
registrations. In her appeal brief, the Examining Attorney
withdrew the refusal based on Registration No. 1,883,816.
Accordingly, no consideration need be given thereto.
Ser No. 75/672,042
3
applicant’s mark does not sufficiently distinguish it from
registrant’s mark. As to the goods and services, the
Examining Attorney states that “[s]ince the identification
of applicant’s services is very broad, it is presumed that
the application encompasses all goods and services of the
type described, including those in the registrant’s more
specific identification, that they move in all normal
channels of trade and that they are available for all
potential customers.” (brief, p. 5).
Applicant argues that the marks are dissimilar and
that the portions common to both marks are weak. Applicant
also contends that the goods and services are different and
are offered to different classes of purchasers. More
specifically, applicant points out that its services are
rendered to garden centers and similar outlets to assist
them in the distribution and sale of horticultural
products, whereas registrant’s plants are sold to retail
customers. Applicant also asserts that its customers are
“not impulse buyers but businessmen who carefully consider
their purchases and who know the suppliers that they are
dealing with.” (brief, p. 11).
Before turning to the merits of the refusal, an
evidentiary matter requires our attention. In connection
with its argument that the cited registration is entitled
Ser No. 75/672,042
4
to a narrow scope of protection, applicant submitted, for
the first time with its appeal brief, a computer printout
retrieved from the Office’s TESS database showing listings
of third-party registrations. The Examining Attorney’s
brief is completely silent on this submission.
The record in an application should be complete prior
to the filing of an appeal, and the Board will ordinarily
not consider additional evidence filed with the Board after
the appeal is filed. Trademark Rule 2.142(d).
Nonetheless, evidence submitted after appeal may be
considered by the Board, despite its untimeliness, if the
nonoffering party (1) does not object to the new evidence,
and (2) discusses the new evidence or otherwise
affirmatively treats it as being of record. TBMP §1207.03
and cases cited thereat. In the present case, as indicated
above, the Examining Attorney made no reference to
applicant’s submission. Accordingly, the evidence attached
to applicant’s appeal brief does not form part of the
record on appeal and has not been considered in making our
Ser No. 75/672,042
5
decision.4
We now turn to the issue on appeal. Our determination
under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing
on the likelihood of confusion issue. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
With respect to the marks NATIONAL NURSERY PRODUCTS
and design and NATIONAL NURSERIES, LTD., there are obvious
similarities between the marks in sound and meaning. The
first words in the marks are identical, followed by
singular/plural versions of the same word. Although the
marks include the terms “PRODUCTS” and “LTD.,” these
4 We hasten to add that, even if considered, the printout
submitted by applicant would be entitled to little probative
weight. The problem is that the printout merely lists the
registrations with no reference to the particular goods and/or
services identified in the registrations. Thus, in many cases,
it is not known whether the registrations cover goods and/or
services in the horticultural field; in point of fact, some of
the registrations (e.g., “NATIONAL SPORTS MARKETING, INC.”) would
appear to be registered for goods and/or services entirely
unrelated to those involved in this appeal. In order to have
made any of the listed registrations of record, it was necessary
for applicant to submit a printout of the registration itself
that was retrieved from the TESS database.
Ser No. 75/672,042
6
generic designations hardly serve to distinguish the marks
in any meaningful way. Clearly, the literal portions of
the marks are dominated by the virtually identical terms,
NATIONAL NURSERY and NATIONAL NURSERIES, and the terms
convey virtually identical meanings. See: 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 [that] the ultimate
conclusion rests on a consideration of the marks in their
entireties...”]. Although applicant urges that the
registered mark is entitled to a narrow scope of
protection, we find, based on the record before us, that
this scope extends to protection against applicant’s mark.
In comparing the marks in terms of appearance, we have
considered the design portion of applicant’s mark. The
plant design reinforces the “NURSERY” portion of the mark.
We have considered the design portion in our comparison of
the marks, but we find that it is subordinate to the words
“NATIONAL NURSERY PRODUCTS.” The literal word portion will
be used to call for the services and will be the portion
most likely to be remembered by purchasers. See: In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Ser No. 75/672,042
7
In sum, the marks, when considered in their
entireties, engender similar overall commercial
impressions. It is the general overall commercial
impressions engendered by the marks that must determine,
due to the fallibility of memory and the consequent lack of
perfect recall, whether confusion as to source or
sponsorship is likely.
Insofar as the goods and services are concerned, we
start with the premise that it is not necessary that the
goods and services be identical or even competitive in
nature in order to support a finding of likelihood of
confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods and services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Further, the issue of likelihood of confusion must be
determined on the basis of the goods and services as they
are set forth in the involved registration and application.
See, e.g., Canadian Imperial Bank of Commerce v. Wells
Ser No. 75/672,042
8
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
When the goods and services are compared within the
legal constraints cited above, we find that they are
sufficiently related such that, when offered under similar
marks, confusion is likely to occur. Applicant would have
us conclude that its services are rendered only to garden
outlets whereas registrant’s goods are purchased by the
general public. Although this may be true, there are no
limitations as to trade channels and purchasers in either
the application or the cited registration. The specific
nature of some of applicant’s services (e.g., cooperative
advertising and marketing, and rendering sales promotional
advice), as worded in the recitation thereof, may indicate
that the services are directed to garden outlets. However,
the identified plants in the cited registration must be
assumed to move through all the normal channels of trade
for such goods, and would be offered to all types of
purchasers. Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed.
Cir. 1990). In the present case, we must assume that
registrant’s plants are sold to garden dealers, shops and
the like, that is, the same classes of purchasers to which
applicant’s services are offered.
Ser No. 75/672,042
9
We further note that applicant, in its specimen of
record, states that, among other things, it is “dedicated
to supplying the finest nursery stock available,” that it
takes orders for plants, including custom-grown varieties,
and delivers the plants to its customers, and that it will
provide plant care seminars for employees of its customers.
Such activities emanating from applicant suggest that the
services recited in the application are closely related to
plants and the sale thereof.
We acknowledge applicant’s point that garden shops and
similar retail outlets are run by businessmen who are
likely to be experienced and sophisticated in the
horticultural trade. Although this is a factor that weighs
in applicant’s favor, it is outweighed by the highly
similar marks and related goods and services. Given the
similarities discussed above, even the sophistication of
purchasers will not ensure against the likelihood of
confusion.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Ser No. 75/672,042
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Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.