Organic Nutrition, Inc.

Trademark Trial and Appeal Board

Apr 15, 2020

88211849 (T.T.A.B. Apr. 15, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Organic Nutrition, Inc.
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Serial No. 88211849
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Sean L. Sweeney and Taylor A. Noonan of Tredecim LLC,
for Organic Nutrition, Inc.
Mark T. Mullen, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Wellington, Lykos, and Greenbaum,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Organic Nutrition, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark shown below for “lettuce, fresh” in International Class 31.1

1 Application Serial No. 88211849, filed November 30, 2018, based upon Applicant’s claim of
a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b). The application contains the following description of the mark: “The mark consists
of the word ‘green’ in the color green, the word ‘life’ is in the color blue, and the word farms
is in the color black, there is an old style blue truck with black wheels under the words. The
entire logo image is on a white background.” The colors green, blue, black, and white are
claimed as features of the mark.
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The word FARMS has been disclaimed.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
GREEN LIFE (in standard characters) on the Principal Register for “canned fruits
and vegetables” in International Class 29.2
Applicant requested reconsideration and appealed to this Board after the refusal
was made final. The Examining Attorney denied the request for reconsideration and
this appeal resumed. The Examining Attorney and Applicant filed briefs. We affirm
the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for

2 Registration No. 5059856 issued on October 11, 2016.
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which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks
Under the first DuPont factor, we compare Applicant’s mark with the cited
registered mark “in their entireties as to appearance, sound, connotation and
commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
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Cir. 2012) (quoting du Pont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005). “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), aff’d mem., 777 F. App’x (Fed. Cir. 2019). (citation omitted). Accord
Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”) (citation omitted). The test is not whether the marks can be
distinguished in a side-by-side comparison, but instead whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation
omitted). Further, marks “‘must be considered … in light of the fallibility of memory
….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See St. Helena Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). In this case, the
average purchaser is anyone in the general public doing grocery shopping.
Here, we find Applicant’s mark, GREENLIFE FARMS (stylized with the pickup
truck design) is overall very similar to the registered mark GREEN LIFE because
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they share the term or wording GREEN LIFE. In fact, Registrant’s entire mark is
essentially incorporated into Applicant’s mark. This obviously makes the marks
aurally similar as well as visually to a certain extent. The presence or absence of a
space between the words GREEN and LIFE is of no real consequence. Stockpot, Inc.
v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576,
222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties
[STOCKPOT and STOCK POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical.”); In re Best Western Family
Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that
the marks [BEEFMASTER and BEEF MASTER] are practically identical . . . .”).
Although GREENLIFE in Applicant’s mark appears in the colors green and blue,
and color is claimed as a feature of the mark, this makes little difference because
Registrant’s mark, GREEN LIFE, is a standard character mark and is not limited to
any particular font style, size or color. We must contemplate the possibility that
Registrant’s mark will appear in the same or similar color scheme as that in
Applicant’s mark. See In re Viterra Inc., 101 USPQ2d at 1909-10; Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.
2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (literal
elements of standard character marks may be presented in any font style, size
or color).
There is no express rule that marks are automatically found similar when a junior
user's mark contains the whole of another prior mark; however, the fact that the cited
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registered mark is subsumed by Applicant's mark increases the similarity of the two.
See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging
diagnostic apparatus is similar to TITAN for medical ultrasound diagnostic
apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
(applicant’s mark MACHO COMBOS for food items confusingly similar to MACHO
for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD
PETTY'S ACCU TUNE for automotive service centers confusingly similar to ACCU-
TUNE for automotive testing equipment). In this case, the similarity between the
marks is exacerbated because GREENLIFE appears first and is the only inherently
distinctive literal term in Applicant’s mark. As such, it “is most likely to be impressed
upon the mind of a purchaser and remembered,” Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) and Palm Bay Imps., 73 USPQ2d at
1692, whereas the merely descriptive and disclaimed wording that follows plays a
lesser role in forming the mark’s overall commercial impression. 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 term CAFÉ lacks sufficient distinctiveness to create a
different commercial impression). The disclaimed word in Applicant’s mark, FARMS,
appears below in a smaller font and has little source-identifying significance because
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it is merely descriptive of Applicant’s goods. The addition of the term FARMS thus
does little for purposes of distinguishing the marks.3
We have given full consideration to the pickup truck design in Applicant’s mark.
Indeed, it features prominently and helps form the overall commercial impression of
Applicant’s mark. Nevertheless, we also keep in mind that with marks “consisting of
words and a design, the words are normally accorded greater weight because they are
likely to make a greater impression upon purchasers, to be remembered by them, and
to be used to request the goods.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181,
1184 (TTAB 2018) (citing In re Viterra Inc., 101 USPQ2d at 1908). That is, should
consumers become familiar with Applicant’s mark, they will likely use GREENLIFE
FARMS (and perhaps shorten this to GREENLIFE) when later calling for or referring
to the goods. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises both a word and a design, then the word
is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant's mark shares with registrant's
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”). This is the same wording that consumers will
obviously use to call for Registrant’s goods.
In terms of connotation or commercial meaning, the wording GREEN LIFE has
no demonstrated meaning in connection with the involved goods. This shared term,

3 We note the evidence submitted by the Examining Attorney in support of the disclaimer
requirement in the initial Office Action, issued on January 22, 2019.
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however, may be understood by consumers in both marks, either in connection with
Applicant’s fresh lettuce and Registrant’s canned fruit and vegetables, as being
suggestive of the freshness or healthful nature of the food items. With respect to
Applicant’s mark, in particular, the addition of a vintage pickup truck design and the
term FARMS may conjure a retro, small farm connection. Even if consumers become
familiar with Applicant’s mark and understand it as connoting a particular small
farm, they may also believe that Registrant’s mark identifies the same source, albeit
without the term FARMS and without the pickup truck design.
Viewing the marks in their entireties, as we must, we find they are overall similar.
The points of dissimilarity are outweighed by the fact that Applicant’s mark not only
essentially incorporates the entirety of the registered mark, but also uses the same
term as its initial and dominant word element. Accordingly, this DuPont factor
supports a finding of a likelihood of confusion.
B. Relatedness of the Goods

We now consider the relatedness of the goods and, in doing so, make our
determination based on the goods as they are identified in the application and cited
registration. See In re Dixie Rests. Inc., 41 USPQ2d at 1534; see also Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As to the relatedness of the goods,
in particular, “[t]his factor considers whether ‘the consuming public may perceive [the
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respective goods of the parties] as related enough to cause confusion about the source
or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). It
is not necessary that the respective goods be identical or even competitive in order to
find that they are related. The respective goods need only be “‘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
source.”’ Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Again, Applicant intends to use its mark on fresh lettuce whereas the cited
registration covers canned fruits and vegetables.
The Examining Attorney argues that the respective goods are “closely related
vegetable products.”4 In support, he submitted Internet evidence showing three
different entities, Dole, Del Monte, and Gordon Food Service, using the same mark
on or in connection with fresh lettuce and canned fruits and vegetables.5 This
evidence includes:

4 9 TTABVUE 9.
5 Attached to Office Actions dated January 22, 2019 and June 13, 2019.
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;6

6 Attached to Office Action issued on January 22, 2019, at TSDR pp. 4-9.
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;7 and

7 Attached to Office Action issued on June 13, 2019, at TSDR pp. 4-9.
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.8

8 Id., at TSDR pp. 10-12.
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We find the above evidence shows a relationship between the involved food items.
It shows that Dole uses the same mark, DOLE stylized with sun design, on all of the
fresh lettuce packages as well as on cans of fruit and vegetables. Del Monte uses its
stylized DEL MONTE logo on canned vegetables and uses the same mark to advertise
itself as a source for fresh iceberg and romaine lettuce. The printouts from the Gordon
Food Service show that Applicant’s and Registrant’s goods may be offered through
the same channels of trade, namely, restaurant supply companies – Gordon touts
itself as providing “A complete range of fresh, frozen and canned restaurant-quality
fruits and vegetables . . . and are sure to delight your customers either as a
centerpiece or a company to any meal.” In other words, we must consider the
possibility that a company, such as Gordon Food Supply, may furnish restaurants
with Registrant’s GREEN LIFE-branded canned fruit or vegetables and also offer
Applicant’s fresh lettuce under its proposed mark.
Applicant argues that the Registrant’s “entire product catalogue includes
exclusively packaged goods” and that “where registrant’s use of the registered mark
expands beyond the canned fruits and vegetables recited in the registration, the
registered mark is used on additional canned goods (canned coconut milk), which are
even further removed from applicant’s recited goods.”9 Applicant also relies on
evidence it submitted and argues that Registrant’s goods are “primarily imported
Asian foods … sold in an entirely separate trade channel, such as specialized ethnic
grocery stores” and, accordingly, “they could not and would not sell the fresh

9 7 TTABVUE 14.
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lettuce.”10 This argument ignores the fact that the canned fruit and vegetables are
not identified in the registration with limitations on any specific cuisine or trade
channels. As we have long and often pointed out, the Board may not rely on extrinsic
evidence to limit the scope of goods identified in the cited registration. E.g., In re Dixie
Restaurants Inc., 41 USPQ2d at 1534 ; In re Fisher Scientific Co., 440 F.2d 43, 169
USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 SPQ2d 1645, 1646 (TTAB
2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). In other
words, we must assume these are the same canned food items being offered by Dole
and Del Monte as well as those offered to restaurants by Gordon Food Company.
C. “Additional Considerations”
Finally, we address Applicant’s argument that “additional considerations weigh”
in its favor.11 Specifically, Applicant contrasts the involved goods in this case with
those in Martin’s Famous Pastry Shoppe where, as Applicant notes, “the court took
notice that bread and cheese are often used in combination and ‘that the association
of identical trademarks with these products is likely to produce confusion when the
products are not of common origin,’” citing In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).12 Applicant argues that its
goods and those of Registrant are “not related, nor would they be marketed in such a
way that they would be encountered by the same persons in situations that would

10 Id. at 16.
11 Id. at 17.
12 Id.
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create the incorrect assumption that the goods originate from the same source.”13 This
argument, or any distinction between circumstances herein with those Martin’s
Famous Pastry Shoppe, fails to persuade us that there are any additional
considerations that may weigh in Applicant’s favor. As already stated, the involved
goods need not be complementary (like bread and butter) or even competitive with
one another, but only “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 source.” Coach Servs., 101 USPQ2d at 1722. And
again, as discussed supra, we have made such a finding based on the evidentiary
record.
D. Conclusion
We have considered all of the arguments and evidence of record, and all
relevant DuPont factors. Here, we have found the marks are overall quite similar,
based largely in part on Applicant’s incorporation of the registered mark into the one
it seeks to register, and our finding that the involved goods are related. Indeed, no
factor weighs in favor of finding confusion not likely. Thus, we conclude that confusion
is likely to occur between Applicant’s mark and Registrant’s mark.
Decision: The refusal to register Applicant’s mark is affirmed.

13 Id.