Proven Winners North America, LLC

Trademark Trial and Appeal Board

Feb 15, 2001

No. 74588425 (T.T.A.B. Feb. 15, 2001)

2/15/01
Paper No. 16
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Proven Winners North America, LLC
________
Serial No. 74/588,425
_______
James W. McClain of Brown, Martin, Haller & McClain for
Proven Winners North America, LLC.
Robert J. Crowe, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney)
_______
Before Simms, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Proven Winners North America, LLC, assignee of an
application originally filed by a joint venture doing
business as Proven Winners, has appealed from the final
refusal of the Trademark Examining Attorney to register
BUTTERFLY as a trademark for “living plants, namely
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 74/588,425
2
argeranthemums.”1 Registration has been refused pursuant to
Section 2(d), 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark BUTTERFLY GARDEN,
with the word GARDEN disclaimed, previously registered for
“flower seeds,”2 that, as used on applicant’s identified
goods, it is likely to cause confusion or mistake or to
deceive.
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
We affirm the refusal of registration.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
1 Application Serial No. 74/588,425, filed October 7, 1994, and
asserting first use and first use in commerce as of July 10,
1993.
2 Registration No. 1,992,273, issued August 13, 1996.
Ser. No. 74/588,425
3
Turning first to the goods, as we stated in In re
International Telephone and Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978), it is not necessary that the goods of the
parties be similar or competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer.
Here, there is an obvious relationship between the
flower seeds identified in the cited registration and
living plants, namely argeranthemums, which are identified
in the application. The specimens show that applicant’s
argeranthemums are daisies, and clearly live daisy plants
are grown from seeds. Moreover, the Examining Attorney has
made of record a significant number of third-party
registrations which show that many different entities have
registered their marks both for goods of the type listed in
applicant’s application and for goods of the type recited
Ser. No. 74/588,425
4
in the registrant’s registration.3 Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Despite this evidence, applicant argues that the
companies which sell live plants are different from the
companies which sell flower seeds, and that only a few
large companies sell in both fields. The support for this
position appears to be a statement in the declaration of
John Rader, an operator of one of the companies which was
part of the joint venture which filed the original
application, that customers “recognize that seed companies
and living plant vendors are different entities.” However,
we do not read Mr. Rader’s declaration as stating that
companies which produce living plants do not produce flower
seeds, or that only large companies produce both.
Moreover, the position asserted in applicant’s brief would
appear to be contradicted by the third-party registrations,
3 See, for example, Registration No. 2,157,033 for THE FLOWER
FIELDS for “live flowers, live plants, live bulbs and seeds for
agricultural purposes”; Registration No. 2,160,904 for MERRYGRO
for, inter alia, live horticultural plants including flowering
annuals, and flower seeds; and Registration No. 2,106,714 for
PARK’S COUNTRYSIDE GARDENS for, inter alia, live plants and
flower seeds.
Ser. No. 74/588,425
5
which indicate that a number of entities are the source of
both living plants and of seeds. There is no indication in
the record that all of these entities are large companies.
Applicant also asserts that living plants and flower
seeds are sold through different channels of trade. Again,
however, the evidence of record which it has submitted
belies this point. Mr. Rader’s declaration acknowledges
that there is an overlap between seeds and living plants at
“some nurseries and home centers.” Thus, although such
goods may also be sold in separate channels of trade, there
are at least two channels of trade in which both products
are sold. And although the declaration asserts that
customers come to nurseries and home centers “almost
entirely” to buy living plants, clearly if these outlets
also offer seeds, some customers also purchase seeds at
these places of business.
Applicant, through Mr. Rader’s declaration, also
asserts that most purchasers of seeds or living plants “are
relatively sophisticated about the products.” Even if we
accept Mr. Rader’s assessment that “most” purchasers are
sophisticated about the products, it is common knowledge
that there are many homeowners who are weekend gardeners
who grow gardens from seeds, and who may also plant living
flowering plants in such gardens or buy such plants to
Ser. No. 74/588,425
6
beautify the inside of their homes. There are even
apartment dwellers who do such plantings in window boxes,
and may also have living flowering plants in pots or
baskets. In this connection, we note from applicant’s
specimens that its argeranthemum plants may be grown in
baskets, beds, pots and window boxes. Thus, although some
purchasers of flower seeds and living plants are avid
gardeners who are sophisticated about these products, there
are a significant number of more casual purchasers. These
purchasers are not likely to, as Mr. Rader asserts,
“recognize that seed companies and living plant vendors are
different entities.” Moreover, as noted above, applicant
itself acknowledges that large companies sell in both
fields.
Accordingly, we find that applicant’s and the
registrant’s identified goods are closely related products
which travel in some of the same channels of trade and are
sold to the same classes of consumers, consumers which
include the public at large.
With respect to the marks, applicant’s mark is
BUTTERFLY and the cited mark is BUTTERFLY GARDEN. Although
we disagree with the Examining Attorney’s assessment that
BUTTERFLY is the dominant element of the registered mark
and instead find that this is a unitary mark, there is no
Ser. No. 74/588,425
7
doubt that the word BUTTERFLY, as the first word of the
mark, is a noticeable element. Because of the prominent
presence of this word, the marks as a whole are similar in
appearance and pronunciation. Moreover, both marks convey
similar connotations in that both suggest that the goods on
which the marks are used attract butterflies.
The various excerpts from Internet websites submitted
by applicant indicate that “butterfly garden” is a
recognized term for flowers that attract butterflies. See,
for example:
Grow a Butterfly Garden
Many butterflies and moths visit
flowers for food. But each type of
butterfly likes some plants more than
others. You can plant flowers that
will attract butterflies that live in
your area. Daisies, phlox, petunias
and lavender will bloom in May or Early
June in many areas. If your garden
doesn’t bloom early enough, the plants
can be taken home in pots for a summer
activity.
Scholastic.com/magicS...mes/teacher/but
terflies/garden
Staff Celebrates Butterfly Garden
Opening
Staffers and friends of the
Smithsonian’s Horticulture Services
Division who took a leading role in
opening of the National Museum of
Natural History’s Butterfly Habitat
Garden
Photo2.si.edu/bfly/bflybuild
Ser. No. 74/588,425
8
Attract Butterflies to your own
backyard!
This simple and unique 8 page booklet
contains everything you need to know
about creating a successful butterfly
garden. Included in the booklet is a
butterfly seed mix that contains nectar
and host plant seeds.
www.butterflyevents.com/book
Consumers, seeing each of the marks in the context of the
goods, will understand that the registrant’s flower seeds
will produce flowers that attract butterflies, and that
applicant’s argeranthemum plants will do the same. In this
connection, we note that the Scholastic website states that
daisies are flowers that attract butterflies, and
applicant’s plant, according to the specimens, produces
bright yellow daisies.
Applicant argues that the registered mark is entitled
to a limited scope of protection because of the meaning of
the term “butterfly garden.” Although the evidence shows
that BUTTERFLY GARDEN is a highly suggestive term for
flower seeds, we think that the scope of protection to be
accorded this mark, however limited, is still broad enough
to prevent the registration of the similar mark BUTTERFLY
for closely related goods. We also point out that there is
Ser. No. 74/588,425
9
no evidence of record as to any third-party registrations
of BUTTERFLY marks.4
Accordingly, we find that applicant’s mark BUTTERFLY
for living plants, namely, argeranthemums, is likely to
cause confusion with BUTTERFLY GARDEN for flower seeds.
Decision: The refusal of registration is affirmed.
4 In fact, the only third-party BUTTERFLY mark reflected in this
record, BUTTERFLY BOUQUET, was the subject of only an
application, and that application was opposed by the owner of the
cited registration. The opposition was sustained by the Board,
and the application was abandoned.