Purina Mills, Inc.

Trademark Trial and Appeal Board

Sep 25, 2003

No. 76287712 (T.T.A.B. Sep. 25, 2003)

Mailed: September 25, 2003
Hearing: Paper No. 14
August 12, 2003 PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Purina Mills, Inc.
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Serial No. 76/287,712
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Matthew A. Rosenberg of Blumenfeld, Kaplan, Sandweiss, P.C.
for Purina Mills, Inc.
Mitchell Front, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Purina Mills, Inc. to
register the mark shown below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/287,712
2
for “bird food.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark BIRD LOVERS
COLLECTION, previously registered for “bird feeders and
accessories therefor, sold together as a unit, namely, seed
trays, hangers, poles, seed scoops and feed,”2 as to be
likely to cause confusion.3
Applicant has appealed. Briefs have been filed and an
oral hearing was held before the Board.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
1 Serial No. 76/287,712, filed July 20, 2001. The application is
based on an allegation of a bona fide intention to use the mark
in commerce. The word “BLEND” is disclaimed apart from the mark
as shown.
2 Registration No. 2,303,464, issued December 28, 1999. The word
“COLLECTION” is disclaimed apart from the mark as shown.
3 Registration was also finally refused on the ground that the
drawing of the mark was not acceptable as a typed drawing.
However, during the prosecution of the application and at the
oral hearing, the Trademark Examining Attorney indicated that the
drawing was acceptable as a special form drawing. Applicant’s
counsel, at the oral hearing, agreed to have the Office consider
the drawing as a special form drawing, rather than as a typed
drawing. This refusal, therefore, is moot.
Ser No. 76/287,712
3
likelihood of confusion factors set forth in In re E.I.
duPont de Nemours and 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. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We turn first to a consideration of the goods. It is
not necessary that goods be identical or even competitive
in nature to support a holding of likelihood of confusion.
It is sufficient if the respective goods 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. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The Examining Attorney, in support of his position
that bird food and bird feeders are related, has made of
record eleven use-based third-party registrations which
show that entities have registered a single mark for both
bird feeders and bird food.
Ser No. 76/287,712
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Although the third-party registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they have some probative
value to the extent that they serve to suggest that the
goods listed therein are of a kind which may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
Applicant asserts that a check of registrant’s web
site and an inquiry to registrant’s toll-free telephone
number reveal that registrant does not sell bird feed, only
bird feeders; and that applicant’s and registrant’s goods
travel in different channels of trade in that registrant’s
goods are available only through specialty retailers.
Applicant further argues that the purchasers of applicant’s
and registrant’s goods are sophisticated.
However, it is well settled that the issue of
likelihood of confusion is determined on the basis of the
goods as identified in the respective application and the
cited registration, regardless of what the record may
reveal as to the particular nature of those goods, their
actual channels of trade, or the class of purchasers to
whom they are in fact directed and sold. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1987). Because the
Ser No. 76/287,712
5
identification in the cited registration includes bird
feed, we must presume that the goods are, in part, legally
the same. Further, because registrant’s identification is
not limited to specialty retailers, we must deem
registrant’s goods to move in all normal channels of trade.
These channels would include all places bird feeders are
sold, including bird specialty stores, pet stores, home and
garden centers, and mass merchandisers. These are some of
the same channels of trade in which applicant’s bird food
would be sold. Thus, for purposes of our likelihood of
confusion analysis, applicant’s and registrant’s goods are
presumed to move in some of the same channels of trade.
Applicant also contends that the buying public for
bird feeders and bird food is sophisticated. Aside from
the fact that applicant has not submitted any evidence to
support this contention, even if such evidence were
properly of record, it would not affect our decision
herein. In this case, neither applicant’s nor registrant’s
identification is restricted as to class of purchasers.
Thus, we must assume that both applicant’s and registrant’s
goods are sold to ordinary consumers who simply enjoy
seeing birds and use bird feeders/bird food to attract
birds to their yards.
Ser No. 76/287,712
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We find therefore that applicant’s and registrant’s
goods are identical in part and otherwise closely related,
and would be offered through some of the same channels of
trade to the same classes of purchasers. Thus, it is clear
that if such goods were to be sold under the same or
similar marks, confusion as to source or sponsorship would
be likely.
Turning then to a consideration of the marks,
applicant raises several arguments. Applicant argues that
the addition of the words BLEND and COLLECTION to the
respective marks is sufficient to distinguish the marks;
that the marks have different connotations; and that the
marks look very different because applicant’s mark depicts
BIRDLUVERS as a single word and with the letter “U” instead
of the letter “O.”
Although we have carefully considered applicant’s
arguments, we agree with the Examining Attorney that when
applicant’s mark BIRDLUVERS BLEND (in stylized lettering)
and registrant’s mark BIRD LOVERS COLLECTION are each
considered as a whole, they are highly similar in overall
commercial impression.
Of course, it is the case that applicant’s and
registrant’s marks must be considered in their entireties,
including any disclaimed matter, since that is how the
Ser No. 76/287,712
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marks appear when they are used in the marketplace.
However, it is nonetheless appropriate, for rational
reasons, to regard certain features of the marks as being
more dominant or otherwise significant, and therefore to
give those features greater weight. Disclaimed or
otherwise descriptive matter, for instance, is generally
viewed as a less dominant or less significant feature of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751-52 (Fed. Cir. 1985).
Applying these principles to the marks at issue in
this case, it is clear that the term BIRD LOVERS is the
dominant portion of registrant’s mark. The disclaimed word
COLLECTION in registrant’s mark is descriptive of
registrant’s bird feeders and accessories. Similarly, the
term BIRDLUVERS is the dominant portion of applicant’s mark
and the disclaimed word BLEND is descriptive of applicant’s
bird food. Further, applicant’s depiction of BIRDLUVERS as
one word and with the letter “U” is not so unique as to
distinguish the marks. The terms BIRD LOVERS and
BIRDLUVERS are substantially similar in appearance and when
spoken BIRD LOVERS and BIRDLUVERS sound the same. Also,
although the differences in spelling would be apparent from
a side-by-side comparison of the marks, a side-by-side
comparison is not the proper test to be used in determining
Ser No. 76/287,712
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the issue of likelihood of confusion since it is not the
ordinary way that a prospective customer will be exposed to
the marks. Thus, in finding that the marks are similar, we
have kept in mind the normal fallibility of human memory
over time and the fact that the average purchaser retains a
general rather than a specific impression of trademarks
encountered in the marketplace. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
With respect to applicant’s contention that the marks
have different connotations, we recognize that registrant’s
mark BIRD LOVERS COLLECTION may connote that registrant’s
goods are a collection of products, i.e., bird feeders and
accessories. Applicant’s mark BIRDLUVERS BLEND, on the
other hand, connotes that the bird food is made up of a
blend of bird food. Nonetheless, both marks connote that
the respective products sold there under are for “bird
lovers.”
Purchasers who are familiar with registrant’s BIRD
LOVERS COLLECTION bird feeders are likely to believe, upon
encountering BIRDLUVERS BLEND bird food, that the bird food
is a companion product emanating from the same source as
the BIRD LOVERS COLLECTION bird feeders. In other words,
purchasers are likely to believe that BIRDLUVERS BLEND bird
food is for use with BIRD LOVERS COLLECTION bird feeders.
Ser No. 76/287,712
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Applicant’s remaining arguments are that there is no
evidence of any actual confusion and that there is no
evidence that registrant’s mark is famous. Although this
is an intent-to-use application, applicant states that its
mark has been in use since September 2001. This is a
relatively short period of time of contemporaneous use and
in the absence of any specifics about the extent of use of
applicant’s mark, it does not appear that there has been
any meaningful opportunity for incidents of actual
confusion to occur. Moreover, the issue before us is not
one of actual confusion, but only the likelihood of
confusion.
Finally, a mark need not be famous in order to be
entitled to protection against a confusingly similar mark.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000).
We conclude that in view of the substantial similarity
in the sound, appearance, connotation and overall
commercial impressions of applicant’s mark BIRDLUVERS
BLEND, and registrant’s mark BIRD LOVERS COLLECTION, their
contemporaneous use on the identical in part and otherwise
closely related goods involved in this case is likely to
cause confusion as to the source or sponsorship of such
goods.
Ser No. 76/287,712
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Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.