Carolina Precision Fibers, Inc.

Trademark Trial and Appeal Board

Mar 25, 2011

No. 77660112 (T.T.A.B. Mar. 25, 2011)

Mailed: March 25, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Carolina Precision Fibers, Inc.
________

Serial No. 77660112
_______

Nathan P. Suedmeyer of Larson & Larson, P.A. for Carolina
Precision Fibers, Inc.

Linda E. Blohm, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Holtzman, Kuhlke and Wolfson, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Carolina Precision Fibers,
Inc. to register the mark MULCH & GROW PREMIUM CELLULOSE MULCH
(in standard character form) for goods ultimately identified as
"mulch, namely, a hydro-mulch manufactured from newsprint and
used in industrial hydroseeding applications" in Class 31.1 The
words MULCH and PREMIUM CELLULOSE MULCH are disclaimed.

1 Serial No. 77660112, filed on January 30, 2009 based on an allegation
of first use and first use in commerce on July 1, 2008.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77660112
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark shown below for "soil conditioner with plant
food" in Class 1, as to be likely to cause confusion.2 The word
MULCH is disclaimed in the registration.

When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative 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, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).

2 Registration No. 1327785, issued to Shawnee Milling Company on April
2, 1985; renewed.
Serial No. 77660112
3
Similarity or Dissimilarity of the Goods,
Trade Channels, Purchasers

In our evaluation of these du Pont factors, we are required
to focus on the goods as identified in the application and cited
registration. In the absence of any restrictions or limitations,
we must assume the goods are sold through all the normal trade
channels to all the usual purchasers of such goods, regardless of
what any extrinsic evidence might show the actual nature of the
goods or their channels of trade or purchasers to be. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987); and CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Applicant's goods are identified as "mulch, namely, a hydro-
mulch manufactured from newsprint and used in industrial
hydroseeding applications." Registrant's goods are identified as
"soil conditioner with plant food."
Applicant maintains that its goods are "significantly
dissimilar and unrelated" to registrant’s goods. Applicant
argues that its products "are for a specific type of hydro-mulch
used in industrial hydroseeding applications" which, as shown in
its product brochure, is "purchased by the hydroseeding
Serial No. 77660112
4
industry." In this regard, applicant points to an entry from
wikipedia.org describing "hydroseeding" as "a planting process
which utilizes a slurry of seed and mulch that is transported in
a truck-mounted or trailer-mounted tank and sprayed over the
ground." Applicant states that its product is applied in large-
scale industrial projects such as golf courses, new home lawn and
landscaping, road landscape construction and sports fields, and
that the application of the product involves industrial-level
trucks, spray application devices, and other commercial
equipment. In contrast to applicant's goods, according to
applicant, registrant's product, as shown on its product
packaging, is for small-scale gardening uses "to improve soil
quality" and fruit and vegetable quality and yields. Applicant
argues that while applicant's products are used by sophisticated
clients in the hydroseeding industry, registrant's customers are
likely individuals who will use registrant's goods in their
personal gardens.
To be clear, applicant's product is essentially "mulch."
The term "Hydro-mulch" refers to the way in which the mulch is
distributed, i.e., that it is "spread...on (a field, garden,
etc.) in a stream of water propelled through a hose."3 As

3 Random House Unabridged Dictionary (1997) (infoplease.com). We take
judicial notice of this definition, as well as the definitions of
"conditioner," "lime" and "plant food" discussed later in this opinion.
The Board may take judicial notice of online dictionaries which exist
in printed format or have regular fixed editions. See Boston Red Sox
Serial No. 77660112
5
described in the identification, applicant's mulch is used in
hydroseeding applications, and as shown in its product brochure,
its product is provided to "the hydroseeding industry." However,
based on the identification of goods, the product itself is not a
"slurry of mulch and seed," nor is the product described that way
in applicant's product brochure. As described in applicant's
brochure, the product is "mulch" ("Like all of our products this
mulch is manufactured using the highest quality cellulose
fibers").
The examining attorney has submitted a dictionary definition
of "mulch" as "a protective covering (as of sawdust, compost, or
paper) spread or left on the ground to reduce evaporation,
maintain even soil temperature, prevent erosion, control weeds,
enrich the soil, or keep fruit (as strawberries) clean."4 "Soil
conditioner" is similarly used to improve or "enrich" the soil.
We note the definition of "conditioner" as meaning "One that
conditions, especially an additive or application that improves
the quality or usability of a substance: a soil
conditioner;...."5 In addition to improving the soil,
registrant's soil conditioner, as shown on its packaging,

Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n. 8 (TTAB 2008).
See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
4 Merriam-Webster OnLine (merriam-webster.com).
5 The American Heritage Dictionary of the English Language (retrieved
from credoreference.com).
Serial No. 77660112
6
performs many of the other functions of mulch, including
"Conserving moisture, Reducing soil temperature, ... Control
weeds, ... Add [a] 'clean' cover to the soil...." In fact,
registrant's soil conditioner with plant food is identified on
its package as "mulch" ("SOIL CONDITIONER WITH PLANT FOOD: A
scientifically formulated mulch with the added advantage of plant
nutrients.").6
We find that applicant's mulch and registrant's soil
conditioner are similar products with overlapping uses and
functions. At a minimum, the respective goods are closely
related, complementary products. The examining attorney has
submitted a number of use-based, third-party registrations
showing that the same mark has been adopted for both types of
products. These registrations include, Reg. No. 3390312 (WE ARE
NATURE'S HELPER); Reg. No. 2660082 (LIGHTWARRIOR); Reg. No.
3491304 (GREENCYCLE); and Reg. No. 3214144 COUNTRYSIDE ACCENTS;
each of which covers "mulch" as well as "soil conditioners."
Although third-party registrations are not evidence that the
marks shown therein are in use or that the public is familiar
with them, they nevertheless have some probative value in that

6 We may properly refer to extrinsic evidence to determine or clarify
the meaning of terms in an identification of goods. See In re
Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990). Once those
meanings are established, we determine the issue of likelihood of
confusion based on the description of goods in the application and
registration, even if the extrinsic evidence results in a broad scope
of goods. See In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009).
Serial No. 77660112
7
they serve to suggest that the goods listed therein may emanate
from a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Moreover, applicant itself produces a form of soil
conditioner that is offered to its customers as an additive for
its mulch product. As stated in its brochure, applicant "has
developed a line of three associated products that our customers
need under certain local conditions." One product, called "E Z
LIME," is described as "Our highly concentrated liquid lime...."
"Lime" is defined as "(calcium oxide, CaO) used as a soil
conditioner,"7 and "for improving soil: a form of calcium that is
added to soil with a low calcium content."8 Ultimately, both
types of products, mulch and soil conditioner, may be
used together in hydroseeding mixes and applications.9
The addition of "plant food" to soil conditioner does not
differentiate the goods. "Plant food" is simply "fertilizer."10

7 Academic Press Dictionary of Science and Technology (1996)
(credoreference.com).
8 Encarta World English Dictionary (2009) (encarta.msn.com).
9 Applicant submitted over 100 pages of information from registrant's
website (shawneemilling.com) to support its contention that registrant
"is in the business of producing baking food products and animal feed
products" and that applicant's goods "are not associated" with these
products. Suffice it to say that whatever other products registrant
may produce has no bearing on the question of likelihood of confusion
in this case or whether the respective goods in this case are related.
10 Merriam-Webster (2011) (m-w.com). See also WordNet 3.0 (2006)
(dictionary.reference.com) ("any substance such as manure or a mixture
of nitrates used to make soil more fertile [syn: fertilizer]").
Serial No. 77660112
8
According to an article submitted by applicant entitled "How
Hydro Seeding Works!,"11 fertilizer "is usually used in the
[hydroseeding] mix."
Applicant argues that the scope of registrant's goods has
been "erroneously broadened," disputing the examining attorney's
contention that registrant's goods, used for personal gardens,
could be used in the field of industrial hydroseeding
applications; and relying on a number of infringement cases,
applicant argues that in comparing the goods, applicant's "actual
goods" should be compared with registrant's "actual goods."
It is well established that, in contrast to an infringement
action where the court evaluates the marks in the context of
actual use, in proceedings before the Board, as noted above,
actual use is not relevant. See also Jim Beam Brands Co. v.
Beamish & Crawford, Ltd., 937 F.2d 729, 19 USPQ2d 1352 (2d Cir.
1991). Furthermore, there is no limitation in the identification
as to use of registrant's soil conditioner, and nothing inherent
in the description of goods which would limit registrant's goods
to small-scale gardening uses or to preclude their use in
hydroseeding applications.
As we also noted earlier, absent any restrictions in the
registration, we must presume that registrant's goods are offered
in all the normal channels of trade for those goods and to all

11 Applicant did not identify a source for this article.
Serial No. 77660112
9
the usual purchasers. Because the goods are similar or closely
related and there are no restrictions in the registration, we
must assume that the trade channels and purchasers for the goods
would at least overlap, and that the hydroseeding industry who
would be the customers for applicant's mulch would also be
prospective purchasers of soil conditioner with plant food.
Similarity or Dissimilarity of the Marks
We turn next to a consideration of the marks in their
entireties in terms of sound, appearance, meaning and commercial
impression. See du Pont, supra. See also Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005).
The test under this du Pont factor 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 terms of
their overall commercial impressions that confusion as to the
source of the goods 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).
While marks must be compared in their entireties, one
feature of a mark may have more significance than another, and in
such a case there is nothing improper in giving greater weight to
Serial No. 77660112
10
the more significant feature. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The wording MULCH & GROW is the dominant portion of
applicant's mark, and MULCH 'N GROW is a significant part of
registrant's mark. These words are essentially identical in
sound since the ampersand in applicant's mark is the phonetic
equivalent of the 'N in registrant's mark. Further, MULCH &
GROW/MULCH 'N GROW are identical in meaning and create the same
commercial impression. The ampersand and the term "'N" both
denote "and," and the substitution of one notation for the other
in the marks is an inconsequential difference that is not likely
to be noticed or remembered by purchasers when encountering these
marks at separate times.
The words PREMIUM CELLULOSE MULCH in applicant's mark and
SHAWNEE in registrant's mark add additional syllables to the
marks as applicant points out. However, these words are not
sufficient to distinguish the marks as a whole in terms of sound,
and their presence in the marks does not change the meaning or
commercial impression conveyed by the words MULCH & GROW/MULCH 'N
GROW in any significant way. The wording PREMIUM CELLULOSE
MULCH, which has been disclaimed by applicant, is at least highly
descriptive of the goods and its commercial impact is minimal.
See National Data, 224 USPQ at 751. The term SHAWNEE, taken from
registrant's corporate name, will likely be viewed as a house
Serial No. 77660112
11
mark and therefore, as simply identifying what had previously
been an anonymous source for the goods. See In re Fiesta Palms
LLC, 85 USPQ2d 1360, 1364 (TTAB 2007).
Any differences between the marks due to the additional word
elements become even less significant when we consider the
appearance of the marks. MULCH 'N GROW visually dominates
registrant's mark. It is set apart from the house mark "Shawnee"
and prominently displayed in large, bold lettering as the focal
point of the mark. Because applicant is seeking registration of
the mark in standard character form, in comparing the marks we
must consider all reasonable manners in which applicant could
depict its mark. See Phillips Petroleum v. C.J. Webb, 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971). See also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000) (typed drawings are not limited to any particular rendition
of the mark). Applicant could reasonably depict its mark in a
manner that is highly similar to registrant's mark by displaying
MULCH & GROW in the very same style and format as registrant
uses, and minimizing the wording PREMIUM CELLULOSE MULCH. In
fact, applicant actually emphasizes the MULCH & GROW portion of
its mark on its packaging for the goods.
We note the line of cases cited by the examining attorney
holding that the addition of a house mark to one of two otherwise
similar marks will not serve to avoid a likelihood of confusion.
Serial No. 77660112
12
See, e.g., In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB
1985) and cases cited therein. Applicant argues that in contrast
to the cited cases, applicant's mark "is not virtually the same
as Registrant's mark even when compared to Registrant's mark with
the wording SHAWNEE removed." The marks are not "virtually the
same," as applicant points out, but they are otherwise similar.
As we indicated, the only additional wording in applicant's mark
is PREMIUM CELLULOSE MULCH, which merely provides descriptive
information about applicant's product and does little to
distinguish the marks in any respect.
We also note that exceptions to this general rule have been
applied under circumstances where, for example, there are
recognizable differences in the shared term, or the appropriated
matter is highly suggestive or merely descriptive of the goods.
See In re Champion Oil Company, 1 USPQ2d 1920, 1921 (TTAB 1986).
Neither exception applies here. There are no recognizable
differences in the shared term, and while the word "Mulch" is
descriptive, contrary to applicant's contention, MULCH 'N GROW as
a whole is only suggestive of the goods. Furthermore, there is
no evidence that MULCH 'N GROW is so highly suggestive or
otherwise weak that the presence of the descriptive wording
PREMIUM CELLULOSE MULCH in applicant's mark and the house mark
SHAWNEE in registrant's mark would be sufficient to distinguish
these marks. See In re Fiesta Palms LLC, supra (TTAB 2007)
Serial No. 77660112
13
(confusion not avoided by addition of house mark CLUB PALMS to
shared term MVP in absence of evidence that MVP "is so highly
suggestive that the inclusion of [applicant's] house mark would
create significant differences"); compare Knight Textile Corp. v.
Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (confusion
avoided by addition of house mark NORTON McNAUGHTON to shared
term ESSENTIALS where the evidence, which included 23 third-party
registrations of ESSENTIALS for clothing, established that
purchasers are able to distinguish among various ESSENTIALS marks
by looking to other elements of the marks).
Even if the shared term is regarded as highly
suggestive and weak, it would not automatically mean that these
marks are not confusingly similar. "While we have, in certain
cases...treated the suggestiveness of a mark as a factor to be
considered in determining the question of likelihood of
confusion, each case must be determined on its own particular
facts and circumstances." The Frostie Company v. Sun-Glo
Packers, Inc., 315 F.2d 932, 137 USPQ 341, 342 (CCPA 1963). It
is well settled that even weak marks are entitled to protection
against registration of similar marks for closely related goods.
See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be
avoided as much between weak marks as between strong marks). See
also In re The Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA
Serial No. 77660112
14
1978) (ERASE for a laundry soil and stain remover confusingly
similar to STAIN ERASER, registered on the Supplemental Register,
for a stain remover); Gulf States Paper Corporation v. Hammermill
Paper Company, 135 USPQ 456, 458 (TTAB 1962) (HAMMERMILL E-Z
CARRY PAK and E-Z PAPER PAK for cardboard cartons confusingly
similar to opposer's marks E-Z PAK and E-Z CARI for paper
products although the marks were considered "highly suggestive"
and "weak"), aff'd, 337 F.2d 662, 143 USPQ 237 (CCPA 1964); In re
Chica Inc., 84 USPQ2d 1845, 1850 (TTAB 2007) ("even if the word
CORAZON, and its English translation, was considered to be highly
suggestive of jewelry, it nonetheless is entitled to protection
from the use of a very similar mark on jewelry products").
Because MULCH & GROW is the dominant portion of applicant's
mark, and the virtually identical term MULCH 'N GROW is a
prominent feature of registrant's mark, we find that there are
significant similarities between the marks in sound, appearance,
meaning and commercial impression, and that the similarities
between the marks outweigh the differences. Purchasers are
likely to view applicant's mark as simply a variation of
registrant's mark or assume that it identifies another product in
registrant's "Shawnee" line.
Conditions of Purchase
It is reasonable to assume that the overlapping purchasers
for applicant's and registrant's goods, i.e., the hydroseeding
Serial No. 77660112
15
industry, are likely to be sophisticated and knowledgeable about
those products, a point that would favor applicant. However,
even sophisticated purchasers would be susceptible to source
confusion, particularly under circumstances where, as here, the
goods are closely related and are sold under similar marks. See
In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
("Human memories even of discriminating purchasers...are not
infallible."). Thus, we find that this du Pont factor is
outweighed by all the other du Pont factors favoring a finding of
likelihood of confusion.
Conclusion
In view of the foregoing, and because similar marks are used
in connection with closely related goods, we find that confusion
is likely.
To the extent we have any doubt as to the likelihood of
confusion, we must resolve such doubt in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988) and In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d
918, 179 USPQ 729, 729-30 (CCPA 1973).
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.