Farm Fleet Supplies, Inc.v.Blain Supply Inc.

Trademark Trial and Appeal Board

Aug 13, 2013

No. 91196469 (T.T.A.B. Aug. 13, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Farm Fleet Supplies, Inc.

v.

Blain Supply, Inc.
_____

Opposition No. 91196469
to Application Serial Nos. 77894710, 77894766 and 77894812
_____

Eric O. Haugen of Haugen Law Firm PLLP for Farm Fleet Supplies, Inc.

Nancy B. Johnson and George K. Steil, Jr. of Brennan Steil SC for Blain Supply,
Inc.
______

Before Zervas, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant Blain Supply, Inc. (“Blain Supply” or “applicant”) seeks
registration of the mark FARM & FLEET, in standard character format and with
FARM disclaimed, for
On-line retail store services featuring animal supplies,
farm supplies, agricultural products, automotive parts
and supplies, hardware goods, home improvements,
Opposition No. 91196469

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appliances, electronics, hand tools, power tools,
housewares, lawn and garden supplies, outdoor power
equipment, sporting goods, hunting equipment, camping
equipment, toys, clothing, commercial cleaning supplies,
food, furniture, and holiday decorations (the “Online
Services”);1 and

Retail store services featuring animal supplies, farm
supplies, agricultural products, automotive parts and
supplies, hardware goods, home improvements,
appliances, electronics, hand tools, power tools,
housewares, lawn and garden supplies, outdoor power
equipment, sporting goods, hunting equipment, camping
equipment, toys, clothing, commercial cleaning supplies,
food, furniture, and holiday decorations (the “Retail Store
Services”).2

Applicant also seeks registration of BLAIN’S FARM & FLEET, in standard
character format and with FARM disclaimed, for its Online Services.3 In each of
the three involved applications, applicant claims ownership of prior registrations,
including BLAIN’S FARM & FLEET in typed form, with a claim of acquired
distinctiveness under Section 2(f) as to FARM & FLEET, but no disclaimer,4 and

1 Application Serial No. 77894766, filed December 16, 2009, alleging first use dates of
October 27, 2009.
2 Application Serial No. 77894812, filed December 16, 2009, alleging first use dates of
June 1, 1955.
3 Application Serial No. 77894710, filed December 16, 2009, alleging first use dates of
October 27, 2009.
4 Registration No. 3009930, issued November 1, 2005 from an application filed
January 28, 2003.
Opposition No. 91196469

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with a disclaimer of “‘FARM’ OR ‘FLEET,’” but no claim of acquired
distinctiveness,5 both for, inter alia, applicant’s Retail Store Services.
In its notices of opposition,6 opposer Farm Fleet Supplies, Inc. (“opposer”)
alleges that since 1962 it has used FARM FLEET and NORBY’S FARM FLEET for
retail store services identical to applicant’s Retail Store Services, that it “has a real
commercial interest in fully and fairly utilizing the term ‘farm fleet’, as well as the
term[s] ‘farm & fleet’ and ‘farm and fleet’” and that it will be damaged if FARM &
FLEET is registered or if BLAIN’S FARM & FLEET is registered without a “full”
disclaimer of FARM & FLEET. Notices of Opposition ¶¶ 2-3. As grounds for
opposition, opposer alleges that FARM & FLEET is merely descriptive of and
generic for applicant’s services. In its answers, applicant “admits that FARM &
FLEET is descriptive,” Answers ¶ 3, but alleges that the term has acquired
distinctiveness, and otherwise denies the salient allegations in the notices of
opposition.
I. The Record
The evidence of record consists of the pleadings, the files of the opposed
applications and the following:
• opposer’s notices of reliance (“NOR”) Nos. 1-3, filed
March 26, 2012 (TTABVue Docket #’s 12-14) and 4, filed
November 29, 2012 (TTABVue Docket # 30), which
include: corporate filings, trademark registrations and

5 Registration No. 2852826, issued June 15, 2004 from an application filed January
28, 2003.
6 Although opposer filed a consolidated opposition against the three involved
applications, its filing consisted of three separate notices of opposition, and applicant in
turn filed three separate answers.
Opposition No. 91196469

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filings, newspaper articles, press releases, blog and
Internet postings, website printouts, business listings and
SEC filings;

• applicant’s NOR Nos. 1-4, filed October 15, 2012
(TTABVue Docket #’s 25-29), which include opposer’s
responses to certain of applicant’s interrogatories
(“Opposer’s Int. Resp.”) and requests for admission
(“Opposer’s RFA Resp.”), portions of the discovery
depositions of Paula Norby, Constance Norby, Gregory
Norby and Eric Haugen and certain exhibits thereto,
printouts from Office records relating to certain of
applicant’s uninvolved registrations, website printouts
and newspaper articles;

• opposer’s testimonial depositions (TTABVue Docket
# 31, ) of Constance Norby, one of opposer’s founders and
currently a buyer and consultant for opposer (“C. Norby
Tr.”) and Paula Norby, who has financial, human
resources, computer and general management
responsibilities for opposer (“P. Norby Tr.”), and the
exhibits thereto;

• applicant’s testimonial depositions (TTABVue
Docket #’s 32-43 and 45-54) of Philip Johnson, applicant’s
expert witness (“Johnson Tr.”), Richard R. Zeckmeister,
Vice President of North America Marketing and Planning
for Briggs and Stratton Corporation (“Zeckmeister Tr.”),
Stewart C. Mills, Jr. of Mills Fleet Farm (“Mills Tr.”),
Brian Ziegler, applicant’s Vice President of Management
Information Systems (“Ziegler Tr.”), Renee Tarnutzer,
who handles aspects of applicant’s marketing and website
operations (“Tarnutzer Tr.”), William C. Schendt,
applicant’s Chief Financial Officer and secretary-
treasurer (“Schendt Tr.”), Robert Blain, applicant’s
President (“Blain Tr.”), Jane Blain Gilbertson, applicant’s
Executive Vice President (“Gilbertson Tr.”) and David
Scott Schansberg, applicant’s Vice President of Marketing
(“Schansberg Tr.”) and the exhibits thereto.

Opposition No. 91196469

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II. The Parties
Opposer is an Iowa corporation which was formed in 1962. At that time
opposer operated a retail store known as “Norbys – Farm Fleet Supplies” which sold
automotive, electrical and farm supplies, hardware and plumbing. C. Norby Tr. at
3-7; P. Norby Tr. at 4 and Ex. 11. The store is now known as Norbys Farm Fleet.
Id. Opposer and its affiliates (hereinafter “opposer”) currently operate 10 retail
stores, nine in Iowa and one in Kentucky, which offer the same types of products as
the original store. C. Norby Tr. at 4, 19-21.
Like opposer, applicant and its affiliated corporations (hereinafter
“applicant”) also operate a family-owned chain of retail stores, and, like opposer,
applicant also initially offered automotive and farm supplies, and still does. Blain
Tr. at 7-9; Schendt Tr. Exs. 67-68. Applicant’s first store opened in 1955 in
Janesville, Wisconsin and at that time began using the mark FARM & FLEET.
Applicant currently operates 35 FARM & FLEET stores, all of which are in
Wisconsin, Illinois or Iowa. Id. at 7-11; Gilbertson Tr. at 6 and Ex. 57. Like “big
box” stores such as Walmart and Target, applicant’s stores now offer an exceedingly
wide variety of products, including sporting goods, apparel, housewares, lawn and
garden equipment, furniture, toys, pet supplies, plumbing, hardware and other
products. Blain Tr. at 12-21; Gilbertson Tr. at 7-10. While applicant’s original
customers were primarily members of the “farm community,” applicant’s customer
base is now much broader, as applicant has stores in urban and other areas which
also serve general consumers, i.e. members of the general public. Gilbertson Tr. at
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21-22; Blain Tr. at 20. Applicant began offering products for sale online in 2009 on
a limited basis, and its online efforts were successful to the point that applicant now
offers tens of thousands of products online, to customers throughout the country.
Gilbertson Tr. at 33-34.
It is not coincidental that opposer and applicant both use marks including the
word FLEET. Both are currently and have long been members of a buying
cooperative known as Mid-States, which enables the parties to offer discounts to
customers, something which was difficult at the time the parties went into business
because of certain “fair trade” laws in place at the time. In order to offer discounts
without violating these fair trade laws, opposer and applicant offered a similar
program, under which owners of a “fleet” of vehicles, which could include
automobiles, tractors or even lawnmowers or other tools with engines, were
permitted to purchase at a discount if they had a “fleet card.” As Mr. Blain
testified:
… In Wisconsin they had fair trade laws that prevented
retailers from selling at a discount unless they had a
stipulated reason to do so, and thereby my father and
uncle instituted a card system where a customer would
register to get a card and there were certain questions
that they had to fill out, and if they were given the
answers that would allow my father and uncle to sell
them at a discount based on the fair trade laws, they were
given a card for a discount.

Blain Tr. at 30. As Ms. Blain Gilbertson testified:
… This was actually a card that allowed basically a
membership card that allowed our customers at that time
to shop at a discount. And if they could prove they had
five engines, and it could be everything from a lawn
Opposition No. 91196469

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mower to a composter to a tractor, they were allowed to
receive this membership card and then shop at a discount.
… It was a state law that didn’t allow retailers to sell at a
discount directly to a consumer. The workaround was if
you had five engines, presumably, you were more of a
business, so that allowed people to buy at a discount.

Gilbertson Tr. at 28-29; see also, Mills Tr. at 6-12. Opposer’s Constance Norby gave
similar testimony regarding opposer’s program:
We had a card and a customer would come in and they’d
fill out this thing that said they had five engines so – and
it could be a lawn mower included but I mean that would
be – that would make – that would be fleet and so when
they got that card, they could buy at a better price.

C. Norby Tr. at 21. See also Gilbertson Tr. at 22-23 and Ex. 61 (book entitled
“Blain’s Farm & Fleet® 50 Years of Keeping Family Values in a Family Business,”
produced in connection with applicant’s 50th “anniversary”).
III. Evidence on Genericness, Descriptiveness and Acquired
Distinctiveness

A. Opposer

In support of its claims of genericness and descriptiveness, opposer relies
upon corporate filings and Internet printouts revealing third party trade names, as
well as statements incorporating “farm and fleet” or variations thereof in annual
reports, news articles and promotional and other materials, as follows:
Business Name Revealed In
Corporate Filing/Internet Printout
Citation
Highland Tire Farm & Fleet (Ohio)

Opposer’s NOR Nos. 1, 3
Farm and Fleet Field Service, LLC (Missouri)

Opposer’s NOR No. 1
Hilliard Auto Farm and Fleet, Inc. (Ohio) Opposer’s NOR Nos. 1, 3
Quality Farm & Fleet (Pennsylvania) (Michigan), Opposer’s NOR Nos. 1, 3
Opposition No. 91196469

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(Ohio), (Indiana), (Virginia) (New York)
Dinsmore Farm and Fleet (Ohio) Opposer’s NOR Nos. 1, 3
Dave’s Farm & Fleet Service (Michigan) Opposer’s NOR No. 3
Farm & Fleet (Indiana) Opposer’s NOR No. 3
Farm & Fleet Restoration (Indiana) Opposer’s NOR No. 3
Farm & Fleet Supply (Minnesota) Opposer’s NOR No. 3
G&A’s Diesel, Farm & Fleet Services (Michigan) Opposer’s NOR No. 3
Mike’s Farm & Fleet Repair (Ohio) Opposer’s NOR No. 3
Ok Farm and Fleet Store (North Dakota) Opposer’s NOR No. 3
Pete-Co Farm & Fleet (NY) Opposer’s NOR No. 3
Rossi’s Tire & Auto Service, Farm & Fleet
(California)
Opposer’s NOR No. 3
Sedam Farm & Fleet Tire Service (New York) Opposer’s NOR No. 3
Steve’s Farm & Fleet (Indiana) Opposer’s NOR No. 3
Wisner Farm Fleet, Inc. (Louisiana) Opposer’s NOR No. 3

There is no evidence in the record regarding whether or how extensively these
corporate names are currently in use, or regarding the extent to which consumers
have been exposed to these trade names. In fact, opposer’s attorney, who conducted
the searches that revealed these business names, did not verify that any of the
companies were still in existence or that the listings were accurate. Applicant’s
NOR No. 3 (Haugen Tr. at 12-13). Furthermore, Quality Farm & Fleet is no longer
in existence. Zeckmeister Tr. at 24; Mills Tr. at 32-33.
Opposer also relies on the following statements in Securities and Exchange
Commission and corporate filings:
Source and Statement Citation
Doane Pet Care Company Annual Report for fiscal year
ended January 1, 2005

Part I, General: “Our private label customers primarily
include mass merchandisers, grocery chains, farm and
fleet companies and pet specialty stores. We refer to each
of these customer types as a channel….A majority of our
regional brand sales are to the grocery and farm and
Opposer’s NOR No. 1
Opposition No. 91196469

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fleet channels.”

Part I, Customers: “Our store brand customers in the
United States include mass merchandisers such as
WalMart, Inc., pet specialty stores such as PETSMART,
grocery chains such as Food Lion, Kroger, Royal Ahold
and Safeway, and farm and fleet stores such as Tractor
Supply, Mid-States and Land O’ Lakes Purina Feeds.”

Thermadyne Holdings Corp. Annual Report for fiscal
year ended December 31, 2003

“U.S. sales are organized based upon our two channels,
the industrial channel … and the specialty markets
channel, which includes mass merchandisers,
automotive after-market, catalogs, farm and fleet,
heating, ventilation and air conditioning, plumbing and
medical home healthcare distributors.”

Opposer’s NOR No. 1
Mark IV Industries Inc. Annual Report for February 28,
1999

“Mark IV Automotive provides a vast array of
automotive belts, hose and accessories to automotive
warehouse distributors, oil companies, original
equipment service centers, retail and auto parts chains,
mass merchandisers, farm and fleet stores, and
hardware distributors.”

Opposer’s NOR No. 1
Organic Sales & Marketing Inc. Quarterly Report for
June 30, 2011

“On March 10, 2011 the Company entered into an NDA
(Non-disclosure Agreement) with a large Farm and Fleet
distributor to enter into a discussion concerning certain
Company technologies …”

Revenue Projections: “The 2011 projections have been
made on a product category basis with 82% of projected
revenues coming from a combination national
distributors in the Federal government, military,
laboratory, commercial and industrial sectors, grocery,
farm & fleet, private label, hotel & hospitality, and the
remaining from a combination of website and radio ad
Opposer’s NOR Nos. 1, 4
Opposition No. 91196469

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sales …”
Global Dynamics Corp. Form 8-K March 19, 2010

“The team was successful in placing products in many of
the large retail outlets in the United States. These
included, are not limited to, Big Box retailers,
Warehouse Clubs, Hardware Chains, Farm and Fleet,
and many others.
Opposer’s NOR No. 1
Astec Sales Trade Name, Trademark Details recorded
with Louisiana Secretary of State

“Type of Business: Retail, Wholesale, Farm and Fleet,
AG and Feed Coops, Hardware Sales
Opposer’s NOR No. 1
Orchard Supply Hardware Stores Corp. Prospectus

“The increase in Non-Dealer sales in 2011 is due to
strong results in the sporting goods channel ($1.6
million) and the farm and fleet channel ($0.9 million) …
The farm and fleet channel increase is attributable to …”
Opposer’s NOR No. 4
TriMas Corp. Analyst Day printout from SEC website,
May 13, 2010

“Focused on serving the retail market and the Do-It-
Yourself consumer
Retail channels served: Mass Merchants,
Hardware/Home Centers, Farm/Fleet, Auto Retail …”
Opposer’s NOR No. 4
Land O’ Lakes, Inc. 2008 Annual Report, printout from
SEC website, September 26, 2012

“Feed continued its focus on building brand strength in
2008, successfully launching the Purina brand
integration in lifestyle feed and leveraging a creative
distribution strategy to penetrate new or expanded
market spaces, including 64 new Farm and Fleet stores.”
Gilbertson Tr. Ex. 66
Printout from “harmanstoves.com” website, September
24, 2012

“They can be purchased at hardware stores, farm and
fleet stores, and in big box outlet stores.”
Gilbertson Tr. Ex. 66
Printout from “realviewdigital.com” website, September
27, 2012

“Market Directions recently concluded a comprehensive
analysis for an agribusiness client to better understand
Gilbertson Tr. Ex. 66
Opposition No. 91196469

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how large property owners influence the Farm and Fleet
channel …”

Again, there is no evidence in the record regarding the extent to which the relevant
public has been exposed to these statements.
Opposer further relies on the following statements in news articles and
promotional materials:7
Source and Statement Citation
John Caulfield, “Big farm & fleet dealers merge,” Home
Channel News, April 19, 1999

“Consolidation continues in farm and fleet retailing, as
that sector’s second-and-third largest dealers are
merging to improve their position against a broad swatch
of retail competitors nationwide. … Farm and fleet stores
have spruced up appearances and product assortments
to compete for what has become a customer base that has
changed dramatically, as more city dwellers move
farther into exurbs and rural areas, but expect the same
products and services they got in more populated
markets. …”
Opposer’s NOR No. 2
Sean Sexton, “Farm & Fleet Stores Graze Home
Improvement Pasture,” Home Channel News, May 22,
2000

“Incursions by home centers into smaller markets put
pressure on these mostly rural dealers.

Opposer’s NOR No. 2

7 While some of opposer’s evidence is of a type not generally permitted to be
introduced by notice of reliance, much of that evidence was printed from the Internet and
meets the requirements set forth in Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031
(TTAB 2010). It is therefore admissible and has been considered. However, a small
number of articles and printouts opposer submitted fail to meet the requirements for
submission by notice of reliance and are also not admissible under Safer, and have
therefore been given no consideration. Certain duplicative evidence, such as materials
indicating where Wrangler products may be purchased, which were apparently written by
the same source, has only been listed once. One article describing an event in a foreign
country has been given no consideration.
Opposition No. 91196469

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Even as larger home improvement dealers encroach on
their rural markets, farm and fleet retailers continue to
resist adding substantially to their assortments of
hardlines and building products. However, subtle
concessions are being made by these dealers to
accommodate the product and service expectations of
suburbanites and city dwellers who are migrating to the
country.”
“Orgill carves a spot in farm and fleet distribution,”
Home Channel News, August 2, 2007

“The farm and ranch category by many accounts is a
bright spot on the retailing landscape. On the recently
published Home Channel News Top 500 Scoreboard, the
farm and ranch segment – making its first appearance
on the list as a stand-alone retail category – led all other
segments in growth with a 10.2 percent jump over the
previous year. … ‘So if you look at the locations, they all
kind of point inward to the heart of our nation,’ said
Brake. ‘This is prime farm and ranch territory.’”
Opposer’s NOR No. 2
Bob Vereen, “Analyzing the Diversified American
Hardware/Home Center Marketplace,” IMEX Exchange,
December 1, 2009

“… One of the more interesting class of retailers in
America these days is what is called ‘Farm & Fleet’ or
farm/ranch stores – stores located either in suburbia or
smaller towns and focusing on serving the needs of
regular farmers or so-called ‘gentlemen farmers,’ who
maintain small acreage for gardens and some crops.
These retailers, headed by Tractor Supply, fared far
better, on average, than most of the other kinds of
retailers listed. They carry basic hardgoods, plus larger
power equipment and other needs of the farm/ranch
trade.”
Opposer’s NOR No. 2
“Western Leader Supports U.S. Veterans, Launches
Wrangler® National Patriot™ Program,” Wrangler
Western Wear Press Release, December 12, 2009

“About Wrangler: Wrangler Western Wear apparel is
available nationwide in specialty stores, including work
apparel chains, farm & fleet, and western stores, as well
as through on-line and catalog retailers.”
Opposer’s NOR No. 2
Iowa City Craigslist listing for boots, September 24, 2011 Opposer’s NOR No. 2
Opposition No. 91196469

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“All I know for sure is that if they fit you, you’ll save
almost $50 compared to buying a new pair in a farm and
fleet store.”
Printout from “maplecrestfarmky.com” website,
November 10, 2011

List of sponsors, including Purina Mills, the description
of which states “Sold through an extensive network of
independent dealers and farm and fleet retailers, there is
a great chance that you are never far from a Purina Feed
dealer.”
Opposer’s NOR No. 2
Printout of article from “homechannelnews.com” website,
“Tractor Supply digs into expansion plans,” June 11,
2008

“At an investors’ conference Wednesday, Tractor Supply
CEO Jim Wright described the company’s growth plans
and explained an expense management program
designed to help the farm and fleet retailer succeed in
tough times.”
Opposer’s NOR No. 2
Printout of article from “homechannelnews.com” website,
“Same-store sales up 1.9 percent at Tractor Supply,”
October 31, 2007

“Farm and fleet retailer Tractor Supply saw third-
quarter earnings of $17.5 million ….”
Opposer’s NOR No. 2
Printout of article from “homechannelnews.com” website,
“Tractor Supply names new board member,” August 10,
2007

“Nashville, Tenn.-based farm and fleet retailer Tractor
Supply ….”
Opposer’s NOR No. 2
Ken Clark, “15 Points About the Top 500,” Home
Channel News, June 15, 2008

“Farm and fleet stores fared even better. Combined
sales increased 13.1 percent for the 31 farm and fleet
companies on the Top 500.”
Opposer’s NOR No. 2
Printout of “Environmental Lubricants Manufacturing,
Inc. Company Overview” from “businessweek.com”
website, January 26, 2012

“Environmental Lubricants Manufacturing, Inc. provides
Opposer’s NOR No. 2
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biobased lubricants, greases, and metalworking fluids. It
offers retail greases for retail, farm and fleet, and
hardware stores ….”
Printout of “Sencret Chemical Co., Inc. Company
Overview” from “businessweek.com” website, January
26, 2012

“Its products are distributed through hardware, home
center, mass merchant, food and drug, farm and fleet,
and independent garden center retailers in the United
States.”

Opposer’s NOR No. 2
Printout of “Doane Pet Care Company Company
Overview” from “businessweek.com” website, January
26, 2012

“Doane Pet Care serves mass merchandisers, retailers,
grocery chains, farm and fleet companies, and pet
specialty stores.”

Opposer’s NOR No. 2
Printout from “researchandmarkets.com” website
entitled “US top 10 farm and fleet retailers by 1999 sales
in dollars, with number of stores for 1999 and sales for
1998”
Opposer’s NOR No. 2
Printout of Prevue Pet Products, Inc. Company Profile
from “petsglobal.com” website, January 26, 2012

“Customer base is thru wholesales Distributors (sic),
major mass chains, pet specialty chains, Pet Catalogue
and Internet Retailers and Farm and Fleet Retailers.”

Opposer’s NOR No. 2
Printout from “trimascorp.com” website concerning
Cequent Consumer Products, January 26, 2012

“This market includes mass merchants, auto retailers,
hardware stores and home centers, farm & fleet
retailers, wholesale clubs, marine specialty and sporting
goods retailers ….”

Opposer’s NOR No. 2
Printout from “centrummarketing.com” website, January
26, 2012

“Centrum marketing covers Indiana, Michigan,
Opposer’s NOR No. 2
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Kentucky, Ohio, Western Pennsylvania, and West
Virginia calling on the following types of distribution:
Hardware Co-Op’s & Distributors, Automotive
distributors, Mass Retailers, Building Material Retailers,
Paint Distributors, Farm & Fleet Retailers ….”
Printout from “pchassociates.com” website, January 26,
2012

“Special emphasis is given to large volume accounts,
including: Mass Merchandisers/Retail Chains,
Warehouse Distributors, Mail Order Marketers … Farm
& Fleet Retailers.”
Opposer’s NOR No. 2
Printout from “globalinstore.com” website, January 26,
2012

“…and the solid relationships we have developed with
other leading pet information providers, pet and farm &
fleet retailers, the book trade, supermarket & specialty
and product manufacturers”
Opposer’s NOR No. 2
Printout of Gardner-Gibson Inc. Company Information
from “roofingcontractor.com” website, January 26, 2012

“… while Gardner and Black Jack brands are available
through leading building material and home
improvement stores, hardware, lumber, and farm & fleet
retailers”
Opposer’s NOR No. 2
Printout from “clean-rite.com” website, January 26, 2012

“Aiken’s products can be found at automotive, hardware,
farm and fleet retail stores and commercial companies
serving both professional and do-it-yourself customers.”
Opposer’s NOR No. 2
Printout from “clc.com” website regarding Dri-Duck
Apparel, January 27, 2012

“These outerwear items are available in farm and fleet,
sporting goods, western, outdoor, specialty, and
department stores.”

Opposer’s NOR No. 2
Undated Sweeney’s press release “Sweeney’s New Solar
Powered Sonic Spikes Drives Moles & Gophers Away”

“Sweeney’s Mole & Gopher Sonic Spikes are available at
leading hardware, home center, mass merchant, farm
and fleet and independent garden center retailers
Opposer’s NOR No. 2
Opposition No. 91196469

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nationwide.”
Undated article “Antler Attakk,” Clearwater-West
Sherburne Tribune, printed December 3, 2011

“Antler Attakk products are available at some big box
stores, sporting goods stores, farm and fleet stores and
some hardware stores.”
Opposer’s NOR Nos. 2, 4
Mari Harries, “The Little City that Would,” printout
from “nm2020.org” website, March 17, 2011

“Windom has clothing spots, a hardware store, flower
and fit shops, farm and fleet suppliers, a general store,
and even a place to buy antiques.”
Opposer’s NOR No. 2
Becky Ebenkamp, “Toy Fair 2004: Niche Toys,” printout
from “allbusiness.com,” December 7, 2011

“ERTL’s Racking Champions have cornered hobby and
‘farm and fleet’ marketing, with John Deere one of its
biggest licenses ….”
Opposer’s NOR No. 2
“RTA add at Depot: CrossRoads stores said to lay plans,”
printout from “thefreelibrary.com,” December 7, 2011

“Taking a page from the old farm-and-fleet store concept,
The Home Depot, the nation’s largest home center chain,
is testing mammoth superstores designed to sell rural
America everything from lumber and lariats to tractors,
tools and tires.”
Opposer’s NOR No. 2
Printout from “artzulu.com” website entitled “Licensing
Opportunities,” November 4, 2011

“Art Zulu helped Brand Sense Partners launch a rodeo
inspired sportswear and workwear line for Dodge, to be
sold in major farm and fleet stores and complete with
brands such as Carhardt and Wrangler.”
Opposer’s NOR No. 2
Printout from “kjksales.com” website, entitled
“Professional Sales Management,” November 10, 2011

“KJK Sales specializes in sales management services to
manufacturers of consumer packaged goods in the
Sporting Goods, Hardware, Farm & Fleet, Automotive
Aftermarket, C-Store and other retail chains in the U.S.”
Opposer’s NOR No. 2
Printout from “neagroup.com” website, October 26, 2011

“Perhaps the best feature is that every ‘wear part’ like
Opposer’s NOR No. 2
Opposition No. 91196469

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brakes, bearings, hydraulics, etc., can be purchased over-
the-counter at a farm & fleet or automotive parts store.”
Printout from “warrenunilube.com” website, January 26,
2012

“We are specialists in designing automotive programs for
convenience store distributors, wholesale grocers, mass
merchandisers, drugstore chains, hardware wholesalers,
farm and fleet, and traditional aftermarket.”
Opposer’s NOR No. 2
Printout from “nationjob.com” website, December 7, 2011

“Introduced in the fall of 2004, primarily in ‘Big Box’
farm-and-fleet retailers, Carhartt is now sold in
approximately 2000 stores.”
Opposer’s NOR No. 2
Printout from “2exhibitions.com” website, November 4,
2011

Listed visitors to National Lawn and Garden Show
include “Retail Chains, Department Stores, Big Box
Stores, Wholesale Distributors, Buying Groups/Coops,
Catalog and Direct Mail … Farm & Fleet Stores ….”
Opposer’s NOR Nos. 2, 4
Printout from “shareholder.com,” describing Liberty Safe
November 10, 2011

“The company’s products are the market share leader
and are sold in various sporting goods, farm and fleet,
and home improvement retailers.”
Opposer’s NOR No. 2
Printout from “everything2.com” website describing
Cloquet, Minnesota, January 24, 2005

“Of particular note are L&M a farm and fleet supply
store, and the Super Wal-Mart. L&M sells all manner of
farm and fleet supplies, as well as hunting equipment,
replacement parts for trucks, tractors, cars, and major
appliances, and home improvement items.”
Opposer’s NOR No. 4
Printout from “googleusercontent.com,” author identified
as BobPalma, July 9, 2008

“We also have a small ‘Farm & Fleet’ type store called
Thrifty Supply. They do an excellent business with more
of agricultural angle than the other stores.”
Opposer’s NOR No. 4
Printout from “igcshow.com” website, September 24,
2012

Opposer’s NOR No. 4
Opposition No. 91196469

18

“Senoret Chemical Co., Inc. (Senoret) is a manufacturer
and marketer of insecticides, rodenticides and repellents
for the consumer markets … These products are sold
primarily to Mass Merchandisers, Home Improvement
Centers, Hardware Dealers, Grocery and Drug stores,
Farm and Fleet centers and independent lawn and
garden retailers.”
OurPet’s Company Press Release, January 3, 2006

“Pet Zone products are sold through pet specialty
distributors and retailers, mass retailers, grocery chains,
farm and fleet stores, E-commerce and catalogs.”
Opposer’s NOR No. 4

Opposer also relies on its own use of FARM FLEET for over 50 years. C.
Norby Tr. at 6-9 and Exs. 1-3. According to Constance Norby, opposer uses FARM
FLEET because it describes the types of products opposer sells. C. Norby TR. at 17-
18.
Finally, opposer points out that the identification of goods in cancelled
Registration No. 1193481 for the mark F & F in typed form included “”sold in farm
and fleet stores.” Opposer’s NOR No. 1.
B. Applicant
Applicant relies on its Registration No. 3009930, for the mark BLAIN’S
FARM & FLEET for applicant’s Retail Store Services, which includes a claim of
acquired distinctiveness as to FARM & FLEET. Blain Tr. Ex. 25; Applicant’s NOR
No. 4. Applicant points out that its Online Services involve the retail sale of the
same goods offered through applicant’s Retail Store Services.
Applicant also relies on its extensive promotion of its mark and sales by its
“brick and mortar” stores in Wisconsin, Iowa and Illinois. While the specific figures
Opposition No. 91196469

19

are confidential and will only be discussed generally here, suffice it to say that in
1989 applicant’s gross advertising expenses were quite significant, and have
increased substantially since that time. Similarly, applicant’s sales have grown
significantly from their already high level in 1977 to a much higher level today.
Schendt Tr. Ex. 69. By any measure, applicant’s gross sales and gross advertising
expenses are extremely impressive, fast-growing and at the absolute highest end of
the range seen in Board cases. All of applicant’s 35 stores have always and
continuously used FARM & FLEET. Blain Tr. at 27-28.
Mr. Zeckmeister of Briggs & Stratton, who is familiar with the parties’
industry, testified that FARM & FLEET is not a generic term, and that it currently
“means” applicant. He is aware that Quality Stores also used the mark at one time,
but ceased to exist “10, 15 years ago.” Zeckmeister Tr. at 19-25; Blain Tr. at 43-44.
Mr. Schansberg testified that in front of the Clinton, Iowa Home Depot store was a
sign stating: “We will beat Farm & Fleet by 10% on same or comparable portable
power tools,” referring to applicant. Schansberg Tr. at 40 and Ex. 89. Applicant’s
stores are also used as reference points, for example by other businesses which
identify themselves to customers by saying “across the street from Farm & Fleet” or
“next to farm and fleet,” for example, in reference to applicant. Gilbertson Tr. at 43.
Applicant offers a wide variety of “private label” products under the BLAIN’S
FARM & FLEET mark, including candy, nuts, automotive products, batteries,
Christmas lights, clothing, pet food, etc. Id. at 17-20 and Ex. 60.
Opposition No. 91196469

20

Applicant commissioned a “jingle” or “theme song” in 1991 which prominently
features applicant’s mark (“It’s everything that you need … the hardest working
people in America Find Value at Farm & Fleet. … So many choices … and we
believe … the hardest working people in America Find Value at Farm & Fleet.”).
Gilbertson Tr. at 35-37 and Ex. 62. The jingle has been used “constantly” in
applicant’s radio and television commercials ever since. Id. In fact, applicant uses
the jingle in approximately 300-350 radio commercials and 150 television
commercials per year, and attempts to reach each person in its market areas twice
with each commercial. Schansberg Tr. at 42-44. Applicant advertises on almost 90
different radio stations and in over 70 different newspapers. Id. at 31 and Ex. 100.
It advertises during telecasts of college and professional sporting events, including
games featuring the Milwaukee Bucks and Brewers, Green Bay Packers, Marquette
basketball, and the Chicago Bears, Blackhawks and Cubs. Id. at 83. Applicant’s
print advertising campaign is similarly extensive and substantial; for example,
applicant distributed 39 “mass inserts” in 2012, delivered to over three million
homes in all 35 markets where applicant has brick and mortar stores. Id. at 54-61,
66-69. Applicant promotes itself through celebrity endorsers, including NASCAR
driver Matt Kenseth, whose racing suit bears applicant’s FARM & FLEET logo and
domain name, “farmandfleet.com;” Mr. Kenseth’s racing car also bears the FARM &
FLEET mark and “farmandfleet.com” domain name. Schansberg Tr. at 11-13;
Gilbertson Tr. at 16-17 and Ex. 59. Applicant employs over 20 people in its
Opposition No. 91196469

21

marketing and advertising department. Schansberg Tr. at 13-14. Some of
applicant’s advertisements are distributed nationally. Schansberg Tr. at 56-57.
Applicant also relies on its fast-growing Internet presence and sales, which
have extended use and recognition of the FARM & FLEET mark beyond the three
states where applicant operates brick and mortar stores. When applicant started
selling products online in October 2009, it offered tens of thousands of items, and
now offers several times that many. Id. at 34, 38; Tarnutzer Tr. at 10. Within two
months of beginning to sell products online, applicant had sold products to
customers in all 50 states and continues to do so. Gilbertson Tr. at 38-39.
Applicant’s Internet sales have grown substantially, continuously and rapidly since
2009, but remain significantly less than sales by applicant’s brick and mortar
stores. Schendt Tr. Ex. 69. Applicant’s “Internet market penetration” is
particularly significant not only in the states where it has brick and mortar stores,
but also in California, New York, Texas, Florida, Pennsylvania, Ohio, Minnesota
and Michigan. Ziegler Tr. at 17-18. The domain name for applicant’s website is
“farmandfleet.com.” Blain Tr. at 60.
Like opposer, applicant also relies on news articles and other materials, but
applicant does so in support of its claim of acquired distinctiveness. Applicant relies
on the following:
Source and Statement Citation
Gary Van Sickle, “Golf news, instruction, equipment,
travel, courses, scores and more,” printout from “golf.com,”
July 17, 2012

Applicant’s NOR No. 4
Opposition No. 91196469

22

referencing a billboard for the John Deere Classic golf
tournament: “The billboard’s location – along the busy
four-lane road that passes John Deere Co. headquarters
and leads to TPC Deere Run – was perfect. Stricker’s
visage stands between two Midwestern icons – a towering
market for Blain’s Farm & Fleet store and a sprawling
new Menards home center.
Jo Anne Killeen, “Highway 16 Turn Lane Extension
Planned for ’12,” Courier Life News, November 11, 2011

Subtitled “Project will cut off access to Farm & Fleet” in
reference to applicant

“the city has not complied with terms of a grant to modify
the westbound Highway 16 lanes in front of Farm and
Fleet,” referencing applicant

“According to the letter, the city will have to close the
median opening providing access to Farm and Fleet
because of deteriorating traffic conditions …”
Applicant’s NOR No. 4
Matt Liparota, “Rockton’s Farm & Fleet Opens Doors for
Business,” Beloit Daily News, April 12, 2012

“The store employs 133 people, [Jane Blain] Gilbertson
said, most of whom are area residents. Job fairs near the
beginning of the year brought in close to 2,000 applicants,
she said.”

“Gilbertson said the company chose to move into the
Rockton market because many customers in their
Rockford, Loves Park and Belvidere locations were coming
in from the Rockton-Roscoe area.”
Applicant’s NOR No. 4
Cynthia Beaudette, “Wearing Their Hearts on Their
Sleeve,” The Muscataine Journal, November 1, 2011

“Pam bought her son the two Wrangler western-style
shirts – including the blue one he was wearing when he
died – at Farm and Fleet in Muscataine, for Christmas in
2009.”

“Pam returned several times to Farm and Fleet to
purchase another shirt like the ones Derek had liked so
well … After learning why the shirt meant so much to
Pam, the employee called Wrangler’s national
Tarnutzer Tr. Ex. 79
Opposition No. 91196469

23

headquarters to see if the shirt was available elsewhere …
A few weeks later a package of custom-made, red and blue
shirts arrived at Farm and Fleet for the Dallege family.”
Barry Adams, “East Side Farm & Fleet to expand,”
printout from “Madison.com,” September 29, 2010

“The Farm & Fleet store on Madison’s East Side is getting
more room for snowblowers, bird seed, Toyland and tires.
…The move comes two years after the company opened its
second Dane County location, in Verona, and will increase
the size of the Madison store at 2202 S. Stoughton Road to
108,000 feet. ‘It’s a testament of the high volume of sales
it earns compared to its relative small size,’ said Renee
Tarnutzer, a spokeswoman for the company. … Farm &
Fleet has 34 stores in Wisconsin, Illinois and Iowa.”
Tarnutzer Tr. Ex. 79
Kevin Murphy, “Blain’s Farm & Fleet retains name
rights,” The Janesville Gazette, December 12, 2011

“Blain’s Farm & Fleet retained exclusive rights to use its
trade name in settling a legal dispute with a Minnesota
retailer, which also uses the Farm and Fleet name for its
stores.”

“… Runnings Supply, the Marshall, Minn.,-based retailer
agreed to:
-- Drop any ‘Farm & Fleet’ reference on its website
-- Restrict the use of the Runnings Farm & Fleet name
to Minnesota, North Dakota, South Dakota, Montana,
Colorado, Wyoming and Nebraska.”
--Not use ‘Farm & Fleet’ without it being preceded by
‘Runnings’ in those seven states.

Blain’s spokesperson Renee Tarnutzer said the Janesville-
based corporation was pleased with the terms. ‘We get to
use the trademark nationwide. Runnings is restricted to
using it in the seven states (they currently operated in),’
she said.”

“Runnings’ conceding the use of ‘Farm & Fleet’ on its
website might be increasingly important in the future.
Both companies used basically the same name for years as
retailers in adjoining states, but Blain’s filed suit in
December 2009 as both chains turned to the Internet to
gain sales. When the suit was filed, Blain’s attorney
Tarnutzer Tr. Ex. 79
Opposition No. 91196469

24

George Steil confirmed that Internet sales were among the
key reasons for the suit. ‘It causes confusion among
customers and conflicts when two companies using the
same name start selling the same merchandise over the
Internet,’ Steil said. In 1955, Blain’s began using ‘Farm &
Fleet’ on its retail stores, which have since grown to
number 34. In the 1980s, Claude and Bert Blain changed
the name to Blain’s Farm & Fleet to avoid confusion with
Mills Fleet Farm, another Wisconsin retailer. In 1996,
Runnings began using the name Runnings Fleet & Farm
but changed in early 2002, when Runnings’ new name was
challenged by Mills Fleet Farm. That resulted in
Runnings switching the last two words in its trade name
to Runnings Farm & Fleet.”
Jane Burns, “Addition Planned for Farm & Fleet’s
Stoughton Road store,” printout from “Madison.com,”
February 3, 2011
Tarnutzer Tr. Ex. 79
Seth Jovaag, “Verona native building new Farm and Fleet
store,” The Verona Press, May 18, 2008

“This will be the 34th Farm and Fleet location and the
fourth built by Design Structures. The new store will be
the company’s most architecturally advanced, as Verona’s
Plan Commission put heavy demands on Blain’s Supply
when president Robert Blain brought the project for
approval last spring. Many on the commission and the
Common Council considered the development the
‘gateway’ to the city and therefore had higher visual
standards for the 114,525-square-foot building – the
biggest retail project Verona has had by far – than are
normally seen at Farm and Fleet stores. In the end,
Blain’s decided to have an architect design the façade, the
first time it has done so with a retail store.” ‘You have to
give credit to Farm and Fleet,’ Zingg said. ‘They were
willing to work (with city officials), and this is the result.’”

“‘I think it really looks nice,’ he said. ‘It’s going to be an
asset to the city.’”

“Anderson tipped his hat to Farm and Fleet, noting how
the company spent extra money during construction to
‘build green.’ Those efforts included transplanting trees
off site and recycling tons of materials from the foundation
of the former Hometown Village assisted-living complex.
Tarnutzer Tr. Ex. 79
Opposition No. 91196469

25

‘A lot of big-box developers would just come in and trash
the place and leave it that way,’ Anderson said. They
went out of their way to do a lot of environmentally
sensitive things.’”
Seth Jovaag, “Farm and Fleet brings big names to Verona
for grand opening,” The Verona Press, September 22, 2008

“Five weeks after Blain’s Farm and Fleet opened on
Verona’s east side, the store is hosting a three-day party
that will feature some big names and big crowds. The
three-day grand opening from September 25-27 will
include appearances by NASCAR driver and Cambridge
native Matt Kennseth, University of Wisconsin athletic
director Barry Alvarez, UW-Madison basketball coach Bo
Ryan and former Green Bay Packers president Bob
Harlan. The company is also giving away $25,000 in gift
cards and shopping sprees, and entertainment will range
from a ‘horse whisperer’ who will tame area stallions to a
performance by ‘Lenox Hackman’ (yes, that’s a stage
name) who will cut a car in half for the audience’s
enjoyment, said company spokesperson Renee Tarnutzer.
Blain’s Supply always holds a grand opening party for new
stores, though Verona’s 114,525-square-foot store is the
company’s first new location since 2000. Tarnutzer
expects the event to draw about 10,000 customers a day.”

“Keri Hall, general manager of the nearby Super 8 Hotel,
said all 40 of her rooms are booked throughout the week
because of the grand opening. For celebrity appearances,
large crowds could prompt the company to issue tickets to
visitors on a first-come, first-served basis to determine an
order of who gets to meet and greet the famous guests, she
said.”
Tarnutzer Tr. Ex. 79
Neil Johnson, “Chest Pains? Don’t Drive. Call 911,” The
Janesvile Gazette, December 1, 2011

Caption: “Janesville paramedics treat ‘patient’ Eugene
Martin for a possible heart attack in the furniture section
of the Farm and Fleet store. The event was an exercise
put on by Mercy with the city and the heart association to
encourage the use of 911 in cardiac emergencies.”
Tarnutzer Tr. Ex. 79
“Kitties Dylan and Ebony are looking for love!,” December
5, 2011

Tarnutzer Tr. Ex. 79
Opposition No. 91196469

26

“You can meet them both at Farm and Fleet in Woodstock
on Saturday December 10th and Sunday December 11th;
we will have some of our adoptable kittens & cats near the
Pet Department both days.”
Brian D. Bridgeford, “Riverfront plan ready: Public input
to be sought at meeting,” News Republic September 8,
2011

“The analysis has generated new information about three
areas from which Baraboo draws consumers – the nearby
convenience trade area, the middle-distance destination
trade area of people bound for Wal-Mart and Farm and
Fleet, and tourists who can come to Baraboo from a very
wide area, he said.”
Tarnutzer Tr. Ex. 79
Sarah Millard, “Attorney General Announces Crime Alert
Network Program and Waukesha Store,” Menomonee
Falls Patch, December 6, 2011

“A new program will allow community members,
businesses and other organizations to receive up to date
notifications about crime trends in the area and suspect
descriptions in an effort to increase citizen participation
with local law enforcement in solving crimes, Attorney
General J.B. Van Hollen announced during a news
conference Tuesday morning at Farm and Fleet in
Waukesha.”
Tarnutzer Tr. Ex. 79
Jenn Smith, “Farm & Fleet Toyland Opening,” printout
from “973rivercountry.com” website, October 17, 2011

“Todd Bryand got up early to broadcast from the opening
of Toyland at Farm & Fleet in Morton!”
Tarnutzer Tr. Ex. 80
Printout from “asap-usa.org” website

“ASAP will continue doing adoption events at the
Woodstock, Illinois Farm and Fleet on Saturdays and
Sundays between from 10am to 2pm.”
Tarnutzer Tr. Ex. 80
Jay Furst, “Furst Draft,” Post Bulletin, October 24, 2005

“Both Mills Fleet Farm and Blain’s Farm & Fleet are
celebrating their 50th anniversaries this year. In both
stores, the layout is virtually the same, as is the
merchandise. Are they owned by the same company? –
Peter

Tarnutzer Tr. Ex. 80
Opposition No. 91196469

27

“Though it’s often rumored in farm country that the Mills
and Blain’s chains are the result of a family feud, they’re
not, says Blain’s spokeswoman Renee Tarnutzer. ‘In fact,
we chuckle every time we hear the rumor that there was
some sort of family dispute between two brothers,’ she
says. The Mills Cos. opened a farm merchandise store
called Fleet Wholesale Supply in Marshfield, Wis. in 1955,
and that piece of the Mills family empire morphed into
Mills Fleet Farm in 1960. It has 30 stores in Minnesota,
Wisconsin, North Dakota and Iowa. Blain’s Farm & Fleet
also dates from 1955 and was founded by brothers W.C.
Blain and N.B. Blain. The chain has 33 stores in
Wisconsin, Illinois and Iowa; the closest to Rochester is in
LaCrosse, Wis. Unlike Fleet Farm, Blain’s has a company
song, recorded in Nashville by members of Eddie Rabbitt’s
band, with lyrics such as, ‘We’re making it easy to save
you time … we’re bringing you quality … the top of the
line.”
“Farm and Fleet, Fleet Farm,” Printout from
“tommcmahon.net” website, June 30, 2005

“Completely separate companies running two competing
chains of real he-man guy stores in Wisconsin … I’ve been
told they at one time they were a single company run by
two brothers who got into a fight but I haven’t found
anything to support that bit of Local Wisconsin Folklore.
… If you are training to be a spy and your cover story is
that you are from Wisconsin, this is a little bit of
Wisconsin Culture you need to know.”
Tarnutzer Tr. Ex. 80
Michelle K. Mellor, “Planting the Seeds of Prairie
Renewal,” Chicago Tribune, March 21, 2000

“With multi-lane traffic converging at U.S. Highway 14
and Lake Street in Woodstock, the vacant lot across from
the Farm and Fleet store may seem an unlikely location
for a prairie restoration project.”
Tarnutzer Tr. Ex. 80

Ms. Tarnutzer testified that she knows these references are to applicant’s stores
because “[t]hey are mentioning the Farm & Fleet in locations where we have our
stores or they are specifically stating a store.” Tarnutzer Tr. at 20-25.
Opposition No. 91196469

28

Applicant further relies on its trademark enforcement efforts, which include
sending “cease and desist” letter s to those it becomes aware are using FARM &
FLEET without authorization, and if necessary filing lawsuits for trademark
infringement. Schendt Tr. at 20-21; Tarnutzer Tr. at 37; Blain Tr. at 49-51 and 69-
73 and Exs. 37-40; Gilbertson Tr. at 60-61. This includes publications which use
FARM & FLEET incorrectly, such as Home Channel News, and according to
Messrs. Schendt and Blain, Home Channel News stopped using “farm and fleet”
generically after applicant requested that it do so. Schendt Tr. at 20-21; Blain Tr.
at 70-72.8 In fact, the Home Channel News articles upon which opposer relies all
predate applicant’s cease and desist letter.
Applicant filed a trademark infringement lawsuit against Running Supply of
Minnesota over Running’s use of FARM & FLEET, which was terminated when the
parties entered into a Settlement Agreement. Blain Tr. at 62-67 and Ex. 36.
Pursuant to the Settlement Agreement:9
• Runnings will “permanently remove from its
website all references to ‘Farm and/& Fleet’ and will
permanently refrain from search engine optimization
regarding said website …;”

• Runnings is permitted to use the name “Runnings
Farm & Fleet” for its retail stores and advertising
consistent with its current market practices, but only in
certain states in which applicant does not have any retail
stores;

8 Mr. Schendt mistakenly referred to the recipient of the request as “Home Shopping
News.”
9 While the Settlement Agreement itself is designated as “confidential,” Mr. Blain’s
testimony concerning the Agreement is not.
Opposition No. 91196469

29

• Runnings acknowledged applicant’s exclusive
ownership rights in its federally registered trademark
“Blain’s Farm & Fleet;” and

• Runnings “will withdraw all opposition to currently
pending Blain trademark applications with the United
States Patent and Trademark Office.”

Blain Tr. at 62-67 and Ex. 36 ¶¶ 1-4.
While applicant concedes that there is an “obvious similarity” between FARM
& FLEET and FLEET FARM, which is used by Mills Fleet Farm, Mr. Blain testified
that Mills uses FLEET FARM pursuant to a “verbal agreement” allowing it to use
FLEET FARM with applicant’s permission. Blain Tr. at 73-74. The agreement
between applicant and Mills is not surprising given their history, in that applicant
and Mills together helped to form Mid-States and the concept of selling to farmers
and others at a discount provided they had a “fleet card.” Mills Tr. at 6-12. In fact,
Mills Fleet Farm and the Mills family features prominently in the book written to
celebrate applicant’s 50th “anniversary”:
The Mills family had the same sense about the potential
success of this concept and had spoken to the Blains at
some length about the opportunity. Again, to avoid
competing with their established dealerships in
Minnesota, they opened up their first store operation,
Valley Wholesale in Appleton, Wisconsin. The
government however, felt it was misleading to call their
consumer discount “wholesale” so they demanded the
Mill’s Valley Wholesale organization change their name.
As the Blains had already taken the name Farm & Fleet,
Stew Mills contacted the Blain brothers and asked if it
would be a problem to use the name Fleet Farm. As the
four had now become friends, it was eventually agreed
that the name choice would be OK. Claude and Bert
Blain remained close friends of the Mills family
throughout the remainder of their lives.
Opposition No. 91196469

30

Gilbertson Tr. Ex. 61.
Finally, applicant relies on a secondary meaning survey, report and
testimony by its expert witness Philip Johnson, Chief Executive Officer of Leo J.
Shapiro and Associates, Inc., a market research firm which conducts surveys for use
in trademark litigation. Johnson Tr. Ex. 3 ¶ 1. Mr. Johnson, a graduate of Loyola
University who received an M.B.A. from the University of Chicago Business School,
has designed and supervised hundreds of consumer surveys in his over 40 year
career, a number of which relate to secondary meaning. Id. ¶ 2; Johnson Tr. at 9.
His surveys have always been accepted into evidence and he has always been
admitted as an expert in the cases for which he has conducted surveys. Johnson Tr.
at 10.
The purpose of the survey was to determine “whether FARM & FLEET has
acquired secondary meaning within the geographic area where [applicant] operates
its Farm & Fleet stores, such that the primary significance of the term FARM &
FLEET is to identify a store that comes from a single, even if unknown, source.”
Johnson Tr. Ex. 3 ¶ 3. The survey was originally conducted in connection with
another dispute, but Mr. Johnson believes its results “are applicable to the tri-state
area (including Iowa), and would therefore, be useful in this dispute.” Id. ¶ 4.
The survey was conducted between July 16-26, 2010 by telephone. In total,
404 consumers above the age of 18 “who are responsible for all or some of the
shopping needs of the household” were interviewed. Id. ¶ 5. Interviewees were
randomly selected from a sampling of both listed and unlisted numbers, “based on
Opposition No. 91196469

31

having a high probability of being within a 12 mile wide circle around one of 33
Farm & Fleet store locations that has been operating prior to 2003, the year when
[applicant] applied for registration of the ‘Blain’s Farm Fleet’ mark” with the Office.
Id.
One half of the interviews (201) were in the “test cell,” and were asked about
the term FARM & FLEET, while the other half (203) were in the “control cell” and
were asked about the term RANCH & MACHINERY, which has a “parallel
construction” to FARM & FLEET but “is not believed to currently function as a
name of an actual retailer.” Id. ¶ 6. Each participant was first asked whether they
had heard of the term used for their cell. If they had not, the interview terminated.
Id. ¶ 9. If they had, they were asked “Who or what/what or who is FARM & FLEET
[RANCH & MACHINERY]?” Id. ¶ 10.10
Participants were next asked whether the term is owned or operated by one
company or more than one company, and “What makes you say that?” Id. ¶ 11.
Those who responded that the term is owned by one company were also asked
where that store or company is located. Id. Interviews were “double-blind” and
validated, and other standard survey techniques were used. Id. ¶¶ 9, 12, 14-16.
The survey revealed that “[v]irtually all of the test cell respondents (98%) are
familiar with FARM & FLEET. By contrast, only 4% of control cell respondents
report awareness of RANCH & MACHINERY.” Id. ¶ 17. A majority of those asked
how they would describe FARM & FLEET provided “a specific description that is

10 “The order in which ‘who or what’ or ‘what or who’ was asked was rotated between
respondents in both the test and control cells to eliminate any potential order bias.” Id. ¶ 9.
Opposition No. 91196469

32

consistent with [applicant’s] stores (50% cite general store, 39% farm implement
store) or describe goods and services found in these stores (45% cite clothing, 29%
hardware, and 27% automotive goods). In contrast, control cell respondents do not
describe a specific retailer, but give very general responses that are descriptive of
the words ‘ranch’ and ‘machinery.’” Id. ¶ 18. Furthermore, “a substantial majority
of test cell respondents (59%) believe that FARM & FLEET is owned or operated by
one company compared to just one control cell respondent (0.5%) who believes that
RANCH & MACHINERY is owned or operated by one company.” Id. ¶ 19. When
asked why they believe that FARM & FLEET is owned by one company, those
respondents state “that they are familiar with it (16%), it is a family company
(15%), they specifically name Blain (11%), or say it is owned by one company (11%),”
and 55% “correctly identify one of [applicant’s] locations.” Id. ¶¶ 20-21. Overall, “a
majority of test cell respondents believe FARM & FLEET is operated by a single
company (56%) and either spontaneously name Blain as the owner (12%) or identify
a Blain Supply Farm & Fleet store location (55%) when describing FARM &
FLEET.” Id. ¶ 22. Mr. Johnson’s conclusions include the following:
• “FARM & FLEET is known to virtually all of the
population (98%) who reside in” Illinois, Wisconsin and
Iowa in regions where applicant has operated its FARM &
FLEET stores prior to 2003;

• “a majority of consumers believe FARM & FLEET
is owned or operated by a single source (59%), which
indicates that this name has acquired secondary meaning
in its market area;” and

Opposition No. 91196469

33

• “the primary significance of the term FARM &
FLEET is to identify a store that comes from a single
source.”

Id. ¶¶ 23, 25, 27. In addition, based on the survey results, Mr. Johnson testified
that “farm and fleet is not generic. It describes a specific source, not a general kind
of source.” Johnson Tr. at 32. However, he conceded that this “observation is based
on the tri-state area where I conducted the survey.” Id.
IV. Analysis
Applicant concedes, and the evidence establishes, that FARM & FLEET is
merely descriptive. See, e.g. Answer ¶ 3; Applicant’s NOR No. 4 (Registration No.
3009930, in which applicant claimed that FARM & FLEET has acquired
distinctiveness) and Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586
F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant seeks
registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an
applicant’s reliance on Section 2(f) during prosecution presumes that the mark is
descriptive.”); Gilbertson Tr. at 51-52; Schansberg Tr. at 86-88. We are therefore
left to determine, assuming that opposer has established its standing, first whether
FARM & FLEET is generic, and, if it is not, whether it has acquired distinctiveness.
A. Standing
Opposer has established that it is engaged in the retail sale of goods such as
those that applicant sells, including automotive, electrical and farm supplies, and
hardware. C. Norby Tr. at 3-7, 19-21. This establishes opposer’s standing to oppose
the involved applications on the grounds of genericness and mere descriptiveness
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without acquired distinctiveness. Books on Tape, Inc. v. Booktape Corp., 836 F.2d
519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Kistner Concrete Products, Inc. v.
Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011); Stuart
Spector Designs, Ltd. V. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553
(TTAB 2009); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007);
Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999).
Furthermore, opposer has introduced evidence, which applicant has not specifically
contradicted, that it uses and desires to use FARM FLEET in connection with its
retail stores. This also establishes opposer’s standing. See, Target Brands, Inc. v.
Hughes, 85 USPQ2d 1676, 1679 (TTAB 2007); Nature’s Way Products Inc. v.
Nature’s Herbs Inc., 9 USPQ2d 2077, 2080 (TTAB 1989) (standing established
where petitioner “is in a position to use the designation sought to be cancelled in a
descriptive manner”).
B. Genericness
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source of the goods or services.”
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2011) (citations omitted). The ultimate test for determining whether a term is
generic is the primary significance of the term to the relevant public. See Section
14(3) of the Act. See also, In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19
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USPQ2d 1551 (Fed. Cir. 1991). Opposer bears the burden of proving, by a
preponderance of the evidence, that applicant’s mark is generic. Magic Wand, 940
F.2d 638, 19 USPQ2d at 1554; Tea Board of India v. Republic of Tea, Inc., 80
USPQ2d 1881, 1887 (TTAB 2006).
We must make a two-step inquiry to determine whether FARM & FLEET is
generic: First, what is the genus (category or class) of goods or services at issue?
Second, is the term sought to be registered understood by the relevant public
primarily to refer to that genus of goods or services? H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986).
Here, we find that the appropriate genus is adequately defined by applicant’s
identifications of services. See, Magic Wand, 940 F.2d at 638, 19 USPQ2d at 1552.
In fact, the evidence establishes that applicant (and for that matter opposer)
operates retail stores which sell the goods listed in the involved identifications of
services; applicant’s Online Services are effectively a subset of applicant’s Retail
Store Services, in that applicant sells the same goods online as it does in its brick
and mortar stores. Blain Tr. at 12-21; Gilbertson Tr. at 7-10, 34. Opposer argues
that “[t]he relevant genus of services is farm and fleet stores,” Opposer’s Trial Brief
at 17, which is self-serving and begs the question, but nevertheless is effectively an
admission that the relevant genus is adequately defined by applicant’s Retail Store
Services and Online Services.
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36

Turning to how FARM & FLEET is understood by the “relevant public,” we
find that the “relevant public” is, as applicant proposes, the “general consumer.”
Applicant’s Trial Brief at 42. Indeed, it cannot reasonably be argued that the
relevant public is any more specific than that, given the exceedingly wide range of
goods included in applicant’s Retail Store Services and Online Services, and given
that applicant (and opposer) now target not just the “farm community” but urban,
suburban and rural communities comprising all types of consumers. Gilbertson Tr.
at 21-22 (“So we really have to appeal to everybody truly”); Blain Tr. at 20 (“it’s
really opened up essentially to the general consuming public”). Opposer’s customer
base is similarly broad and “general.” C. Norby Tr. at 12; P. Norby Tr. at 6-8.
Evidence of this relevant public’s understanding of the term may be obtained
from any competent source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). Furthermore, “evidence of
competitors’ use of particular words as the name of their goods or services is, of
course, persuasive evidence that those words would be perceived by purchasers as a
generic designation for the goods and services.” Continental Airlines, Inc. v. United
Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999). Applicant’s alleged mark is a
phrase, and accordingly, we recognize that we may not “simply cite definitions and
generic uses of the constituent terms” of the alleged mark “in lieu of conducting an
inquiry into the meaning of the disputed phrase as a whole.” In re American
Fertility, 188 F.3d at 1341, 51 USPQ2d at 1836.
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Opposer’s evidence of genericness is certainly voluminous, but on close
inspection, it becomes clear that there is less there than meets the eye. Indeed,
while opposer relies on Internet printouts which appear to reveal that 12 entities
used FARM & FLEET in their trade names, and 5 additional entities used FARM
AND FLEET (which is not the exact term in question), there is no testimony or
other evidence regarding these entities, their names, when or how those names
were used, what goods or services, if any, are offered under the names, general
consumers’ perception of those names or anything else. As applicant points out, the
materials upon which opposer relies, which are merely printouts from Internet
websites, including the websites of various secretaries of state, “have little probative
value. They are admissible only to show what has been printed, not the truth of
what has been printed.” Safer, 94 USPQ2d at 1040; TBMP § 704.08(b) (3d ed. rev.
2012) (“The probative value of Internet documents is limited. They can be used to
demonstrate what the documents show on their face; however, documents obtained
through the Internet may not be used to demonstrate the truth of what has been
printed.”). More specifically and importantly, the mere existence of corporate filings
or Internet listings of companies which apparently used FARM & FLEET in their
names does not establish that FARM & FLEET is currently in use in commerce or
that general consumers have been exposed to any such uses, let alone that general
consumers perceive the term FARM & FLEET as referring to the Retail Store
Services or the Online Services. See e.g., Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693-94 (Fed.
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Cir. 2005); In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); In re
Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009). In fact, as indicated, opposer
concedes that it did not verify that any of the companies listed are still in existence
or that the listings are accurate. Applicant’s NOR No. 3 (Haugen Tr. at 12-13). And
the record makes clear that Quality Farm & Fleet, the only entity opposer relies
upon which apparently had multiple locations, has been out of business for some
time. Zeckmeister Tr. at 24; Mills Tr. at 32-33.
The SEC and other corporate filings upon which opposer relies are similarly
unpersuasive standing alone, as they do. While the evidence reveals that eight
companies have referred to “farm and fleet” (which, again, is not the term in
question) or “farm & fleet” as a type of “retail channel” or “store,” the statements
were made only in SEC or other filings, and there is no evidence that consumers
review such filings in general, much less that they reviewed the particular filings
upon which opposer relies, nor is there any evidence regarding the size of these
companies. In fact, it appears that these materials are directed not to general
consumers, but instead primarily to investors, and there is no evidence whether or
to what extent investors in these particular companies shop at retail stores or
websites such as applicant’s. This evidence also appears to be rather obscure,
rather than an indication of how general consumers (as opposed to investors,
lawyers or regulators) perceive the term FARM & FLEET. Indeed, while some of
this evidence suggests that some have used “farm & fleet” to refer to a type of retail
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channel, none of it suggests that general consumers perceive the term as referring
to the Retail Store Services or the Online Services.
The printouts of news articles and promotional materials, while voluminous,
fare no better. At least seven of the articles are from Home Channel News, to which
applicant sent a “cease and desist” letter on June 26, 2008, informing Home
Channel News that BLAIN’S FARM & FLEET is a registered trademark. Blain Tr.
Ex. 38. All seven of the articles predate the letter, and Home Channel News has
apparently not used FARM & FLEET in a generic manner since receiving the letter.
Opposer’s NOR No. 2; Schendt Tr. at 20-21; Blain Tr. at 70-72. Of the remaining
articles, most use “farm and fleet” or “farm-and-fleet,” which are not the term in
question, and at least two may be referring in part to applicant based on their use of
capitalization, such as “what is called ‘Farm & Fleet’ or farm/ranch stores,” and “a
small ‘Farm & Fleet’ type store called Thrifty Supply.” Most importantly, as with
the other evidence upon which opposer relies, there is no indication whatsoever
whether anyone, let alone a substantial number of general consumers, has seen
these materials, or whether general consumers perceive the term FARM & FLEET
the way the authors of some of these materials apparently do. See, In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 & n. 1
(Fed. Cir. 1987) (finding CASH MANAGEMENT ACCOUNT not generic for stock
brokerage and related services, pointing out that “[t]he issue … is how the
consuming public views the mark,” and stating that like the Internet, “[i]t is indeed
remarkable to see the thoroughness with which NEXIS can regurgitate a [term]
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casually mentioned in the news”); Baroness Small Estates, Inc. v. American Wine
Trade, Inc., 104 USPQ2d 1224, 1228 (TTAB 2012) (“The mere fact that one can do a
search on the Internet and find, for example, a photograph on the flickr website,
does not mean that consumers will be aware of this photograph.”). In short, while
these articles may have been persuasive if accompanied by additional evidence
showing that they are indicative of how general consumers perceive FARM &
FLEET, they are unpersuasive standing alone, especially because they also appear
to be from obscure or easily-manipulated Internet sources, and/or do not pertain to
retail or online services targeted to general consumers. See, In re Country Music
Association Inc., 100 USPQ2d 1824, 1830 (TTAB 2011) (reversing finding that
COUNTRY MUSIC ASSOCIATION is generic for “association services, namely,
promoting country music, and promoting the interests of country music entertainers
and the country music recording industry,” based in part on finding “merit in
applicant’s argument that the examining attorney’s Internet evidence of third-party
usages are relatively obscure”); see also, Carl Karcher Enterprises, Inc. v. Stars
Restaurant Corp., 35 USPQ2d 1125, 1131 (TTAB 1995) (“applicant has not
furnished any evidence regarding the extent of use of the marks by these third
parties. The geographic locations of these restaurants, in many instances, are
relatively obscure. Moreover, the pictures of these restaurants tend to indicate that
the operations are small and local in nature.”).
To the extent that opposer uses FARM FLEET, that use may support our
finding (and applicant’s admission) that FARM & FLEET is merely descriptive, but
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it is not particularly relevant to opposer’s claim of genericness. American Fertility,
188 F.3d at 1341, 51 USPQ2d at 1836 (“the Board erred in finding that the proven
genericness of the words, ‘society,’ and ‘reproductive medicine,’ without more,
rendered generic the phrase SOCIETY FOR REPRODUCTIVE MEDICINE”).
Moreover, opposer’s evidence of its own use of FARM FLEET is sparse at best, and
provides no information which suggests, let alone establishes, how general
consumers perceive FARM & FLEET. Similarly, while Mills Fleet Farm uses
FLEET FARM, that is not the term in question, and in any event Mills uses this
term pursuant to an oral license from applicant.
As for applicant, its fairly extensive efforts to protect and enforce FARM &
FLEET weigh against a finding of genericness. Plyboo America Inc. v. Smith &
Fong Co., 51 USPQ2d 1633, 1640 (TTAB 1999) (applicant’s “assertions of trademark
rights in the term ‘plyboo,’ as evidenced for instance by its attempting to register
such mark in the United States and its obtaining a correction notice with respect to
an article in the San Francisco Examiner which used the mark generically, are
relevant with respect to the issue of mere descriptiveness”). Applicant’s prior
Registration No. 3009330 for the mark BLAIN’S FARM & FLEET, which includes a
claim of acquired distinctiveness as to FARM & FLEET, further suggests that
FARM & FLEET is not generic. Perhaps more importantly, applicant’s wide-
ranging, pervasive and extended promotional efforts, which have met with
considerable and increasing success given applicant’s extraordinary level of sales,
support a finding that FARM & FLEET identifies applicant, not applicant’s Retail
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Store Services or Online Services. See e.g. Zeckmeister Tr. at 19-25; Schansberg Tr.
at 42-44 and Ex. 89; Gilbertson Tr. at 43; Applicant’s NOR No. 4; Tarnutzer Tr. at
20-25 and Exs. 79, 80. Applicant’s successful and fast-growing Internet presence
and extensive Internet sales throughout the country similarly weigh against a
finding of genericness, and while there is no evidence of whether or to what extent
general consumers have been exposed to opposer’s Internet evidence, the record
makes clear that general consumers have had a great deal of exposure to applicant’s
website. Mr. Johnson’s survey and testimony, while focused on the issue of
secondary meaning, also tend to support the conclusion that FARM & FLEET
identifies applicant rather than the Retail Store Services or the Online Services.
See 2 McCarthy on Trademarks and Unfair Competition § 12.46 (4th ed. 2013)
(secondary meaning survey may support finding that mark is not generic); see also,
Trump v. Caesars World, Inc., 645 F.Supp. 1015, 230 USPQ 594, 599 (D.N.J. 1986),
aff’d, 819 F.2d 1135, 2 USPQ2d 1806 (3d Cir. 1987) (where survey to determine the
meaning of the word “palace” found that 45.8% of respondents mentioned Caesars
and 11.4% cited Trump’s casino, “[t]his survey tends to negate Trump’s contention
that ‘palace’ is a generic term for accommodation and tends to support the
contention that in the context of gambling activity in general palace is indicative of
a source of such services.”).
In short, while opposer has presented some evidence of genericness, it is of
limited value because of its nature, because it is unexplained and unsupported by
testimony or other evidence which would reveal how general consumers perceive
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FARM & FLEET, and because it is obscure. That evidence must be balanced
against applicant’s impressive showing that FARM & FLEET is heavily promoted,
enforced when necessary and well-recognized as identifying applicant. The “mixed”
evidence in this case is simply insufficient to meet opposer’s burden of establishing
that FARM & FLEET is generic. See e.g., In re Merrill Lynch, 828 F.2d at 1567, 4
USPQ2d at 1143; In re America Online Inc., 77 USPQ2d 1618, 1623 (TTAB 2006).
Accordingly, opposer’s claim of genericness is dismissed with prejudice.
C. Acquired Distinctiveness
While the involved applications were each published for opposition without
claims that the marks have acquired distinctiveness under Section 2(f), applicant
asserts acquired distinctiveness as an affirmative defense to opposer’s claims of
mere descriptiveness. Answers ¶¶ 3, 4, 6-8. Applicant bears the burden of
establishing the defense of acquired distinctiveness. Yamaha Int’l Corp. v. Hoshino
Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004-06 (Fed. Cir. 1988); see also, In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). In order
to meet this burden, applicant “must show that, in the minds of the public, the
primary significance of [FARM & FLEET] is to identify the source of the [service]
rather than the [service] itself.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
214 USPQ 1, 4 n.11 (1982). In determining whether applicant has met its burden,
we “may examine copying, advertising expenditures, sales success, length and
exclusivity of use, unsolicited media coverage, and consumer studies (linking the
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name to a source),” though “no single factor is determinative.” Steelbuilding.com,
415 F.3d at 1293, 75 USPQ2d at 1424.
It is settled that “the applicant’s burden of showing acquired distinctiveness
increases with the level of descriptiveness; a more descriptive term requires more
evidence of secondary meaning.” Id. (citing In re Bongrain Intern. (Am.) Corp., 894
F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990)). Here, the evidence establishes that
applicant’s mark is descriptive enough that applicant’s burden of proving acquired
distinctiveness is “concomitantly high.” Id. Indeed, applicant has consistently
disclaimed the term “farm” in its applications and registrations, with one exception,
and has disclaimed “‘FARM’ OR ‘FLEET’” in its Registration No. 2852826. During
prosecution of the application which issued as Registration No. 3009930, applicant
conceded in an Office action response that “‘FARM may be used to refer to farm
supplies and equipment which Applicant sells in its retail stores,” and that “the
term ‘FLEET’ may broadly related (sic) to vehicle repair, maintenance and
installation services, which Applicant also offers through its retail stores.”
Opposer’s NOR No. 1. Applicant’s witnesses and the book it published in connection
with its 50th anniversary also make clear that both “farm” and “fleet” are, at least
individually, quite descriptive of applicant’s Retail Store Services and Online
Services. Mills Tr. at 11; Tarnutzer Tr. at 28; Gilbertson Tr. at 28-29, 52 and Ex.
61; Schansberg Tr. at 86-88.
In other words, applicant must clear a high hurdle to prove acquired
distinctiveness. We find that it has done so.
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“In appropriate cases, ownership of one or more prior registrations on the
Principal Register … of the same mark may be accepted as prima facie evidence of
distinctiveness.” Trademark Rule 2.41(b). Here, applicant owns Principal Register
Registration No. 3009930 for the mark BLAIN’S FARM & FLEET, in typed form,
for applicant’s Retail Store Services, with a claim of acquired distinctiveness as to
FARM & FLEET. This is obviously the same mark as BLAIN’S FARM & FLEET,
in standard characters, the mark in involved application Serial No. 77894710,
because there is no substantive difference between “standard character” marks and
marks in “typed” form. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909
n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known
as ‘typed’ marks, but the preferred nomenclature was changed in 2003 to conform to
the Madrid Protocol … we do not see anything in the 2003 amendments that
substantively alters our interpretation of the scope of such marks”). We also have
no difficulty finding that the mark in the prior registration is the “same mark” as
FARM & FLEET, the mark in the remaining two involved application Serial Nos.
77894766 and 77894812. In fact, the only difference between the mark in the prior
registration and FARM & FLEET is the surname BLAIN’S, which is not inherently
distinctive. See generally, Dial-A-Mattress, 240 F.3d at 1341, 57 USPQ2d at 1813
(“As the ‘same mark’ or the ‘legal equivalent’ of ‘(212) M-A-T-T-R-E-S,’ the ‘1-888-M-
A-T-R-E-S-S’ mark is entitled to rely on the former as prima facie evidence of
acquired distinctiveness.”); Am. Sec. Bank v. Am. Sec. Bank & Trust Co., 571 F.2d
564, 197 USPQ 65, 67 (CCPA 1978) (AMERICAN SECURITY is legally equivalent
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46

to AMERICAN SECURITY BANK). As for the services, they are identical with
respect to involved application Serial No. 77894812, and with respect to involved
application Serial Nos. 77894710 and 77894766, which are for applicant’s Online
Services, the difference is not meaningful, because as we have stated, applicant’s
Online Services are essentially a subset of applicant’s Retail Store Services. See
Kellogg Co. v. General Mills, Inc., 82 USPQ2d 1766, (TTAB 2007) (CINNAMON
TOAST CRUNCH for “cereal derived ready-to-eat food bar” legally equivalent to
same mark for “breakfast cereal”). Accordingly, we find that applicant’s prior
registration of BLAIN’S FARM & FLEET, which includes a claim of acquired
distinctiveness as to FARM & FLEET, is prima facie evidence that FARM & FLEET
has acquired distinctiveness.
Applicant’s advertising expenses and gross sales, which are substantial to say
the least, and have been growing quickly and steadily for many years, further
support applicant’s claim of acquired distinctiveness. Applicant’s mark FARM &
FLEET is so well-known that it is used as a reference point in giving driving
directions, and is the key lyric in applicant’s advertising jingle, which is played on
hundreds of radio and television commercials each year, and which is heard by
millions of people. Applicant’s stores sell approximately 150,000 different items and
are physically quite large – applicant’s brick and mortar stores range from 65,000 to
155,000 square feet and average 115,000 square feet. Blain Tr. at 14-16. While
applicant came to be widely-known as FARM & FLEET in Wisconsin, Iowa and
Illinois many years ago through its traditional retail stores, it has recently become
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47

more well-known nationally as a result of its “farmandfleet.com” website, through
which applicant now makes significant sales to customers in California, New York,
Texas, Florida, Pennsylvania and other states beyond applicant’s origins in
Wisconsin, Iowa and Illinois.
Applicant has received substantial unsolicited media attention. Applicant’s
NOR No. 4; Tarnutzer Tr. Ex. 79. Many of the articles which reference applicant
and its FARM & FLEET mark refer to how well-known applicant is, one refers to it
as a “Midwestern icon,” some reference applicant’s trademark enforcement efforts,
one praises applicant’s environmental sensitivity, others reference public-service
events which take place in applicant’s stores, some mention applicant’s celebrity
endorsers and several discuss the FARM & FLEET name itself. In short, these
articles make clear that FARM & FLEET primarily means applicant, its chain of
stores and its website.
Mr. Johnson’s survey, to which opposer does not specifically object, further
supports a finding of acquired distinctiveness. Mr. Johnson has extensive
experience in conducting consumer surveys, and several of his surveys have been
admitted into evidence in court and Board proceedings. Johnson Tr. Ex. 3; Saint-
Gobain Corp. v. 3M Co., 90 USPQ2d 1425 (TTAB 2007). The survey randomly
selected general consumers who have a high probability of living within 12 miles of
one of applicant’s stores, divided the respondents into “test” and “control” cells, and
determined the ratio of respondents who associated FARM & FLEET with one
source, even if anonymous. In short, the survey was consistent with accepted
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48

survey procedures, and its results are probative. See e.g., Tone Bros. Inc. v. Sysco
Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1328-30 (Fed. Cir. 1994); Monsieur Henri
Wines, Ltd. et al. v. Duran, 204 USPQ 601 (TTAB 1979); In re Raytheon Co., 202
USPQ 317 (TTAB 1979). Furthermore, while the survey was conducted by
telephone, this does not significantly detract from its reliability, especially because
the survey concerned only the words FARM & FLEET, rather than a color, design
or other mark for which a visual inspection would be expected to increase the
reliability of the survey’s results. See generally, Saint-Gobain, 90 USPQ2d at 1438-
40 (involving one of Mr. Johnson’s surveys).
We do have one concern with the survey, however, which is that its attempt
to select consumers living within 12 miles of one of applicant’s stores may have
skewed the results. Mr. Ziegler testified that applicant considers consumers living
in a zip code within 25 miles of the home zip code of one of applicant’s stores to be
“in market.” Ziegler Tr. at 16. Mr. Johnson’s selection of a subset of applicant’s “in
market” consumers, those living within 12 miles of one of applicant’s stores, may
have increased the likelihood of respondents associating FARM & FLEET with a
single source because consumers living closer to a BLAIN’S FARM & FLEET store
will be more likely to be aware of the mark given the large size of applicant’s stores
and their prominence in their communities. Indeed, as indicated, the evidence
reveals that applicant’s stores are sometimes used as a reference point or gathering
place. Nevertheless, considering the survey in its entirety, and Mr. Johnson’s
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testimony, we find that the survey tends to support a finding that FARM & FLEET
has acquired distinctiveness.
Finally, we find that applicant’s long-term, continuous and substantially
exclusive use of FARM & FLEET weighs in favor of finding that the mark has
acquired distinctiveness. Applicant has now been using FARM & FLEET for 58
years, a significant amount of time by any measure. Perhaps more importantly,
applicant’s use of the mark has grown tremendously, from a single store in
Janesville, Wisconsin to 35 highly successful brick and mortar stores and a fast-
growing and increasingly national website accessible at “farmandfleet.com.” While
opposer has introduced a great deal of evidence that applicant’s use of FARM &
FLEET has not been exclusive, we find that evidence unpersuasive for the reasons
stated in connection with our finding on genericness. Moreover, it is settled that
opposer’s reliance on “any use by others” and Levi Strauss & Co. v. Genesco, Inc.,
742 F.2d 1401, 222 USPQ 939 (Fed. Cir. 1984) is misplaced under the facts of this
case.
Section 2(f) declares that prima facie evidence of
distinctiveness includes “proof of substantially exclusive
and continuous use” of a mark for five years. 15 U.S.C.A.
Section 1052(f) (West Supp. 1999) (emphasis added). As
the Trademark Manual of Examining Procedure, Section
1212.05(b), recognizes: “The five years of use does not
have to be exclusive, but may be ‘substantially’ exclusive.
This makes allowance for use by others which may be
inconsequential or infringing and which therefore does
not necessarily invalidate the applicant's claim.” See
generally In re International Flavors & Fragrances, Inc.,
51 USPQ2d 1513, 1516 (Fed. Cir. 1999) (“Although the
Manual does not have the force of law, it ‘sets forth the
guidelines and procedures followed by the examining
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attorneys at the PTO.’ “ (quoting West Fla. Seafood, Inc. v.
Jet Restaurants, Inc., 31 F.3d 1122, 1127 n.8, 31 USPQ2d
1660, 1664 n.8 (Fed. Cir. 1994))). The district court,
therefore, erred in suggesting that any use by others is
sufficient to preclude an applicant's declaration of
“substantially exclusive” use. Cf. Yamaha Int'l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 1583, 6 USPQ2d 1001,
1010 (Fed. Cir. 1988) (affirming board's rejection of
section 2(f) opposition, in spite of evidence that four other
companies made similar products prior to registration).

L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 USPQ2d 1307, 1309 (Fed. Cir.
1999). In short, even if opposer’s evidence establishes some generic use by others of
FARM & FLEET, or use by others in connection with the Retail Store Services,
Online Services or related services, when opposer’s unsupported and mostly obscure
evidence is weighed against applicant’s extensive and impressive array, we find
that applicant’s use of FARM & FLEET has been extensive, continuous and
substantially exclusive for 58 years.
Weighing all evidence of record, we find that applicant’s prior registration,
survey, and widespread, extensive, longstanding and fast-growing use of FARM &
FLEET outweighs opposer’s flawed and largely obscure evidence and establishes
that FARM & FLEET has acquired distinctiveness. Accordingly, opposer’s claim of
mere descriptiveness is dismissed with prejudice.
V. Conclusion
Opposer has failed to meet its burden of proving that FARM & FLEET is
generic. While FARM & FLEET is merely descriptive, applicant has established its
defense that the mark has acquired distinctiveness. Accordingly applicant’s
Opposition No. 91196469

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involved applications are hereby deemed amended to each include a claim of
acquired distinctiveness under Section 2(f) with respect to FARM & FLEET.
Decision: The consolidated opposition is dismissed with prejudice, and
applicant’s involved applications are amended to include claims of acquired
distinctiveness under Section 2(f) as to FARM & FLEET.
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