Gardenlife, Inc.

Trademark Trial and Appeal Board

Apr 14, 2011

No. 77709903 (T.T.A.B. Apr. 14, 2011)

Mailed: April 14, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gardenlife, Inc.
________

Serial No. 77709903
_______

Salvatore A. Sidoti and D. Ari Sherwin of Curatolo Sidoti
Co. LPA for Gardenlife, Inc.

Sally Shih, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Gardenlife, Inc. has filed an application to register
on the Principal Register the mark EZ GRO (in standard
character form) for goods ultimately identified as “living
flowers and plants and plant seeds” in International Class
31.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the

1 Serial No. 77709903, filed April 8, 2009, and alleging a bona
fide intention to use the mark in commerce. As discussed infra,
the word “GRO” has been disclaimed.

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 77709903
2
ground that the proposed mark is likely to be confused with
the mark in U.S. Registration No. 2053995, EEZY-GRO (in
typed format), for “flower pots and planters” in
International Class 21.2 The examining attorney also made
final a requirement for a disclaimer of the word “GRO.”
Applicant appealed. Both applicant and the examining
attorney filed briefs and applicant filed a reply brief.
In its reply brief, applicant included a disclaimer of
the word “GRO” which, on remand,3 was accepted by the
examining attorney. Accordingly, the sole issue on appeal
is whether there is a likelihood of confusion between
applicant’s mark EZ GRO and the cited registered mark,
EEZY-GRO.
Before we begin our likelihood of confusion analysis,
we must discuss an evidentiary matter. The examining
attorney has objected to the materials attached to
applicant’s brief,4 arguing that they are untimely. We
agree. As noted by the examining attorney and set forth in
37 C.F.R. § 2.142(d), “[t]he record in the application

2 Issued April 22, 1997, renewed.
3 The application was remanded to the examining attorney for the
sole purpose of considering applicant’s proffered disclaimer.
4 The materials include: (i) copies of web pages from
registrant’s website; and (ii) an excerpted copy [1-50] of search
results from a search of the Trademark Electronic Search System
(TESS) for the term “(gro)[COMB],” along with copies of twenty-
three of the listed records.

Ser No. 77709903
3
should be complete prior to the filing of an appeal.” As
such, the evidence submitted in the first instance with
applicant’s brief is untimely. Accordingly, the examining
attorney’s objection is sustained and this new evidence has
not been considered in this decision.5
Turning now to the merits of the appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the du Pont factor of the
similarity/dissimilarity of the marks and compare
applicant's mark EZ GRO and registrant's mark EEZY-GRO in

5 We point out that the evidence primarily was submitted to
support applicant’s claim that a disclaimer of “gro” was not
necessary. With applicant’s disclaimer of the term, the issue is
moot. In any event, even if we had considered the remaining
evidence, our decision would be the same.
Ser No. 77709903
4
their entireties in terms of sound, appearance, meaning and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). The test 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
their entireties 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).
Applicant essentially maintains that the marks are
dissimilar enough in appearance to avoid a finding of
likelihood of confusion; its mark utilizes a different
spelling of “easy” than the precise variant of that word
adopted by registrant. The examining attorney, on the
other hand, maintains that there is no correct way to
pronounce a mark; that applicant’s mark EZ GRO and the
registrant’s mark EEZY GRO are phonetic equivalents and
thus sound similar; and that such similarity in sound may
be sufficient to support a finding of likelihood of
confusion.
Ser No. 77709903
5
We find the marks EZ GRO and EEZY-GRO substantially
similar in terms of appearance, both comprised of two
terms; the second in each being the identically misspelled
word GRO (“grow”), the first in each being different
fanciful spellings of the word “easy,” respectively EZ and
EEZY. Although registrant’s mark contains two additional
letters, they are not likely to be recognized and do not
serve as distinguishing features because of their imbedded
placement within the overall structure of registrant’s
mark. In addition, and contrary to applicant’s contention,
the hyphen in registrant’s mark is not a distinguishing
feature and serves mainly as spacing between the two terms.
See Goodyear Tire & Rubber Co. v. Dayco. Corp., 201 USPQ
485, 489 n.4 (TTAB 1978) (difference of hyphen
insignificant).
In terms of sound, it is settled that there is no
correct way to pronounce a trademark. See In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) and Interlago
AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862
(TTAB 2002). See also In re Microsoft Corp., 68 USPQ 1195
(TTAB 2003) (it is not possible to control how consumers
will vocalize marks). Applicant’s allusions to the
contrary notwithstanding, we find the marks are phonetic
equivalents, which will be pronounced identically. See
Ser No. 77709903
6
RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960,
964 (TTAB 1980) (similarity in sound alone may be
sufficient to support a finding of likelihood of
confusion). See also, for example, Molenaar, Inc. v. Happy
Toys Inc., 188 USPQ 469 (TTAB 1975); and In re Cresco Mfg.
Co., 138 USPQ 401 (TTAB 1963).
In sum, despite the minor differences in spelling,
when compared in their entireties, the marks EZ GRO and
EEZY-GRO are substantially similar in appearance and
identical in sound. While admittedly both marks are highly
suggestive in meaning, they suggests the same idea, i.e.,
that both applicant’s and registrant’s goods facilitate
easy growth. As such, applicant’s mark and the cited mark
are highly similar commercial impression.
The du Pont factor of similarity/dissimilarity of the
marks thus favors a finding of likelihood of confusion.
We now turn to a consideration of the du Pont factors
of the relatedness of the goods, channels of trade and
classes of purchasers. It is settled that the question of
likelihood of confusion must be determined based on an
analysis of the goods recited in applicant’s application
vis-à-vis the goods recited in the cited registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
Ser No. 77709903
7
North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991).
Further, it is a general rule that the goods do not have to
be identical or directly competitive to support a finding
that there is a likelihood of confusion. It is sufficient
if the respective goods are related in some manner and/or
that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Where the goods in an application or cited
registration are broadly described, such that there are no
restrictions as to trade channels and purchasers, it is
presumed that the identification of goods encompasses not
only all goods of the nature and type described therein,
but that the identified goods are provided in all channels
of trade which would be normal therefor, and that they
would be purchased by all potential customers thereof.
See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981).
In this case we compare applicant’s “living flowers
and plants; flower and plant seeds” with registrant’s
Ser No. 77709903
8
“flower pots and planters.” On the face of the respective
identifications, it is clear that the goods are
complementary items that are commonly used together;
registrant’s goods being vessels into which applicant’s
living plants and seeds may be placed for the purpose of
potting plants or creating container gardens.
In addition, the examining attorney has made of record
various use-based third-party registrations showing that a
common mark has been registered by the same entity for both
seeds and/or plants and flower pots and/or planters. These
third-party registrations may serve to suggest that the
types of goods involved herein may emanate from a single
source. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988) (Although third-party registrations
are “not evidence that the marks shown therein are in use
on a commercial scale or that the public is familiar with
them, [they] may nonetheless have some probative value to
the extent that they may serve to suggest that such goods
and/or services are of a type which may emanate from a
single source”). See also Albert Trostel & Sons, 29 USPQ2d
at 1786.
These registrations include, by way of example:
Registration No. 1859361 for, inter alia,
flower, vegetable and herb seeds and clay
Ser No. 77709903
9
animals and clay replicas of plants used as
planters;

Registration No. 2832702 for, inter alia,
living plants and seeds, namely, plant, grass,
flower, perennial, vegetable and herb seeds and
plant trays and containers; and

Registration No. 3662618 for planters for
flowers and plants, with or without seeds.

The examining attorney has also made of record copies
of third-party registrations showing that the same entity
may render retail store and on-line services that feature
both types of goods included in applicant’s application and
the cited registration. Examples include:
Registration No. 277058 for retail store
services and mail order catalog services
featuring gift items including planters and
living plants and seeds;

Registration No. 3702981 for on-line retail
store services featuring, inter alia, seeds and
decorative pots and planters; and

Registration No. 3509884 for retail store
services and on-line retail store services
featuring, inter alia, planters and plants and
seeds.

Based on the goods as identified and the third-party
registrations, we find that applicant’s living plants and
seeds and registrant’s flower pots and planters are
complementary and closely related goods, all being
gardening items, which may be sold by the same source under
the same mark.
Ser No. 77709903
10
We find unpersuasive applicant’s argument that the
goods are unrelated because registrant’s goods are
inanimate objects whereas its goods are living plants and
seeds. As noted, the goods need not be identical for a
finding of likelihood of confusion; they need only be
related in such a way that consumers mistakenly believe a
commonality of source. See Albert Trostel & Sons Co.,
supra. As discussed, applicant’s living plants and seeds
and registrant’s flower pots and planters are complementary
items that may be used together in potted arrangements or
container gardens.
We also find unavailing applicant’s contention that
the “divergent” classification of the respective goods
supports a finding that the goods are unrelated. It is
well recognized that the system of dividing goods into
classes is a USPTO administrative convenience and that a
determination on the relatedness of the respective goods is
not restricted by this artificial boundary. See Jean Patou
Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir.
1993); Graco Inc. v. The Warner-Graham Company, 164 USPQ
400, 402 (TTAB 1969).
Furthermore, in the absence of any limitations to the
channels of trade or classes of purchasers in both
applicant’s application and the cited registration, we
Ser No. 77709903
11
presume that both applicant’s and registrant’s goods are or
will be sold in all the usual trade channels, including
garden centers, nurseries and via the internet and to all
the usual classes of purchasers, including ordinary
consumers. See In re Elbaum, supra.
In view of the foregoing, the du Pont factors of the
relatedness of the goods, channels of trade and classes of
purchasers strongly favor a finding of likelihood of
confusion.
Applicant has relied on a variety of cases to bolster
its contention that there is no likelihood of confusion
between its mark and the cited mark. However, as is often
noted by the Board and the Courts, each case must be
decided on its own merits. The determination of
registrability of a mark in another case does not control
the merits in the case now before us. See In re Nett
Designs Inc., 236 F.3d 1339, 51 USPQ2d 1564, 1566 (Fed.Cir.
2001). See also, In re Kent-Gamebore Corp., 59 USPQ2d 1373
(TTAB 2001); and In re Wilson, 57 USPQ2d 1863 (TTAB 2001).
Finally, to the extent that EZ GRO and EEZY-GRO are
highly suggestive and somewhat weak terms for applicant’s
and registrant’s respective goods, and such weakness raises
a doubt as to the likelihood of confusion, any such doubt
must be resolved in favor of the registered mark. See In
Ser No. 77709903
12
re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1025 (Fed.
Cir. 1998); and In re Martin’s Famous Pastry Shoppe, Inc.
221 USPQ 364 (TTAB 1984). That is, it is well settled that
even a weak mark is entitled to protection against the
registration of a very similar mark 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).
Here, after careful consideration of all of the
arguments and the evidence of record, we conclude that
purchasers familiar with registrant’s flower pots and
planters sold under the EEZY-GRO mark would be likely to
believe, upon encountering applicant’s mark EZ GRO for
living flowers and plants and flower and plant seeds, that
such goods originate from or are sponsored by or affiliated
with the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.