Glen Raven, Inc.v.Amerinova Properties, LLC

Trademark Trial and Appeal Board

Jul 23, 2013

No. 91192496 (T.T.A.B. Jul. 23, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: February 19, 2013 Mailed: July 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Glen Raven, Inc.
v.
Amerinova Properties, LLC
________
Opposition No. 91192496
_______

Christopher Kelly and Jennifer L. Elgin of Wiley Rein LLP for Glen Raven, Inc.
Jennifer L. Whitelaw of Whitelaw Legal Group for Amerinova Properties, LLC.
_______
Before Cataldo, Taylor and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Amerinova Properties, LLC (“applicant”) has filed an application to register
the mark SUN BRELLA’S for “living plants” in International Class 31.1 Glen
Raven, Inc. (“opposer”) opposed the registration of applicant’s mark, alleging that
applicant’s mark so resembles opposer’s assertedly famous mark SUNBRELLA for

1 Application Serial No. 77703289, filed March 31, 2009, pursuant to Section 1(a) of the
Trademark Act, alleging that applicant first used the mark, and first used the mark in
commerce, on March 28, 2009.
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Opposition No. 91192496

3

the affirmative defenses have been pursued at trial, they are considered as
withdrawn. See Research in Motion Limited v. Defining Presence Marketing Group
Inc., 102 USPQ2d 1187 (TTAB 2012) (affirmative defenses not pursued at trial
deemed waived).
Evidentiary Issues
Opposer has objected to the introduction of exhibits attached to applicant’s
notices of reliance 1, 2, 3 and 6. Opposer further moves to strike the first paragraph
of the section entitled “The Facts” in applicant’s trial brief. Applicant objects to the
introduction of exhibits 36-39 attached to the trial deposition of opposer’s Vice-
President of Marketing.
Opposer’s Objections
The exhibits attached to applicant’s first, third, and sixth notice of reliance
are web pages. To be admissible by notice of reliance, copies of pages from websites
must bear the date they were accessed, and the web address (URL) at which they
were located. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010). In this case, the pages that make up the exhibit to applicant’s first notice of
reliance do not bear dates or web addresses. The exhibits to applicant’s third and
sixth notices of reliance are identified by their URL location, but not by a date.10
Accordingly, opposer’s objection to the introduction of these web pages is sustained.

9 Applicant amended its initial answer as a matter of course within 21 days after service.
Fed. R. Civ. Pro. 15(a).
10 The reference to “2008-2009 Catalog” on the web page attached to applicant’s first notice
of reliance is insufficient to show when the page was accessed.
Opposition No. 91192496

4

Opposer’s objection to the introduction of the exhibits attached to applicant’s
second notice of reliance is overruled. These exhibits consist of printouts of third-
party registrations from the Trademark Applications and Registrations Retrieval
(TARR) database of the USPTO and, as such, are official records that are self-
authenticating. Trademark Rule 2.122(e); Calypso Technology, Inc. v. Calypso
Capital Management, LP, 100 USPQ2d 1213, 1217 (TTAB 2011). Accordingly, we
have considered them.
Opposer’s objection to the recitation of facts upon which applicant relies in its
trial brief centers on applicant’s inclusion of statements taken from the discovery
deposition of Birdie Lenard, applicant’s administrator to the executive director,
specifically at pgs. 36, 37, 44, 76 and 81-85. Opposer contends that the Board may
not admit such statements into evidence except to the extent they serve to rebut or
clarify other statements from portions of Ms. Lenard’s deposition that have been
previously adduced by opposer. Opposer contends that in this case, applicant is
impermissibly attempting to use the statements to affirmatively prove facts about
its own product and not merely to make not misleading those portions of Ms.
Lenard’s deposition that were introduced by opposer. In addition, opposer contends
that the statements do not support the facts as asserted. Reply Brief, p. 3.
Trademark Rule 2.120(j)(4) provides that a party may submit any portions of
a deposition “which should in fairness be considered so as to make not misleading
what was offered” by the adverse party. Here, opposer offered Ms. Lenard’s
deposition for several purposes, such as for showing the alleged fame of opposer’s
Opposition No. 91192496

5

mark, the similarities of trade channels and classes of purchasers, applicant’s
manner of use of its mark, and applicant’s alleged lack of familiarity with its retail
sales locations. Pages 36 and 37 of the deposition do not address these issues but
rather are directed to the witness’s understanding of the allegations contained in
the notice of opposition, and page 44 addresses the witness’ awareness of opposer’s
mark. The statements contained on these pages do not serve to make any portion
of the deposition as submitted by opposer not misleading and accordingly, they have
not factored into our decision herein. Pages 76 and 81-85 are directed, in part, to
identifying applicant’s contact with sales representatives of Euro American
Propagators, its largest client, and with green goods buyers (responsible for
purchasing plants at retail nurseries) in order to describe applicant’s channels of
trade. The information contained in these latter pages is directed to the same topics
as were presented by opposer’s submitted portions of the deposition. These latter
pages have been considered with respect to the issues of relevant trade channels
and classes of purchasers (although not for the purpose of showing, as applicant’s
witness asserts, that there have not been any instances of actual confusion).
Further, we agree with opposer that the facts as stated in applicant’s brief are not
necessarily supported by the statements in the deposition. Accordingly, we have
disregarded the first paragraph of applicant’s brief entitled “The Facts.”
Applicant’s Objections
Applicant objects to that portion of the testimony deposition of opposer’s Vice
President of Marketing, Harold (Hal) Hunnicutt, III, addressing market research
studies conducted at opposer’s behest in 1988 and 1989 (exhibits 36 and 37), a 1997
Opposition No. 91192496

6

survey developed in part by Mr. Hunnicutt to test brand awareness among the
boating market (exhibit 38), and an awareness study conducted in 2005 for opposer
by an unrelated third-party research firm (exhibit 39). Applicant objects to the
admissibility of the studies and related testimony. Opposer seeks to make the
reports of record to show brand awareness of its SUNBRELLA mark.11 Applicant
argues that the evidence constitutes inadmissible hearsay; is improperly being
offered as expert testimony; is too old to be of value; and has not been
authenticated.
We believe that applicant’s objections go to the weight of this evidence and
not to its admissibility. The studies appear to have been designed and conducted
according to accepted principles for determining accurate results, and are relevant
to the issue of the relative market strength of opposer’s mark. Accordingly, the
evidence is admitted for what it shows on its face. The studies and the related
testimony, however, have limited probative value. They were directed to a sample
that does not include buyers of live plants, and with the exception of the 2005 study,
were also not directed to buyers of outdoor items such as patio furniture, umbrellas,
or outdoor cushions, but rather to buyers of opposer’s fabric. Further, although
introduced by Mr. Hunnicutt’s testimony, Mr. Hunnicutt did not conduct, design or
direct the studies, with the possible exception of the study directed to the boating
market, and does not appear to have any first-hand knowledge thereof. Thus, we
have considered the evidence as showing that at the time conducted, for the

11 It is noted that the studies have been designated as confidential and were filed under
seal.
Opposition No. 91192496

7

representative sample that was included in the study, and limited to the market at
issue therein, a certain segment interviewed recognized SUNBRELLA as a brand
for opposer’s fabric. We have not, however, considered any of Mr. Hunnicutt’s
opinions regarding the results of the studies. Mr. Hunnicutt testified as a fact, not
an expert witness.
The Record
Pursuant to Trademark Rule 2.122(b), the record includes applicant’s
application file and the pleadings. In addition, opposer’s testimony and evidence
consists of: the testimony deposition of Harold (Hal) Hunnicutt, III, opposer’s Vice
President of Marketing; and notices of reliance covering print-outs from the TARR
database showing status and title of opposer’s pleaded registrations; publically
available news articles; copies of official documents regarding legal proceedings
brought by opposer against alleged third-party infringers of its SUNBRELLA mark;
excerpts from applicant’s responses to opposer’s first set of interrogatories Nos. 1,
11 and 14; portions of Ms. Lenard’s discovery deposition; copies of pages from
opposer’s website; copies of third-party registrations purporting to show that a
single entity has registered a mark covering goods of both parties; and copies of
magazine articles directed to landscape architects containing opposer’s advertising.
In light of our rulings above on applicant’s trial submissions, applicant’s
admissible evidence consists of portions of the discovery deposition of Ms. Lenard;
TARR printouts of two registrations for the mark SUNDRELLA and SUNDRELLA
CASUAL and design; and certain of opposer’s responses to applicant’s first and
second set of interrogatories and requests for admission.
Opposition No. 91192496

8

We now turn to a consideration of the issue of priority and likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer
must establish that there is a likelihood of confusion by a preponderance of the
evidence.
Standing and Priority
Standing is a threshold jurisdictional issue in every case, directed solely to
determine the interest of the plaintiff. Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999). See also, Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 188 (CCPA 1982); and Selva & Sons, Inc.
v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983). Because
opposer has properly made its pleaded registrations of record, opposer has
established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, 213 USPQ at 189.
Opposer’s pleaded registrations for the mark SUNBRELLA, and the marks
that include SUNBRELLA, show opposer as owner and that the registrations are
subsisting. Accordingly, Section 2(d) priority is not at issue in this case as to the
marks and goods covered by the respective registrations. King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Opposition No. 91192496

9

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and/or services. 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).
Because evidence has been made of record regarding the factors of fame, the
channels of trade and the relevant classes of consumer, we have considered these
additional factors in making our determination. To the extent that any other du
Pont factors for which no evidence or argument was presented may nonetheless be
applicable, we treat them as neutral. We first consider the strength of opposer’s
mark.
A. Strength of Opposer’s Mark
“A strong mark … casts a long shadow which competitors must avoid.”
Kenner Parker Toys Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992) (“When an opposer’s trademark is a strong, famous
mark, it can never be ‘of little consequence,’ ” quoting Specialty Brands v. Coffee
Bean Distribs., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984)). In
considering the inherent strength of the mark under the factor of fame, we have
considered the inherent strength of the mark based on the nature of the mark itself
as well as its commercial strength. See Tea Board of India v. Republic of Tea Inc.,
80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas McCarthy, McCarthy on
Opposition No. 91192496

10

Trademarks and Unfair Competition § 11:83 (4th ed.)(“The first enquiry focuses on
the inherent potential of the term at the time of its first use. The second evaluates
the actual customer recognition value of the mark at the time registration is sought
or at the time the mark is asserted in litigation to prevent another’s use.”).
Opposer’s marks SUNBRELLA, SUNBRELLAS, and SUNBRELLA “PLUS”
have been registered on the Principal Register as inherently distinctive marks
without resort to Section 2(f) or subject to a disclaimer. The registrations, being
over five years old, are incontestable and no longer subject to challenge under
Trademark Act § 2(e). Trademark Act § 14(3), 15 U.S.C. § 1064(3). The marks are
inherently strong. We have focused our analysis on opposer’s word marks, as they
are the closest to applicant’s SUN BRELLA’S mark.
Opposer has also shown that its mark SUNBRELLA is commercially strong.
It has been in continuous use for over 50 years on fabrics of many types, in
particular, high-performance fabrics that are primarily used for making awnings,
boat covers, and outdoor furniture cushions.12 Sales, while confidential, have been
shown to be substantial, doubling over the past decade and “driven by the growth of
the outdoor room concept.”13 Advertising expenditures, filed under confidential
seal, have also been sizable.14 The SUNBRELLA mark has been extensively
promoted through print, internet, television and social media.15 Opposer has a

12 Hunnicutt dep., pp. 21-22.
13 Hunnicutt dep., p. 158.
14 Hunnicutt dep., p. 133.
15 Hunnicutt dep., pp. 130-132, see also pp. 77-82 (television), 118 (internet), 119 (Facebook,
Twitter and YouTube); see generally exhibit 3 (advertising since the early 1960’s); exhibits
5, 13-14 (promotional videos); exhibits 6-12 (advertising furniture, umbrellas, rugs, and
Opposition No. 91192496

11

significant investment in its website “sunbrella.com,” which has been in operation
since 1998.16 Opposer has also received considerable unsolicited media coverage.17
Opposer received two advertising awards for SUNBRELLA ads, in 2008 and 2009,18
and reaches out to gardeners and garden clubs to expose them to the concept of the
“outdoor room,” discussed more fully below. Opposer engages in enforcement
activity to protect its rights in the SUNBRELLA mark, including through
opposition and cancellation proceedings filed with the Board.19
Overall, the record evidence supports a finding that opposer’s mark is
commercially strong among opposer’s customers, i.e., wholesalers, landscape
architects, fabric stores, and designers. Critically, however, the record provides no
direct evidence as to the extent of the awareness of the SUNBRELLA mark by the
ultimate consumers who purchase finished products made with SUNBRELLA
brand fabrics. While this is not typically necessary, here such evidence would be
especially probative, given that opposer does not sell directly to end users. As
discussed more fully below, the consumers of the finished goods incorporating
opposer’s fabric are the only class of customers that overlaps with applicant’s
customers. While there is evidence in the record that the SUNBRELLA mark

sheer fabric under the SUNBRELLA mark); and exhibits 27-29 (advertising in gardening
magazines).
16 Hunnicutt dep., p. 118 and 125.
17 Hunnicutt dep., p. 166; exhibit 42; Second notice of reliance, exhibit B.
18 Hunnicutt dep., pp. 134, 137; exhibits 34 and 35.
19 Hunnicutt dep., p. 171; Exhibit 44; Fourth notice of reliance, exhibits D1-D3. In this
regard, the fact that there exist two registrations, owned by the same entity, for the marks
SUNDRELLA and SUNDRELLA CASUAL, for outdoor furniture, is not dispositive. This
number of similar, but not identical marks is too few to impact the overall strength of
opposer’s mark.
Opposition No. 91192496

12

appears on, at least, some hang tags for finished goods, there is no information as to
the extent to which consumers of the finished goods have been exposed to such use
of these hang tags, as part of the “outdoor room” or otherwise. The extent to which
finished goods that incorporate opposer’s fabric have been advertised directly to the
ultimate retail consumer is also unclear. Direct customer evidence is particularly
probative in such circumstances; thus, in the absence of direct customer evidence,
we are unable to ascertain the extent of consumer awareness of opposer’s
SUNBRELLA mark to identify the source of opposer’s fabrics as used in connection
with finished goods incorporating those fabrics. We also note the lack of
information as to the percentage share of the market SUNBRELLA products
command in the end-user category. Nonetheless, the record shows that the mark
SUNBRELLA generally is strong among purchasers of outdoor furniture. We do not,
however, find that the mark is well-known or famous among these purchasers.
Thus, while this du Pont factor favors opposer somewhat, it does not mandate
that we accord opposer’s mark extreme deference in terms of the latitude of legal
protection it receives. Because of the dominant role fame plays in the likelihood of
confusion analysis when it exists, it is the duty of the party asserting fame to
clearly prove it. Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597
(TTAB 2009); Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
B. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
Opposition No. 91192496

13

similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under the first du Pont factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); and Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). 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). Under actual marketing
conditions, consumers do not necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their imperfect recollections. See
Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
Opposer’s mark SUNBRELLA for “fabrics for awnings, furniture, handbags,
and sportswear” is closer in sight, sound, meaning and commercial impression to
applicant’s mark SUN BRELLA’S than are opposer’s other word marks or its design
marks and we limit our discussion to that mark. If we find that there is no
likelihood of confusion with opposer’s SUNBRELLA mark, there is no need for us to
consider the likelihood of confusion with the other registered marks. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). We note that the
identification of goods for all of opposer’s marks, with the exception of
Opposition No. 91192496

14

SUNBRELLAS for sunscreen lotions, include fabrics made for use in the
manufacture of indoor and outdoor furniture.
Applicant’s mark SUN BRELLA’S is virtually identical to opposer’s mark
SUNBRELLA. Both contain the suggestive letter string S-U-N-B-R-E-L-L-A. The
space between the words SUN and BRELLA’S and the addition of the “apostrophe
S” in applicant’s mark do not change the appearance or pronunciation of applicant’s
mark enough that a prospective purchaser would be likely to distinguish it from
opposer’s mark. Both marks share the identical term “SUN” as the first word or
component thereof; its significance is reinforced by its location. Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897) TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed in the mind of a purchaser and
remembered”). See also, Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the
marks, consumers must first notice the identical lead word). The presence or
absence of a space between the two words does not change the meaning or the
commercial impression each mark as a whole conveys. See, e.g., In re Cox
Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“Without the space, THEATL
is equivalent in sound, meaning and impression to THE ATL and is equally
descriptive of applicant's goods.”); Seaguard Corp. v. Seaward International, Inc.,
223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essentially
identical”). Likewise, the presence of the apostrophe in the term BRELLA’S in
applicant’s mark merely creates a possessive form of the term BRELLA in opposer’s
Opposition No. 91192496

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mark. Consumers will not take the time to analyze the slight differences in
meaning created by the inclusion of the apostrophe and letter “s” in applicant’s
mark. See, e.g., Winn's Stores, Incorporated v. Hi-Lo, Inc., 203 USPQ 140 (TTAB
1979) (“little if any trademark significance can be attributed to the apostrophe and
the letter ‘s’ in opposer’s mark” WINN’S when compared to applicant’s mark WIN-
WAY). Keeping in mind that the comparison of the marks is not made on a side-by-
side basis and that recall of purchasers is often hazy and imperfect, these slight
differences are not likely to be noticed or remembered by consumers when
encountering these marks under market conditions. Finally, the commercial
impressions of the marks are similar. Each offers a play on the word “umbrella” by
replacing the letters “um” with “sun.” This connotation is reinforced by the fact that
opposer’s goods include umbrellas and awnings for use in the sun, whereas
applicant’s goods include live plants “all of which were specifically bred to grow best
in the sun.”20
The strong visual and aural resemblance between the marks, as well as the
similar connotations and commercial impressions evoked by the marks outweigh
any slight differences in impression created by the spacing and use of the possessive
form in applicant’s mark. Accordingly, this du Pont factor favors opposer.
C. Comparison of the Goods; Trade Channels; Classes of Purchasers
Applicant’s application is for “live plants.” Opposer makes fabrics.
Paragraph 2 of the notice of opposition alleges use of the SUNBRELLA mark since
1959 on “a line of performance fabrics for a variety of uses, including awnings,

20 Applicant’s response to opposer’s first set of interrogatories, No. 1.
Opposition No. 91192496

16

indoor, outdoor and garden furniture, accessories such as draperies, pillows, rugs
and throws, bedding products and varied marine uses, including sail covers,
windshield coves and deck enclosures.” These goods are not competitive in nature,
but it is not necessary that the goods be competitive in order to support a finding of
likelihood of confusion, “it being sufficient that the goods or services are related in
some manner and/or that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same persons under
circumstances that would give rise, because of the marks employed thereon, to the
mistaken belief that they originate from or are in some way associated with the
same producer.” In re Home Builders Association of Greenville, 18 USPQ2d 1313,
1317 (TTAB 1990).
To determine whether the goods are related for likelihood of confusion
purposes, we have looked to the nature and purpose of the goods, including whether
they are complementary or used in conjunction with each other; whether the
marketing methods, channels of trade and classes of purchasers are the same; and
whether other companies offer both types of goods under the same mark. The
record evidence overwhelmingly suggests that in all but a very limited arena, the
marketing channels and classes of consumers are so disparate that these marks will
not be encountered by the same persons under similar buying conditions. Even in
this limited arena, i.e., the “outdoor room” market, confusion is not likely.
Opposer is strictly a textile manufacturer. It produces many different types
of fabrics, such as fabrics for use in constructing ladies’ hosiery and for use in active
Opposition No. 91192496

17

outerwear, flags, and backpacks,21 but opposer only supplies the fabric and does not
manufacture any of the finished products. Starting in 1959, opposer began using its
mark SUNBRELLA for outdoor awning fabrics.22 As Mr. Hunnicutt explained,
“Sunbrella is an ingredient brand, and by that, I mean, it’s a – it’s a well-known
brand of a component of a finished product, and it’s kind of like the Intel inside of
the furniture world.”23 Opposer expanded its outdoor uses of SUNBRELLA fabric to
include boat canvas tops and sailboat sail protection fabrics, convertible car tops,
drapery fabrics, outdoor rugs, decorative blankets or throws, and “in the outdoor
furniture market for a fabric for cushions and sling chairs and umbrellas.”24 It is
this latter use with which we are particularly concerned.25 We have carefully
considered the evidence that opposer has presented with respect to the outdoor
furniture market.
Opposer argues that there has been an evolution in the way outdoor furniture
is marketed as a result of the growth of the “outdoor room.” Today, opposer argues,
live plants and furniture are sold together as part of the outdoor room. In his
deposition, Mr. Hunnicutt discusses the emerging market for “outdoor rooms,” a

21 See, e.g., opposer’s corporate brochure, Ex. 2 to Hunnicutt deposition.
22 Hunnicutt dep., p. 21.
23 Hunnicutt dep., p. 104.
24 Hunnicutt dep., pp. 21-22.
25 The use of the SUNBRELLA mark in the automotive and boating industry markets is
irrelevant, because there is no record evidence to show that there is any market overlap,
relatedness of the goods, or similarity in the trade channels or classes of consumers among
the automotive or marine markets and applicant’s market for live plants. To the extent
that opposer’s evidence of use pertains to these markets, while we have not disregarded it,
it simply does not bear on the likelihood of confusion issue.
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concept he describes as a “romancing of what we call the outdoor living room.”26 He
explains that the “growth trend has been fueled in part by the development of nicer,
from an aesthetic standpoint and a comfort standpoint, furniture that can go
outdoors to a level where today both the furniture and the fabrics are durable
enough for outdoors but also look nice enough to belong inside the home.” 27 When
asked to name the various components that make up an outdoor room, Mr.
Hunnicutt answered that “it starts with the notion that you take an outdoor
concrete patio or wooden deck and you add to it elements that make a nice living
environment; comfortable and attractive furniture. Some form of shade, …
landscaping and hedges and trees and plants … lighting and accessories and water
features such as fountains and fire features such as fire pits or outdoor chimneys
and grills … you end up with an environment that’s far beyond just a chair and a
Weber grill.”28
In this vein, opposer argues that SUNBRELLA brand fabric is an integral
part of the outdoor room concept due to its high-performance, weather-resistant
feature. It is in the “outdoor room” environment that opposer claims its customers
could encounter those plants sold by applicant under the mark SUN BRELLA’S,
causing confusion of source or sponsorship. Whereas in the past, live plants and
outdoor furniture would not travel through the same trade channels to be

26 Hunnicutt dep., p. 29.
27 Id. Thus, we have considered the record evidence pertaining to the indoor use of
SUNBRELLA brand fabrics on indoor furniture, and in connection with rugs, decorative
blankets and throws, to the extent these items are shown to be components of the outdoor
room.
28 Hunnicutt dep., p. 30.
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purchased by the same classes of consumers, today, opposer argues, the popularity
of the outdoor room has led to changes in the way the components that make up the
outdoor room are marketed, such that at the retail level, the various components
are displayed and sold together in a complementary fashion. Mr. Hunnicutt states:
We’ve begun to see that a lot of retailers – for a lot of retailers of
products that contain Sunbrella, particularly outdoor furniture, have
been integrated as a product offering to the consumer as an element of
the outdoor room. And by that, I mean all the different components of
the outdoor room including the furniture and including the live plants
and – have been positioned next to each other, so they are
complementary and they are offering and they all revolve around that
concept of the outdoor room.29

These retailers include large retail chain stores as well as smaller garden
centers that have expanded their offerings to include live plants and furniture.
A key question in determining whether products would be considered
complementary is whether they would be purchased and used together, inasmuch
as complementary goods are typically used, served, or consumed together and found
when encountering one good while purchasing the other. In re Sela Products, LLC,
Serial No. 77629624, ___ USPQ2d ___ (TTAB March 26, 2013) (purchasers likely to
encounter both surge protectors, and wall mounts and brackets, during course of
purchasing a television, audio or home theater system); American Drill Bushing Co.
v. Rockwell Manufacturing Co., 52 C.C.P.A. 1173, 342 F.2d 1019, 1022 (1965) (drill
bits and drill brushings are complementary products). That two goods are used
together, however, does not, in itself, justify a finding of relatedness. Shen

29 Hunnicutt dep., p. 67.
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Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d 1350,
1355-1356 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related);
Packard Press, Inc. v. Hewlett-Packard, Co., 227 F.3d 1352, 1358 (Fed. Cir. 2000)
(fact that computer hardware and software products are used during the rendering
of data processing services does not make the goods and services related). The test
is not that goods and services must be related if used together, but whether their
use is complementary. There is nothing in the evidence to suggest that live plants
and fabrics, including those that are used in the manufacture of outdoor furniture
and umbrellas, are complementary in nature and thus related. On this record, we
conclude that the goods are not complementary even though they may be
components of an “outdoor room.”
Nonetheless, “goods that are neither used together nor related to one another
in kind may still be related in the mind of the consuming public as to the origin of
the goods. It is this sense of relatedness that matters in the likelihood of confusion
analysis.” Shen, 73 USPQ2d at 1356, citing Recot, Inc. v. Becton, 214 F.3d 1322,
1329 (Fed. Cir. 2000) (comparing FRITO-LAY for snack foods to FIDO LAY for dog
treats). The consuming public must understand the products to have originated
from the same source. Opposer argues that the public has become accustomed to
consider the goods to be related because they are sold together by the same retail
establishment and used in conjunction as part of the outdoor room, and because
they are advertised together.
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21

As to advertising, opposer points to its own, and to third-party, advertising as
evidence that the goods are related. Internet, catalog and advertising information
that show third parties offer for sale the same types of goods or render the same
services that are identified in the application and cited registrations may suggest a
likelihood of confusion. Opposer’s website includes postings apparently designed to
teach users to be aware of color used in the outdoor room, and to consider the green
of plants as one color to mix with the colors of chairs, sofas, pillows and cushions.30
Promotional videos featuring a television design celebrity, Joe Ruggiero, are used to
promote SUNBRELLA brand fabric, “to give people ideas about how to use the
fabric in their outdoor room and how to design outdoor living spaces.”31 These
videos, which appeared on opposer’s website and are “provided on disk to customers
for use in their showrooms,”32 include “How to Design an Outdoor Room,”33 a
segment wherein Mr. Ruggiero explains how to set up an outdoor room by using one
principle of design known as “containment”: defining a space outdoors to resemble
a room with floors, walls, and a ceiling. He explains the integration of plants with
furniture by showing how “hedging creates a sidewall,” or “gives the illusion of a
wall,” which may also be defined by the “architectural use of plants.”34 Opposer
seeks to show by this evidence that prospective consumers look for the design
relationship between plants and furniture, and will consider these elements when

30 For example, at www.sunbrella.com/blog/index.php/fabrics/inspiring-hues/, the article
advises readers to “add a splash of pink” color from upholstery to mix with the dominant
greens from plants, grass and flowers. Opposer’s eighth notice of reliance.
31 Hunnicutt dep., p. 73.
32 Id.
33 Hunnicutt dep., p. 70; exhibit 13.
34 Id.
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making purchasing decisions. We find this evidence unpersuasive. It does not show
that prospective consumers have become conditioned to view the goods as related.
Importantly, there is no information in the record as to the extent of exposure
consumers may have had to opposer’s advertising. Moreover, the designer advice
given has not been shown to impact the purchasing decision. It also does not link
opposer as a source of origin or sponsorship of live plants.
Third-party media attention to the outdoor room concept also does little to
suggest that a manufacturer of fabrics for outdoor furniture cushions and umbrellas
such as opposer, or even a manufacturer of outdoor furniture cushions, would be a
source for live plants. For example, an article from StarTribune.com dated March
17, 2010 entitled Restoration Hardware launched its first garden furniture collection
notes that “the home store has launched its first collection for the garden, with 13
groupings of furniture as well as items ranging from fountains, lanterns and textiles
to fire pits, lighting, tools, planters, plants and architectural elements.” This simply
lists a large number of unrelated items that make up the outdoor room. In the
article, Liven Up Outdoor rooms with Plants, Furniture, Tulsa World, May 21, 2010,
the president of Amini’s Galleries recommends that readers choose high-end
furniture for their outdoor rooms, using fabric such as “the new generation
Sunbrella fabric,” and that they “decorate with the season’s brightest and best
plants.”35 Again, the mere fact that a typical outdoor room includes plants and
landscaping as well as outdoor, casual furniture, and that these items may be sold
together, does not compel the conclusion that consumers would be confused as to the

35 Opposer’s second notice of reliance.
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source or origin or sponsorship of widely disparate goods simply because they are
offered for sale together as components of the outdoor room.
A large number of articles have been introduced that have appeared in home
and garden-related magazines, which describe how a designer has decorated his or
her (or a client’s) house, several rooms within the house, or the outdoor room with
plants and furniture, as well as other features such as fountains, umbrellas, rugs,
grills, and statuary. Photographs proliferate in these articles, showing off the
creative design and display of furniture and other objects, including live plants, in
the room. At the end of the article, an advertising information page appears. Its
purpose is to provide the interested shopper with names, contact information, and
pricing on the various items shown in the photographs or described in the article.
These typically include pricing information for the furniture, lighting, water
features, rugs, paintings, grills – but not the plants, even where they figure
prominently in the photos.36 Likewise, opposer has not provided any shots of any of
the in-store outdoor rooms that it asserts are created by the “big box” retailers to
advertise how to set up an outdoor room.37

36 For example, opposer’s second notice of reliance includes an article from Better Homes &
Gardens, dated December 1, 2008, entitled “Mediterranean Refinement.” It describes how
designer Carolyn Isler and architect Larry Boerder designed an “old-world-style home” for
Bettina and Greg England in Dallas, Texas. In 16 pages, full-page photographs and short
captions describe the room arrangements and the appointments. At the end of the article is
a listing of resources, identifying the furniture, appliances, lamps, flooring, cabinetry, etc.
in the pictures together with the name of the provider. “Sunbrella” is listed under “cushion
fabric.” None of the plants, large or small, outside or in planters, is identified in the
resources listing.
37 This is particularly surprising, given that Mr. Hunnicutt testified that he and his staff
regularly visit these stores, as well as patio furniture retailers and garden centers to find
out how applicant’s product is being displayed. “We’re visiting places like garden centers
and paying attention to how the weather impacts their business and what kind of traffic
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Under cover of its fifth notice of reliance, opposer has submitted copies of web
pages from on-line garden centers that sell both plants and components of the
outdoor room in a single website. Several similar website pages were also
introduced during Ms. Lenard’s discovery deposition.38 In reviewing this evidence,
we have observed that even though there may be a “home page” that includes links
both to plants and furniture, the web pages that are devoted to plants are
separately tagged and accessible through different links than are the web pages
that advertise outdoor furniture.39 In addition, most of the online garden centers
identify the plants being advertised by their specific species name, but few websites
indicate the brand name of the furniture item being sold, or which of the particular
items displayed in the pictured grouping on the site are available for sale.
Purchasers buying their products through the websites are likely to conclude, given
the remoteness of the plants from the furniture, and the detail with which the
plants are identified as contrasted with the general nature of the outdoor room
merchandise, that the garden center providing the website focuses its sales on live
plants and merely displays the products of various manufacturers of outdoor

they’re seeing, and how much people are coming into their store for outdoor room elements
and how much of it is strictly accessories and how much of it is strictly plants and kind of
how they’re tying the whole story together…” Hunnicutt dep., p. 98.
38 Specifically, exhibits 28, 36 and 57.
39 An exception appears to be Exhibit 57, attached to Ms. Lenard’s deposition, which shows
a garden-center website advertising patio furniture, live plants, and landscaping services
on the same web page. Even so, this level of attenuation between plants on the one hand
and furniture on the other appears to be as extreme as that of the typical “big box” store
departmentalization.
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25

furniture and other components of the outdoor room on their sites.40 Although Ms.
Lenard agreed that at the garden centers she visits, furniture may also be sold,41
she described the furniture she had seen as being made of metal, “or it’s distressed
or rotting.”42 Overall, the websites do not show that the purchasing public would
perceive that the goods are related.
Opposer has also submitted copies of three live use-based, third-party
registrations to show that plants and furniture are being offered for sale by a single
entity.43 Copies of third-party registrations may serve to suggest that the goods are
of a type which may emanate from a single source. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785 (TTAB 1993). However, a mere three registrations are
entirely insufficient from which such conclusion may be drawn. Moreover, two of
the three registrations are owned by the same entity.44 Accordingly, these third-
party registrations have very little probative value.
The parties’ respective classes of customers do not otherwise overlap. In
identifying applicant’s customers, Birdie Lenard, applicant’s administrator,
identified applicant as an “intellectual property management company” that

40 Whether it is likely that, by continuing to click on the links to obtain information about
the furniture, a user would come to learn the brand name of the merchandise, its price,
dimensions, the material from which it is made, etc., is unknown on this record.
41 Lenard discovery dep., p. 125.
42 Lenard discovery dep., p. 125.
43 Opposer submitted 3 live registrations, 2 dead registrations, and 7 applications. The two
dead registrations were cancelled under Section 8 and are not evidence of use of the marks.
The pending applications are evidence only of the fact that the applications were filed on a
certain date; they also are not evidence of use of the marks. Nike Inc. v. WNBA Enterprises
LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007).
44 Reg. No. 3150457 for the mark GARDENERS EDEN and Reg. No. 3243519 for the mark
GARDENERS EDEN THE SPIRIT OF THE GARDEN IN ALL THINGS.
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“doesn’t actually sell plants”45 but maintains a licensing arrangement with Euro
American Propagators,46 who purchases unrooted cuttings from Vietnam and grows
them for sale to garden centers, farms, and nurseries.47 Opposer does not sell to
nurseries, farms or garden centers. Opposer’s customers are companies that
manufacture awnings, furniture (indoor and outdoor), cut yardage retailers such as
Calico corners and JoAnn Fabrics, interior designers, and “decorative jobbers”48 who
put together collections of fabrics for use by their design customers.49 Opposer’s
customers also include landscape architects.50 Opposer works with the American
Society of Landscape Architects “to promote Sunbrella fabric for outdoor spaces.”51
Opposer contends that these landscape architects (or designers) with whom it works
are now offering outdoor room design and construction whereby they will purchase
live plants and furniture for their clients as part of the overall exterior project.52
Nothing in the record suggests that this class of professional consumer purchases
applicant’s plants, or that, even if such customer did, he or she would be confused as

45 Lenard discovery dep., p. 25.
46 Lenard discovery dep., p. 30.
47 Lenard discovery dep., pp. 138 and 140; Exhibit 65 (list of customers who received SUN
BRELLA’S brand plants).
48 Hunnicutt dep., p. 32.
49 Hunnicutt dep., p. 33. Opposer also sells its fabric to companies that manufacture or
repair boats and convertible automobile tops. Opposer has relationships with big box stores
such as Home Depot and Costco as well as larger retailers such as Restoration Hardware,
Pottery Barn and Crate and Barrel. Opposer does not sell its fabric to these stores; opposer
sells “to the companies that supply product to them.” Id.
50 Hunnicutt dep., p. 34; opposer’s tenth notice of reliance, Ex. J.
51 Hunnicutt dep., p. 85; opposer’s tenth notice of reliance (advertisements directed to
landscape architects).
52 Hunnicutt dep., p. 86. Q: And just to be clear, is it your understanding, based on your
knowledge, that landscape architects also choose and purchase live plants for their clients?
A: Yes.
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to the source of origin of the goods. We see no likelihood of confusion among
landscape designers.
Accordingly, these du Pont factors weigh against a finding of likelihood of
confusion.
D. Balancing the factors.
Opposer’s mark is well-known among purchasers of fabrics in the piece, and
is known to purchasers of outdoor furniture, and applicant’s SUN BRELLA’S mark
is similar to opposer’s SUNBRELLA mark. The goods, channels of trade, and
classes of purchasers, however, are markedly different. The only overlap has been
shown in regard to purchasers of outdoor furniture, who may encounter live plants
as part of the sale of the “outdoor room” concept. The concurrent sale of furniture
and live plants however, has not been shown to make them complementary
products or sufficiently related such that relevant purchasers would be confused as
to the source or sponsorship of the goods. Accordingly, we find that applicant’s
registration of the mark SUN BRELLA’S is not likely to cause confusion with
opposer’s SUNBRELLA marks.
Dilution
We now consider opposer’s dilution claim. The Lanham Act provides for a
cause of action for the dilution of famous marks. The fame that must attach to a
mark for it to be eligible under the dilution provisions of the Trademark Act is
greater than that which qualifies a mark as famous for the du Pont analysis of
likelihood of confusion. Toro Co. v. ToroHead Inc., 61 USPQ 1164, 1170, (TTAB
2001), citing I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 47 USPQ2d 1225,
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1239 (1st Cir. 1998) (“[T]he standard for fame and distinctiveness required to obtain
anti-dilution protection is more rigorous than that required to seek infringement
protection.”). Since we have already found that, on this record, opposer’s
SUNBRELLA marks do not have the du Pont analysis fame, then it would follow
that they do not have the fame necessary for a dilution claim. Having found so, we
need not reach the other factors in a dilution analysis.

Decision: The opposition is dismissed under both Sections 2(d) and 43(c) of
the Trademark Act.