Keith W. Carmichael

Trademark Trial and Appeal Board

Sep 8, 2004

No. 76379678 (T.T.A.B. Sep. 8, 2004)

Mailed: September 8, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Keith W. Carmichael dba Cutting-Edge Agri Products
___________
Serial No. 76379678
___________
Jonathan A. Bay, Esq. for Keith W. Carmichael dba Cutting-
Edge Agri Products.
Josette M. Beverly, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
____________
Before Hanak, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Keith W. Carmichael dba Cutting-Edge Agri Products has
filed an application to register the mark LEGEND LESPEDEZA
on the Principal Register for “common or striate Lespedeza
(Kummerowia striata) seed used by pasture owners or managers
for growing forage for livestock consumption.”1 The

1 Serial No. 76379678, in International Class 31, filed March 7, 2002,
based on use in commerce, alleging first use and use in commerce as of
December 31, 1999.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76379678
2
application includes a disclaimer of LESPEDEZA apart from
the mark as a whole.
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark LEGEND, previously registered for “grass
seed mixtures,”2 that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney states that the marks are
substantially similar, contending that both marks contain
the word LEGEND and applicant merely adds a generic term,
LESPEDEZA, thereto; that LEGEND is not a weak mark in
connection with registrant’s goods; and that applicant’s
specimens show use of the mark with the term LESPEDEZA of
lesser dominance because it is smaller and below the term
LEGEND. Regarding the goods, the Examining Attorney
contends that the goods are related and the channels of
trade the same. In support of her position, the Examining

2 Registration No. 1,192,249 issued March 16, 1982, to E.J. Smith & Sons
Company, in International Class 31. The records of the USPTO show that
the current owner of the registration is Smith Turf & Irrigation Co.
[Sections 8 (six year and ten year) and 15 affidavits accepted and
acknowledged, respectively; renewed.]
Serial No. 76379678
3
Attorney submitted numerous third-party registrations for
marks that contain both “grass seeds” and “forage seeds” in
the identifications of goods; numerous excerpts from
articles in the LEXIS/NEXIS database that indicate that many
grasses are used for forage3; and definitions from The
American Heritage Dictionary of the English Language (3rd
ed. 1992) of “legend” and of “lespedeza” as “noun. See bush
clover. [New Latin Lespedeza, genus name, after V.M. de
Cespedez (misread as Lespedez; fl. 1785), Spanish governor
of Florida.].”
To summarize applicant’s arguments, applicant contends
that the marks are different due to the addition of
LESPEDEZA to his mark; that LEGEND is a weak and laudatory
term; that a type of “lespedeza” is a rampant invasive
perennial plant that is difficult and costly to eradicate
from pastures and, thus, the use of the term LESPEDEZA with
the highly laudatory term LEGEND creates a “sonorous” mark
that is an oxymoron; and that applicant’s annual plant is a
distant cousin to the invasive perennial plant. Regarding

3 The following is a representative sample of excerpts:
“The technique for raising grass (for forage) is so much
better…” The Courier Journal (Louisville, KY), January 14,
2003.
“The native bluegrasses, junegrass, and the exotic
cheatgrass are important sheep forage.” Lewiston Morning
Tribune, January 2, 2003.
“Its also used as a winter grass in the South and as forage
for grazing animals.” USA Today, December 17, 2002.
Serial No. 76379678
4
the goods, applicant contends that such products are
purchased with great care and in consultation with “expert
seed merchants”; that prospective purchasers evaluate
pasture plant types “according to feed value such as total
tonnage production, total digestible nutrients and vitamins,
adaptability, palatability, animal acceptance, and various
other health issues including matters involving pregnant
stock, young-of-the-year stock, milk-producing stock and so
on” (Brief, p. 15); that purchasers sign a purchase and use
license for such products; and that there is a substantial
difference between a grass family forage plant and a legume
family forage plant. Applicant states that pasture grasses
are distinct from landscape grasses; that different
considerations are involved in the purchase of landscape
grasses; and that the purchasers thereof do not exercise the
same degree of care in purchasing landscape grass.
In support of his position, applicant submitted lists
of third-party registrations for marks that include the term
LEGEND4; a technical report regarding applicant’s product;
brochures for other products produced by applicant; and
print-outs from the USPTO database of registrations that

4 In order to make these registrations properly of record, soft copies
of the registrations themselves, or the electronic equivalent thereof,
i.e., printouts of the registrations taken from the electronic records
of the Patent and Trademark Office’s (PTO) own database, should have
been submitted. See, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992).
Serial No. 76379678
5
include the term LEGEND for goods that include flowers,
plants and trees.5
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not

5 A significant number of these registrations are expired or cancelled
and, thus, are of little probative value.
Serial No. 76379678
6
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services 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). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
We take judicial notice of the definition of
“lespedeza” in Merriam-Webster’s Collegiate Dictionary (11th
ed. 2003) as “n. … any of a genus (Lespedeza) of herbaceous
or shrubby plants of the legume family including some widely
used for forage, soil improvement, and hay.” We conclude
from this definition and evidence in the record that
LESPEDEZA is merely descriptive, if not generic, in
connection with applicant’s identified goods.
Serial No. 76379678
7
Applicant’s mark consists of the cited mark, LEGEND, to
which the descriptive, or generic, word LESPEDEZA has been
added. Generally, the addition of a descriptive term to
another’s mark will not avoid likelihood of confusion.
Moreover, when a mark consists of a descriptive term and a
distinctive term, the distinctive term will be considered
the dominant part of the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). We
note, further, that applicant’s own use of its mark on its
specimens of record emphasizes the term LEGEND, which
appears in larger font and on a separate line from the term
LESPEDEZA. Following are two examples from applicant’s
specimens of use:

Serial No. 76379678
8

We find that the marks are sufficiently similar in sound,
appearance and connotation and overall commercial impression
that, if used in connection with similar or related
products, confusion as to source is likely. The marks in
both the registration for LEGEND and the application for
LEGEND LESPEDEZA are depicted in typed drawing form. This
means that the application and registration are “not limited
to the mark[s] depicted in any special form,” and hence we
are mandated “to visualize what other forms the mark[s]
might appear in.” Phillips Petroleum Co. v. C.J. Webb Inc.,
442 F.2d 1376, 170 USPQ, 35, 36 (CCPA 1971). See also INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB
1992).
We are not persuaded by applicant’s arguments that
LEGEND is a laudatory and weak term and, thus, the addition
of the descriptive, if not generic, term LESPEDEZA gives a
Serial No. 76379678
9
unique connotation to applicant’s mark that is adequate to
distinguish the marks.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
Serial No. 76379678
10
The goods in the cited registration, “grass seed
mixtures,” is not limited in any way and, thus, encompasses
mixtures of all types of grass seed for all purposes,
including for forage, soil improvement, hay and/or
landscaping. The evidence of record includes numerous
third-party registrations that include both grass seed and
forage seed. Applicant’s product, “common or striate
Lespedeza (Kummerowia striata) seed used by pasture owners
or managers for growing forage for livestock consumption,”
is clearly used for forage. It is not clear if it is
considered, technically, a “grass.” To the extent that
applicant’s seed may be considered a grass, it would be
encompassed within the registrant’s identified goods. Even
if applicant’s product is not, technically, a grass, it is
used for forage, as are many of the grasses encompassed
within registrant’s identified goods. As such, the goods
involved herein are closely related in nature and purpose.
The goods are related regardless of the fact that various
soil, climate and other factors would lead a particular
purchaser to choose one type of forage seed over another.
While it is logical that, as applicant states,
purchasers of its seed for forage are likely to carefully
consider the type of product that they will grow, as
applicant also states, purchasers of the registrant’s seeds
for, for example, landscaping purposes are not likely to be
Serial No. 76379678
11
such careful consumers. Also, it does not necessarily
follow that even knowledgeable business purchasers are
immune from confusion when the marks are as similar as these
marks and there is evidence that the goods with which these
marks are used do sometimes emanate from the same source.
See In re General Electric Company, 180 USPQ 542 (TTAB
1973).
Therefore, we conclude that in view of the similarity
in the commercial impressions of applicant’s mark, LEGEND
LESPEDEZA, and registrant’s mark, LEGEND, their
contemporaneous use on the closely related goods involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.