Lebanon Seaboard Corporationv.R & R Turf Supply, Inc.

Trademark Trial and Appeal Board

Feb 9, 2012

No. 91197241 (T.T.A.B. Feb. 9, 2012)

Mailed:
February 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Lebanon Seaboard Corporation

v.

R & R Turf Supply, Inc.
_____

Opposition No. 91197241
to application Serial No. 77850120
filed on October 16, 2009
_____

Holiday W. Banta of Woodard, Emhardt, Moriarty, McNett &
Henry LLP for Lebanon Seafood Corporation.

Matthew J. Schonauer and John J. Okuley of Mueller Smith &
Okuley LLC for R & R Turf Supply, Inc.
______

Before Seeherman, Bucher and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Lebanon Seaboard Corporation has opposed, on the ground
of likelihood of confusion, the application of R & R Turf
Supply, Inc. to register TURFECTA, in standard characters,
as a trademark for “grass seed.”1 In particular, opposer

1 Application Serial No. 77850120, filed October 16, 2009, based
on Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91197241
2
alleges that it is the owner of Registration No. 1492504 for
TRIFECTA for lawn seed; that it first used the mark in
commerce for lawn seed as early as September 1, 1987, and
has used the mark continuously prior to any date of first
use on which applicant may rely; that opposer’s mark is
entitled to a broad scope of protection; that the parties’
marks are substantially similar and the goods are identical;
and that applicant’s mark for its identified goods is likely
to cause confusion or mistake or to deceive.2
Applicant denied the salient allegations of the notice
of opposition. It also included in its answer additional
paragraphs that we regard as explanations for its denials,
including that the suffix FECTA is a laudatory phrase in the
English language; that at least 56 third-party registrations
utilize a version of FECTA in their marks as an
incorporation of “perfect”; that “Trifecta” is an English
word that is used for a popular type of horse racing bet,
and is also used to describe a difficult achievement or a
grouping of three positive elements; that FECTA conveys a

2 In its brief, in response to applicant’s argument that the
FECTA element of the marks is descriptive and therefore should be
given less weight, opposer stated that if this were true then
applicant’s mark is merely descriptive. We regard this statement
as opposer’s attempt to point out that applicant’s position is
untenable in view of applicant’s additional assertion that its
TURFECTA mark “instantly conjures up images of turf, grass, or
lawn as the associated good or service without further inquiry.”
Brief, p. 13. However, to the extent that opposer meant its
statement to be a serious claim, we agree with applicant that
this ground was neither pleaded nor tried.

Opposition No. 91197241
3
laudatory connotation; and that opposer markets its goods in
the golf course market while applicant markets its goods to
the suburban hobby farmer market.
By operation of the rules, the record includes the
pleadings and the file of the opposed application.
Shortly before the close of discovery the parties
stipulated that they would seek determination of the merits
of this case through Accelerated Case Resolution Procedure
(ACR). This is an alternative procedure to typical Board
inter partes proceedings that involve full discovery, trial
and briefing. By adopting an ACR option, the parties can
obtain a determination in a shorter time period. See TBMP
§ 702.04 (3d ed. 2011).3 One common approach to
accelerating resolution of a case involves a stipulation by
the parties to submit their trial evidence concurrently with
their legal arguments, as in a case involving cross-motions
for summary judgment, thereby obviating the need to schedule
separate trial periods for the taking of testimony and
submission of other evidence. See, e.g., Weatherford/Lamb,
Inc. v. C & J Energy Services, Inc., 96 USPQ2d 1834 (TTAB
2010); Miller Brewing Co. v. Coy International Corp., 230
USPQ 675 (TTAB 1986); and TBMP § 528.05(a) (3d ed. 2011) and

3 The Board also makes information on ACR options available
through its web page, at the following internet address:
http://www.uspto.gov/trademarks/process/appeal/index.jsp, and at
TBMP § 702.04(a) as well as at TBMP § 528.05(a).
Opposition No. 91197241
4
authorities cited therein.4 Another approach, which may be
used in conjunction with or in lieu of the first, is to
simplify proceedings through the use of fact stipulations
and stipulations regarding the admissibility of certain
evidence. See, e.g., Target Brands, Inc. v. Shaun N.G.
Hughes, 85 USPQ2d 1676 (TTAB 2007). Under this latter
approach, time and resources that would otherwise be
allocated to proof of facts is saved and the parties’ later
briefs on the legal issues can be focused on the issues
subject to actual dispute.
The parties in this case combined the aforementioned
approaches, and stipulated to a schedule that did not
include testimony periods, but resulted in the concurrent
submission of briefs and supporting evidence.5 In addition,
the parties stipulated to the following:
Opposer has standing to bring this opposition;

Opposer is the owner of trademark registration No.
1492504, issued June 14, 1988, for TRIFECTA for
lawn seed, and the identification of goods in that
registration contains no limitation as to channels
of trade or purchasers;

Priority of use is not at issue;

4 At the time Miller Brewing was decided, the Board did not refer
to such agreements to accelerate proceedings as “ACR.” That
designation is of more recent adoption.
5 The parties did not specify, in their stipulation, when
testimony and other evidence would be filed with the Board,
although they did specify when declarations or affidavits would
be served between the parties. However, because the stipulation
provided no explicit deadlines for filing testimony and evidence,
and the parties each made such filings concurrently with their
briefs, we conclude that they agreed to such a concurrent filing
arrangement.
Opposition No. 91197241
5

Applicant filed on October 16, 2009 the subject
application for the mark TURFECTA for grass seed;
this application was based on an intent to use the
mark in connection with grass seed; applicant has
not filed a Statement of Use in its application;
and the identification in the application contains
no limitation as to channels of trade or
purchasers;

Lawn seed and grass seed are legally identical
descriptions of goods for the purposes of this
opposition; and

The word “trifecta” has no special meaning in the
grass seed products field.

The parties also made certain stipulations with respect to
USPTO records involving marks with some version of the
suffix –FECTA, and as to the accuracy of the customer lists
produced by each party.
In addition, the parties stipulated that testimony
could be submitted by affidavit or declaration, and to that
end opposer submitted, concurrently with its main brief on
the case, the declaration testimony, with exhibits, of
Murray Wingate, the turfgrass sales and marketing manager of
its Lebanon Turf Products division, and applicant submitted,
concurrently with its main brief on the case, the
declaration testimony of Richard C. Leslie, its president,
and Richard Weigand, its vice president.
Opposer also made of record, by notice of reliance
filed concurrently with its main brief on the case, certain
web pages, various third-party registrations and
registration files, applicant’s answers to opposer’s
Opposition No. 91197241
6
interrogatories, applicant’s answers to opposer’s request
for admissions, applicant’s initial disclosures (not
including any documents), and applicant’s responses to
opposer’s requests for the production of documents. With
respect to the latter, Trademark Rule 2.120(j)(3)(ii)
provides that documents obtained through disclosure or under
Rule 34 of the Federal Rules of Civil Procedure cannot be
made of record by notice of reliance alone. However, the
produced documents submitted by opposer under the notice of
reliance were authenticated by applicant’s responses to the
requests for admission. See TBMP § 704.11 (3d ed. 2011).6
Applicant submitted, under notice of reliance filed
concurrently with its main brief on the case, dictionary
definitions of “trifecta”; copies of the electronic record
for two cancelled trademark registrations; opposer’s
responses to applicant’s interrogatories; opposer’s
responses to applicant’s requests for admission; and
opposer’s initial disclosures and opposer’s responses and
supplemental responses to applicant’s requests for
production of documents. With respect to the latter,
Trademark Rule 2.120(j)(3)(ii) provides that documents
obtained through disclosure or under Rule 34 of the Federal
Rules of Civil Procedure cannot be made of record by notice

6 Alternatively, the parties could have stipulated to the
admissibility of all documents produced in response to a request
for production of documents.
Opposition No. 91197241
7
of reliance alone. However, applicant did not actually
submit with its notice of reliance any documents, only
opposer’s responses which consist generally of objections
and/or a representation that documents would be produced.
We have treated these responses as of record. See Calypso
Technology, Inc. v. Calypso Capital Management, LP,
100 USPQ2d 1213 (TTAB 2011).7 Applicant also submitted,
pursuant to stipulation, a copy of search results obtained
through the USPTO’s TESS (Trademark Electronic Search
System) database.8
Opposer has objected to paragraphs 12 through 14 of Mr.
Weigand’s declaration, which states that Mr. Weigand spoke
with opposer’s employee (and witness) Murray Wingate in late
2010 (paragraph 12), and gives both information about that
conversation (paragraph 13) and Mr. Weigand’s reaction to
opposer’s pursuit of the opposition (paragraph 14). The
initial objection to this testimony was served by opposer on
applicant prior to applicant’s submission of its brief and
testimony, in apparent accordance with the stipulation of

7 To the extent that the declaration of opposer’s witness
includes as exhibits documents that were produced by opposer in
response to applicant’s document production requests, these
documents are of record and may be relied upon by either party.
8 Applicant also asserted, in submitting this document, that it
is admissible pursuant to Trademark Rule 2.122(e) as an official
record. To clarify, electronic versions of trademark
registrations and applications, and trademark application and
registration files, are official records. However, a summary of
search results consisting, for example, of a listing of marks,
serial or registration numbers, and status, is not an official
record of the Office. Calypso Technology, 100 USPQ2d at 1219.
Opposition No. 91197241
8
the parties. The objection was then submitted to the Board
by opposer concurrently with its reply brief. We do not
have any response by applicant. We do not treat the
objection as being unseasonably raised, however, because of
the curious manner in which the parties chose to exchange
service copies of their testimony and objections thereto.
In their joint ACR stipulation the parties agreed that they
could offer testimony into evidence by declaration or
affidavit; that the declarations or affidavits would be
served on the adverse party no less than 21 days prior to
the due date of the adverse party’s brief; and that the
parties could object to the admissibility of evidence
offered by declaration or affidavit within 14 days from the
service of the declaration or affidavit. Based on the
statements made by opposer’s counsel in the declaration
accompanying the objection, it appears that instead of
simply submitting Mr. Weigand’s testimony declaration into
the record, applicant provided opposer with a draft of the
testimony, to which opposer made certain objections. This
testimony was provided more than the 21 days prior to the
due date for applicant’s brief, and opposer informed
applicant of its objections by a letter (e.g., “We would
appreciate it if you would please remove paragraphs 13 and
14 from the Weigand Declaration”). We have no information
about whether applicant responded to opposer’s
Opposition No. 91197241
9
requests/concerns when they were first served on applicant.
As noted earlier, applicant filed its testimony at the same
time it filed its trial brief.9 Thus, we have a situation
in which opposer raised its objections with applicant within
the time set forth in the stipulation, but the formal
objection was filed with the Board at a point where
applicant may have believed that it could not respond.10
Turning to the merits of the objections, opposer has
objected to paragraphs 12-14 of the Weigand declaration.
However, the letter with opposer’s objections (exhibit TT)
makes no objection to paragraph 12, and therefore any
objection to this paragraph was not seasonably raised and is

9 It appears that the parties agreed, in essence, that applicant
would serve the testimony it planned to file with its brief prior
to the due date for opposer’s brief, so that opposer could object
to it, if necessary, and then file a brief that could address
both opposer’s own evidence and that of applicant. Likewise, the
parties’ agreed procedure would allow applicant to receive
opposer’s testimony prior to the due date for applicant’s brief,
so that applicant could object, if necessary, and then file a
brief that could address both applicant’s own evidence and that
of opposer. The parties’ stipulation presumably would also have
covered any rebuttal evidence to be offered by opposer, but since
none was offered, the effect of the stipulation on rebuttal
evidence is a moot point. We engage in conjecture in regard to
the intentions behind the parties’ stipulation to proceed by ACR
because they did not contact the Board attorney assigned to the
case either before crafting the ACR agreement or when submitting
it for approval by the Board. The better practice when parties
agree to proceed by ACR is to discuss the proposed process with a
Board attorney, either to help frame the agreement, or to modify
or amend an agreement, as may be necessary to promote clarity,
once it has been entered into and filed with the Board.
10 Normally the Board will not entertain papers filed after the
filing of a reply brief. In view of the unusual situation
presented here, if applicant had filed a response to the
objections made in the reply brief, the Board would have
considered it.

Opposition No. 91197241
10
overruled. As for paragraphs 13 and 14, they appear to
refer to settlement discussion, and therefore are not
admissible under Federal Rule of Evidence 408, which
prohibits the use of such negotiations to prove or disprove
a disputed claim. This objection is sustained. We add
that, whether or not this testimony is considered it does
not affect our decision herein.
The proceeding has been fully briefed.11
We think it worthwhile to make some additional comments
about the utilization of the ACR procedure. The parties
have stipulated to certain things, including certain facts
and issues. This is admirable, as it means that no finding
must be made about them. This would normally save the Board
time, and save the parties effort, as they would not have to
submit evidence to prove these points. However, despite
these stipulations, the parties have submitted evidence on
these points, including, for example, testimony, material
and admissions that lawn seed and grass seed are the same.
By doing so, the parties have gone to needless effort and
expense, and the Board must also unnecessarily review this
evidence.

11 It is noted that neither party included parallel cites to The
United States Patents Quarterly (USPQ) in their citation of
authorities. When cases are cited in a brief, the case citation
should include a citation to the USPQ if the case has appeared in
that reporter. TBMP §§ 101.03 and 801.03 (3d ed. 2011).
Opposition No. 91197241
11
Second, the parties have stipulated that the Board
“resolve any disputed issues of material fact in making a
final determination on the merits.” This same point was
made in their briefs. A provision that the Board may
resolve any disputed issues of material fact normally
applies when the parties wish the Board to make a final
determination on a summary judgment motion. Normally a
motion for summary judgment must be denied if there are any
genuine disputes as to material facts. However, parties may
authorize the Board to resolve such disputes and issue a
final determination, essentially agreeing that the Board may
determine the case based on the evidence submitted in
connection with the summary judgment motion, and that it is
not necessary to have a trial in which additional evidence
is submitted. See TBMP § 528.05)(a)(2) (3d ed. 2011). In
the instant case, the parties did go to trial and,
therefore, as in any proceeding involving a trial, whether
or not it follows an ACR procedure, the Board resolves any
factual disputes. Although including the stipulation in
their agreement that the Board resolve any disputed issues
of material fact was not necessary in view of the fact that
the parties went to trial, the Board does not discourage the
inclusion of such a provision in an ACR agreement, as it
makes clear that it is the parties’ intention that the Board
Opposition No. 91197241
12
should issue a final decision based on the evidence of
record.
This brings us to the merits of this proceeding.
First, as noted, the parties have stipulated that
opposer has standing (Stipulation 8), and that priority of
use is not at issue (Stipulation 18).
The issue, then, that we must resolve is that of
likelihood of confusion. Our determination of this issue 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).
The parties have stipulated that their goods are
legally identical: lawn seed (the goods identified in
opposer’s registration) and grass seed (the goods identified
in applicant’s application) are legally identical
descriptions (Stipulation 19). Accordingly, this du Pont
factor weighs in favor of finding a likelihood of confusion.
Because the goods are legally identical, they must be
presumed to travel in the same channels of trade. In fact,
the parties have stipulated that their respective
identifications contain no limitations as to channels of
trade or purchasers (Stipulations 10, 11, 14, 15). Thus,
Opposition No. 91197241
13
the du Pont factor of the channels of trade weighs in favor
of finding a likelihood of confusion.
The parties have not provided any arguments or pointed
to any evidence on the factor of “the conditions under which
and buyers to whom sales are made, i.e., ‘impulse’ vs.
careful, sophisticated purchasing.” In fact, opposer says
only that because the goods are identical, “the conditions
of sale and sophistication of consumers must be identical,”
brief, p. 26, without any discussion of what the conditions
of sale or the sophistication of purchasers are. Applicant
has not addressed this du Pont factor at all. Because
neither party has shown how this du Pont factor would favor
it, and because the evidence regarding the facts and
circumstances surrounding the degree of consumer care was
not fully developed, we treat this factor as neutral.
The next du Pont factor we consider is the strength of
opposer’s mark. The dictionary definitions of record show
that “trifecta” is an English word meaning:
1. a variation of the perfecta in which a bettor
wins by selecting the first three finishers
of a race in the correct order of finish
2. TRIPLE .12

The parties have stipulated that the word “trifecta” has no
special meaning in the grass seed products field.

12 Merriam Webster’s Collegiate Dictionary, 11th ed. (2003).

Opposition No. 91197241
14
Stipulation 25. Based on this stipulation and the
dictionary definitions, we find that opposer’s mark is
arbitrary. Opposer’s predecessor began using the mark
TRIFECTA for lawn seed as early as September 1, 1987
(Wingate ¶ 10). Opposer has advertised the mark on the
Internet, through its network of sales agents, and at
national and regional trade shows (Wingate ¶ 24), and its
distributor and dealers also advertise the mark on the
Internet, in their businesses, in printed catalogs, in point
of sale materials such as posters and shelf talkers, in
advertising flyers and at regional trade shows (Wingate
¶ 25). Although much of the information about opposer’s
sales and advertising expenditures has been filed under
seal, the declaration that opposer filed for the public
record states that from 1997 through 2011 opposer spent over
$250,000 on packaging and print advertising, and from 2006
through 2010 opposer sold over $8 million worth of TRIFECTA
product, representing over 8 million pounds of seed.
(Wingate ¶¶ 30, 32).
We cannot conclude, based on the foregoing, that
opposer’s mark is famous. We have no context for opposer’s
advertising and sales figures, such as how the figures for
the TRIFECTA lawn seed compare with that for other brands of
grass seed. See Bose Corp. v. QSC Audio Prods., 293 F.3d
1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Opposer’s
Opposition No. 91197241
15
advertising figures, on their face, do not appear to be
overwhelmingly large. In particular, opposer’s
“advertising” expenditures amount to approximately $17,800
per year, and include costs for packaging as well as for
actual advertising. Nor is there any other objective
evidence of the recognition of the mark. For example, we
have no evidence of press coverage, brand awareness studies,
or the like. Cf. Citigroup Inc. v. Capital City Bank Group
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011).
Nor is there any specific information about the extent of
opposer’s advertising, only general statements such as
opposer advertises the TRIFECTA brand “on the internet,
through its network of sales agents, and at national and
regional trade shows.” (Wingate ¶ 24). Given the great
deference to which a famous mark is entitled in terms of the
dominant role fame plays in the likelihood of confusion
analysis, it is the duty of a party asserting that its mark
is famous to clearly prove it. Coach Services Inc. v.
Triumph Learning LLC, 96 USPQ2d 1600, 1606 (TTAB 2010);
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
On the other hand, there is no evidence of any use of
similar marks on similar goods. Although applicant argues
that “the phrase FECTA is so commonly used that the public
will look to other elements to distinguish the source of the
Opposition No. 91197241
16
services [sic],” brief p. 11, applicant relies only on
third-party registrations, and such registrations are not
proof of use of the marks shown therein. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993)
(“third-party registrations are not evidence that the marks
shown therein are in commercial use, or that the public is
familiar with them”). Nor do the third-party registrations
show that opposer’s mark is weak. Other than opposer’s
registration, there is only one registration (No. 2961154)
for the mark TRIFECTA in Class 31 (the class for grass
seed), and that is for horse feed (Wingate ¶ 50); in fact,
opposer’s mark TRIFECTA is the only mark containing the
letter string “FECTA” registered for grass seed (Wingate
¶ 31, ex. L).13
We find that opposer’s mark TRIFECTA, an arbitrary mark
used for a 25-year period, is a strong mark, and the
registration is entitled to a broad scope of protection.
Further, the du Pont factor of “the number and nature of
similar marks in use on similar goods” weighs in favor of a
finding a likelihood of confusion.

13 There was a registration, now expired, for PERFECTA for grass
seed (No. 1562450) that coexisted until 2009 with opposer’s
registration. We can draw no conclusion from that coexistence
about the likelihood of confusion between opposer’s mark and
applicant’s mark, which is different from PERFECTA. Further, an
expired registration does not affect the strength of opposer’s
mark. Cf. Action Temporary Servs. Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled
registration does not provide constructive notice of anything.”).
Opposition No. 91197241
17
This brings us to a consideration of the marks, keeping
in mind that when marks would appear on virtually identical
goods or services, as they do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Opposer’s mark is TRIFECTA and applicant’s mark is
TURFECTA. They are clearly similar in appearance, in that
they have a similar structure and length, beginning with the
letter “T” and ending with the identical element “FECTA,”
and one of the two remaining letters in each mark is an “R.”
These same elements result in similar, although not
identical, pronunciations.
However, applicant would have us discount the
similarities caused by the FECTA portion of both marks,
contending that this element should be given less weight
because it is “a common laudatory suffix.” Brief, p. 8.
Applicant bases this argument on approximately 56 third-
party registrations that it asserts “utilize some version of
the FECTA suffix as an incorporation of the word ‘perfect’
into the trademark,” stating that “the suffix FECTA is used
to import the Spanish connotation derived from the term
perfecta (English for perfect) … . Brief, p. 10.
Opposition No. 91197241
18
Third-party registrations are probative to the extent
that they may show the meaning of a mark or a portion of a
mark in the same way that dictionaries are employed.
Leading Jewelers Guild, 82 USPQ2d at 1905. However, we do
not agree with applicant’s position that the letter string
FECTA in opposer’s and applicant’s marks would have this
connotation, and therefore that it is entitled to less
weight in the comparison of the marks.
With respect to opposer’s mark, given the definitions
of “trifecta” that applicant has made of record, we cannot
conclude that consumers would view the FECTA portion of
opposer’s mark TRIFECTA separately from the mark as a whole;
rather, they would ascribe to the mark the dictionary
meaning of the word. In fact, applicant itself appears to
take this position elsewhere in its brief, noting that
opposer’s packaging uses graphics that relate to horse
racing and thereby reinforcing the horse race betting
meaning of the mark. Further, even if consumers were aware
that a trifecta is a variation of a perfecta, they would not
regard FECTA in opposer’s mark as referencing the laudatory
term “perfect,” but would understand it to refer to a type
of bet.
As for applicant’s mark, we are not persuaded by the
third-party registrations that consumers viewing applicant’s
mark would understand the FECTA portion to mean perfect.
Opposition No. 91197241
19
Many of the registrations are for the mark PERFECTA per se,
or PERFECTA with an additional word. Although this term may
suggest or mean “perfect,” it does not follow from these
registrations that a portion of the registered marks, FECTA,
also has the connotation of “perfect,” or that when
consumers see FECTA combined with other letters that the
letter string would have this meaning. The bulk of the
remaining registrations are for TRIFECTA, either alone or
combined with other words, such as TRIFECTA MANAGEMENT
GROUP.14 Again, because this word has a recognized meaning,
consumers are not likely to break this word down into its
separate syllables and ascribe separate meanings to each.
As for the few remaining marks, it does not appear that
consumers would view the letter string FECTA in them as
having a meaning separate from the marks as a whole, or
conveying a laudatory connotation. See, for example,
INFECTA GUARD for medicated coating for animal ear tags
(Reg. No. 1828749), in which FECTA would be considered part
of INFECTA and a reference to “infection”; EFFECTA for
shaped sections of metal (Reg. No. 2989821); PERFECTALIGN
for dental instruments (Reg. No. 3706848), in which FECTA
would not be viewed as an element at all, since the mark
would be read as “Perfect Align.” Certainly the limited

14 These third-party registrations for TRIFECTA marks are for
goods and services very different from lawn seed, and have no
effect on the strength of opposer’s mark.
Opposition No. 91197241
20
number of such registrations is not a sufficient basis for
us to conclude that FECTA, when used in opposer’s mark or in
applicant’s mark, conveys a separate laudatory meaning of
“perfect.”
Accordingly, it is appropriate to consider the parties’
marks as a whole, and not give less weight to the FECTA
portion.
We have already said that the marks are similar in
appearance and pronunciation. As for their meaning,
opposer’s mark has a clear dictionary definition relating to
horse race betting. Applicant’s mark is not an actual word,
although consumers would recognize, particularly in view of
the goods with which it is used, that it begins with the
word “turf,” which is defined, inter alia, as “a surface
layer of earth containing a dense growth of grass and its
matted roots; sod.”15 This difference in meaning, however,
is not sufficient to distinguish the marks. Because of the
similarity in structure of TURFECTA to “trifecta,” consumers
are likely to see TURFECTA as a play on “trifecta,” with the
descriptive or generic word “turf” replacing the element
“tri.”16 This connotation is subtly reinforced by the horse

15 The American Heritage Dictionary of the English Language, 4th
ed. (2006). The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
16 “Turf seed” is a generic term for seed, according to
applicant’s witness, Richard Leslie, who states that applicant
Opposition No. 91197241
21
racing meaning of “turf”: “a. A racetrack, b. The sport or
business of racing horses.”17 As a result, the marks
TRIFECTA and TURFECTA convey a similar commercial
impression, and TURFECTA may be seen as a variation of
opposer’s mark TRIFECTA, indicating origin in opposer.
Accordingly, the similarities in appearance,
pronunciation and commercial impression of the marks
outweigh any differences in meaning. The du Pont factor of
the similarity of the marks weighs in favor of finding a
likelihood of confusion.
We turn next to two related du Pont factors, the nature
and extent of any actual confusion, and the length of time
during and conditions under which there has been concurrent
use without evidence of actual confusion. There is no
evidence of any instances of actual confusion. However, we
do not consider this factor to favor applicant, because the
period of concurrent use is quite limited. Applicant did
not begin using its mark until February 26, 2010,18 and
applicant submitted its testimony on October 19, 2011, so
there has been a period of only eighteen months of

“sells a wide variety of seed types, such as forage and turf seed
… .” ¶ 6. “Turf seed” is known alternatively in the industry as
“lawn seed,” “grass seed” and “lawn grass seed.” (Wingate ¶¶ 7,
10).
17 The American Heritage Dictionary of the English Language, 4th
ed. (2006).
18 Although the application is based on intent-to-use, the Leslie
declaration states that applicant has used its mark since
February 26, 2010. ¶ 18.

Opposition No. 91197241
22
contemporaneous use during which any confusion could have
arisen. And applicant’s sales and advertising during this
period appear to be relatively limited as well. Applicant
has redacted these figures from its brief, so we will not
report them here.19 But applicant concedes that its sales
are modest in comparison to opposer’s, and the figure it
provided for advertising combines its costs for product
packaging and marketing, which would include start up costs
for designing and printing its packaging. As of February
15, 2011, applicant’s marketing or advertising was limited
to a website, starting in February 2010, and wholesale rural
and suburban feed and seed store dealer promotional
literature, starting in November 2010. Response to
Interrogatory 4. Applicant had not used the mark in radio
or television advertising as of February 15, 2011. Id. In
view of applicant’s relatively limited sales and
advertising, and the short period of contemporaneous use, we
do not view the absence of evidence of actual confusion as
significant. Further, it is not clear that there has been
an opportunity for confusion to occur in view of the
conditions under which the parties currently operate.
Applicant has pointed out that there is no overlap in the
parties’ actual customers. Brief. p. 17, opposer’s customer

Opposition No. 91197241
23
list (Opposer’s exhibit D), applicant’s customer list
(opposer’s exhibit BBB). Further, in response to opposer’s
request for admission, applicant stated that the parties
market “their respective branded different products through
different marketing channels to different customers for use
by different end users.” No. 6. We also recognize that
evidence of actual confusion is difficult to obtain.
Accordingly, the fact that there is no evidence of actual
confusion does not show that confusion is not likely to
occur. We treat both of these du Pont factors as neutral.
Applicant also asserts, as another probative fact, that
in choosing the mark TURFECTA applicant made no attempt to
mimic, copy, play off or trade on the fame of the TRIFECTA
mark. Although evidence of an intent to confuse or deceive
may lead to the conclusion that a defendant’s efforts were
successful, the converse is not true. Good faith adoption
of a mark will not prevent a finding of likelihood of
confusion. Mag Instrument Inc. v. Brinkmann Corp.,
96 USPQ2d 1701, 1713 (TTAB 2010) (“evidence on applicant’s
behalf that it is seeking to register the mark in good faith
does very little to obviate a finding of a likelihood of
confusion because it is expected that applicants are acting
in good faith. Accordingly, the issue involving

19 We point out, though, that the testimony of applicant’s
witness Richard Leslie, which contains applicant’s sales and
marketing figures, was not filed under seal.
Opposition No. 91197241
24
[applicant’s] intentions in filing the subject application
is not a significant factor in our likelihood of confusion
analysis”), aff’d mem., No. 2011-1052, 2011 WL 5400095 (Fed.
Cir. Nov. 9, 2011).
As for the remaining du Pont factors, to the extent
that any apply we have treated them as neutral. We have
also considered all of the parties’ arguments, including the
ones not specifically addressed herein.
As already discussed, the relevant du Pont factors in
this case are either neutral or favor a finding of
likelihood of confusion. In particular, the goods are
identical and are sold in the same channels of trade to
members of the general public. Although applicant relies
heavily on the differences in the marks (and the lack of
evidence of actual confusion) to offset these factors, given
that a lesser degree of similarity is required when goods
are identical, we find that the marks are sufficiently
similar in these circumstances. Therefore, we find that
opposer has met its burden in proving that applicant’s mark
TURFECTA for grass seed is likely to cause confusion with
opposer’s mark TRIFECTA for legally identical goods, lawn
seed.
Decision: The opposition is sustained.