National Nursery Products, Inc.

Trademark Trial and Appeal Board

Jun 11, 2001

No. 75672070 (T.T.A.B. Jun. 11, 2001)

06/11/01
Paper No. 10
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re National Nursery Products, Inc.
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Serial No. 75/672,070
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John E. Vanderburgh for applicant.
Inga Ervin, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by National Nursery Products,
Inc. to register the mark shown below
(“NATIONAL NURSERY PRODUCTS” disclaimed) for “living
plants, namely, annual and perennial plants and tropical
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/672,070
2
plants; living trees, namely, flowering trees and foliage
trees; fresh vegetables, fresh herbs, and mulch.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark
NATIONAL NURSERIES, LTD. (“NURSERIES” disclaimed) for
“plants, namely, nursery stock including hanging baskets,
aglaonemas, brassaia, codiaemum, dieffenbachia, dracaena,
ficus, palms, spathiphyllum and yucca”2 as to be likely to
cause confusion.3
When the refusal to register was made final, applicant
appealed. Applicant and the Examining Attorney have filed
briefs.4 An oral hearing was not requested.
The Examining Attorney maintains that the marks are
dominated by virtually identical portions, “NATIONAL” and
“NURSERY/NURSERIES,” and that the design feature of
1 Application Serial No. 75/672,070, filed March 29, 1999, based
on an allegation of a bona fide intention to use the mark in
commerce. The application includes the following statement:
“The lining shown in the drawing is not intended to indicate
color.”
2 Registration No. 1,327,298, issued March 26, 1985 pursuant to
Section 2(f); Section 8 affidavit filed and accepted.
3 The reference to Registration No. 2,003,575 in the Examining
Attorney’s brief is an obvious typographical error.
4 The final refusal under Section 2(d) was based on two cited
registrations. In her appeal brief, the Examining Attorney
withdrew the refusal based on Registration No. 1,883,816.
Accordingly, no consideration need be given thereto.
Ser No. 75/672,070
3
applicant’s mark does not sufficiently distinguish it from
registrant’s mark. As to the goods, the Examining Attorney
states that they are related, if not identical.5
Applicant argues that the marks are dissimilar and
that the portions common to both marks are weak. Applicant
argues that its products “are distributed through dealers
and/or sold wholesale to garden shops and similar retail
outlets.” (brief, p. 10). Applicant also asserts that its
customers are “not impulse buyers but businessmen who
carefully consider their purchases and who know the
suppliers that they are dealing with.” (brief, p. 10).
Before turning to the merits of the refusal, an
evidentiary matter requires our attention. In connection
with its argument that the cited registration is entitled
to a narrow scope of protection, applicant submitted, for
the first time with its appeal brief, a computer printout
retrieved from the Office’s TESS database showing listings
of third-party registrations. The Examining Attorney’s
brief is completely silent on this submission.
The record in an application should be complete prior
to the filing of an appeal, and the Board will ordinarily
not consider additional evidence filed with the Board after
5 The attachments referred to in the Office action dated June 29,
2000 are not in the application file.
Ser No. 75/672,070
4
the appeal is filed. Trademark Rule 2.142(d).
Nonetheless, evidence submitted after appeal may be
considered by the Board, despite its untimeliness, if the
nonoffering party (1) does not object to the new evidence,
and (2) discusses the new evidence or otherwise
affirmatively treats it as being of record. TBMP §1207.03
and cases cited thereat. In the present case, as indicated
above, the Examining Attorney made no reference to
applicant’s submission. Accordingly, the evidence attached
to applicant’s appeal brief does not form part of the
record on appeal and has not been considered in making our
decision.6
We now turn to the issue on appeal. Our determination
under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing
on the likelihood of confusion issue. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
6 We hasten to add that, even if considered, the printout
submitted by applicant would be entitled to little probative
weight. The problem is that the printout merely lists the
registrations with no reference to the particular goods and/or
services identified in the registrations. Thus, in many cases,
it is not known whether the registrations cover goods and/or
services in the horticultural field; in point of fact, some of
the registrations (e.g., “NFB NATIONAL FEDERATION OF THE BLIND”)
would appear to be registered for services entirely unrelated to
the goods involved in this appeal. In order to have made any of
the listed registrations of record, it was necessary for
applicant to submit a printout of the registration itself that
was retrieved from the TESS database.
Ser No. 75/672,070
5
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Turning first to the goods, applicant does not dispute
that the goods are substantially similar and, at least in
part, are legally identical. Applicant’s broadly worded
items in its identification of goods “perennial plants,
tropical plants and foliage trees” encompass some of the
specific plants (e.g., “palms, ficus, yucca”) listed in
registrant’s identification.
With respect to the marks, we note at the outset that,
if the goods are identical, as they are here at least in
part, “the degree of similarity [between the marks]
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). In comparing the marks NATIONAL NURSERY PRODUCTS
and design and NATIONAL NURSERIES, LTD., there are obvious
similarities between the marks in sound and meaning. The
first words in the marks are identical, followed by
singular/plural versions of the same word. Although the
marks include the terms “PRODUCTS” and “LTD.,” these
Ser No. 75/672,070
6
generic designations hardly serve to distinguish the marks
in any meaningful way. Clearly, the literal portions of
the marks are dominated by the virtually identical terms,
NATIONAL NURSERY and NATIONAL NURSERIES, and the terms
convey virtually identical meanings. See: In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985)[“there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided [that] the ultimate
conclusion rests on a consideration of the marks in their
entireties...”]. Although applicant urges that the
registered mark is entitled to a narrow scope of
protection, we find, based on the record before us, that
this scope extends to protection against applicant’s mark.
In comparing the marks in terms of appearance, we have
considered the design portion of applicant’s mark. The
plant design reinforces the “NURSERY” portion of the mark.
Although we have considered the design portion in our
comparison of the marks, we find that it is subordinate to
the words “NATIONAL NURSERY PRODUCTS.” The literal word
portion will be used to call for the services and will be
the portion most likely to be remembered by purchasers.
See: In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987).
Ser No. 75/672,070
7
In sum, the marks, when considered in their
entireties, engender similar overall commercial
impressions. It is the general overall commercial
impressions engendered by the marks that must determine,
due to the fallibility of memory and the consequent lack of
perfect recall, whether confusion as to source or
sponsorship is likely.
We note applicant’s point that its customers are
garden shops and similar retail outlets that are run by
businessmen who are likely to be experienced and
sophisticated in the horticultural trade. The problem with
this argument is that neither the involved application nor
the cited registration includes any limitation on channels
of trade or classes of customers. Thus, it must be assumed
that the applicant’s and registrant’s plants move through
all the normal channels of trade for such goods, and would
be offered to all types of purchasers. Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1788 (Fed. Cir. 1990). In the present case,
therefore, we must assume that the plants of applicant and
registrant are sold in the same channels of trade to the
same classes of purchasers (both garden dealers and the
general public). The general public would include many
consumers who are not likely to be knowledgeable about
Ser No. 75/672,070
8
plants, much less capable of distinguishing between the
sources of these plants sold under these two highly similar
marks. Moreover, to the extent that the plants are sold to
garden dealers, given the highly similar marks and goods,
even the sophistication of this class of purchasers will
not ensure against the likelihood of confusion.
Decision: The refusal to register is affirmed.