Nelson Seed Development ABDownload PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Nelson Seed Development AB _____ Serial No. 79208574 _____ R. Peter Spies of Dineff Trademark Law Limited, for Nelson Seed Development AB. Tasneem Hussain, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Zervas, Greenbaum and Lynch, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Nelson Seed Development AB (“Applicant”) filed a request for extension of protection of an international registration under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f)(a) (Madrid Protocol), seeking registration on the Principal Register of the standard character mark OPTIGROW for “seeds for agricultural Serial No. 79208574 - 2 - purposes, seeds for flowers, seeds for fruit and vegetables, seeds for horticultural purposes, seeds for planting, sowing seeds” in International Class 31.1 The Examining Attorney refused registration pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the previously registered mark OPTIGRO (in standard character form) for “providing advice and information in the field of agriculture” in International Class 44 that, as used on Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive.2 After the refusal was made final, Applicant requested reconsideration and appealed to this Board. Reconsideration was denied, proceedings were resumed and Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Evidentiary Issue Applicant filed several exhibits with its appeal brief and the Examining Attorney has objected to our consideration of this evidence. The Examining Attorney’s objection is sustained to the extent that this evidence was not previously submitted during prosecution. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should be complete prior to the filing of an appeal. Evidence should not 1 Application Serial No. 79208574, based on International Reg. No. 1269915. Applicant requests at pp. 2-3 of its brief that we “direct the examining attorney to address” in her brief a proposed identification of goods first submitted in Applicant’s brief. This is not a proper amendment to an identification after the refusal of an application has been appealed and after Applicant has filed its brief. The proposed identification of goods is not further considered. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1205.01 (June 2018). 2 Registration No. 3624387, registered May 19, 2009. Section 8 and 15 declarations accepted and acknowledged. Serial No. 79208574 - 3 - be filed with the Board after the filing of a notice of appeal.”); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1203.02(e) and § 1207.01 (June 2018) and authorities cited therein. Applicant’s arguments regarding its untimely evidence hence do not have evidentiary support and are not persuasive. II. Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act 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) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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). “Not all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). Serial No. 79208574 - 4 - a. The Marks In any likelihood of confusion determination, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Applicant’s OPTIGROW mark is identical to registrant’s OPTIGRO mark in sound. Similarity in any one of the elements of sound, appearance, meaning, or commercial impression is sufficient to support a determination of likelihood of confusion. See, e.g., Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009). In terms of meaning and commercial impression, the addition of the letter “W” does not create a significant change; both marks would be perceived as a combination of OPTI which evokes the word “optimal” and the word “grow,” with GRO in registrant’s mark being a shortened form of the word “grow” due to its identical sound. See, e.g., In re Total Quality Grp. Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (“Applicant’s mark STRATEGYN and registrant’s mark STRATEGEN are phonetic equivalents and differ by only one letter.”). The marks are highly similar in appearance too, differing only by one letter. Applicant does not dispute that the marks are similar in its brief but rather “refrains from arguing that the marks should be considered different in appearance, sound and commotation ….”3 3 Applicant’s brief at 3-4, 7 TTABVUE 8-9. Serial No. 79208574 - 5 - The du Pont factor regarding the similarity of the marks weighs heavily in favor of a finding that confusion is likely. b. The Goods and Services It is well settled that to support a finding of likelihood of confusion, it is sufficient that the goods and services be related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, 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 the goods or services. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Int’l Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). We must make our determinations based on the goods and services as identified in the application and the cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The cited registrant’s services are “providing advice and information in the field of agriculture” and Applicant’s goods as amended are “seeds for agricultural purposes, seeds for flowers, seeds for fruit and vegetables, seeds for horticultural purposes, seeds for planting, sowing seeds.” We find that there is an inherent relationship Serial No. 79208574 - 6 - between the goods and services; the advice and information in the field of agriculture necessarily involves advice and information about seeds, such as which seeds are optimal for certain growing seasons and soil conditions. Our finding of an inherent relationship is supported by Applicant’s information on seeds residing in its website which touts the benefits of Applicant’s seeds: The seed vitalisation method enhances the germination performance. Vitalised seeds germinate faster and more uniformly than untreated seeds, and the germination capacity is often improved as well.4 In addition, the Examining Attorney submitted Internet evidence to establish that consumers are accustomed to encountering the applied-for goods and the cited services under the same mark, showing a relationship between the goods and services. For example: ● http://www.dowagro.com Offering under the same mark (i) “News and Resources” on topics such as “Tough Weed Control You Can Count On” and “Broad-Spectrum Herbicide Benefits Rice Growers” as videos, and (ii) “Seeds & Traits”;5 ● https://www.pioneer.com Listing under the same mark (i) “how-to videos” and “management advice,” such as “Crop Production News – Find timely tips on the latest agronomic and product new in your area,” and (ii) seeds;6 ● http://www.hubnerseed.com Offering under the same mark (i) an “Agronomy Library” with the tag line “Help maximize your profit potential with access to expert agronomic and marketing advice. Explore our agronomy articles by searching or clicking on 4 First Office Action, TSDR 50. 5 Final Office Action, TSDR 9-11. 6 Id. at 13-15. Serial No. 79208574 - 7 - the filters” and a link to “Evaluating Wheat for Winter Injury” as a resource, and (ii) soybean seeds;7 ● http://www.syngenta-us.com Listing under the same mark (i) the “Syngenta Agronomy Blog” with posts such as “Tackle Weeds with Powerful Control” and “Identity Verticillium Wilt to Prevent Potato Early Dying,” and (ii) seeds;8 and ● http://www.winfieldunited.com Offering under the same mark (i) “localized information [that] can help you fine-tune your seed and management decisions down to the acre,” and (ii) seeds.9 The Examining Attorney also submitted several use-based third-party registrations for marks registered for both Applicant and registrant’s goods and services, four of which are relevant.10 Although these third-party registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they have probative value to the extent that they serve to suggest that the goods and services are of a kind which may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).11 7 Id. at 16-19. Given the context, we disagree with Applicant that the provision of the Agronomy Library is not “advice and information in the field of agriculture.” Applicant’s brief at 15, 7 TTABVUE 20. 8 Final Office Action, TSDR 23-26. 9 Id. at 27-28. We do not agree with Applicant that the seeds on this website are sold under a different mark than the “consulting services.” See Applicant’s brief at 15, 7 TTABVUE 20. “Winfield United” appears on each webpage, including the webpage regarding seeds. 10 First Office Action, TSDR 31-48. 11 Applicant’s argument that the third-party registrations are not in use is not an argument we may consider. Applicant’s brief at 17, 7 TTABVUE 22. A trademark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified Serial No. 79208574 - 8 - Applicant argues that the goods and services are not related because “by definition, the parties’ products and services are clearly defined and clearly distinguishable.”12 The issue, however, is not whether purchasers would confuse the goods and services, but rather whether there is a likelihood of confusion as to the source of the goods and services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). In addition, Applicant argues that as actually used, Applicant provides services which are more limited than those identified in its identification.13 This argument runs afoul of the settled principle that “the identification of goods/services statement in the [application or] registration, not the goods/services actually used by the [applicant or] registrant, frames the issue.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000). Applicant also discounts the Examining Attorney’s Internet evidence, asserting that most of the websites are from big, possibly multinational conglomerates that provide a long list of products and services.14 “To consider this proof that third parties both sell Appellant’s goods and provide Registrant’s services may be tantamount to argue [sic] that because Amazon is selling products of different third parties it is proof goods. 15 U.S.C. § 1057(b). Applicant’s contentions constitute an impermissible collateral attack on the validity of the third-party registrations, and hence may not be considered in an ex parte proceeding. See In re Dixie Rests. Inc., 41 USPQ2d at 1534-35. 12 Applicant’s brief at 8, 7 TTABVUE 13. 13 Id. 14 Id. at 15, 7 TTABVUE 20. Serial No. 79208574 - 9 - that a single source is providing the same products.”15 The analogy is not apt because the webpages do not reflect a third-party (such as Amazon) offering the goods and services of others. In addition, not all of the websites reflect that they are websites of multinational conglomerates, and we disagree with the characterization by Applicant that a “long list” of products and services are provided on the websites. Upon consideration of the evidence in the record, including the inherent relationship between the goods and services evident from the identifications, we find that the du Pont factor regarding the similarity of the goods and services weighs in favor of finding a likelihood of confusion. c. The Trade Channels and Classes of Purchasers In discussing the trade channels, Applicant points out that “consumers can only contract for Registrant’s services by creating an account at Registrant’s website”; and argues that this is evidence that the trade channels for Applicant’s goods and registrant’s services differ.16 Absent express restrictions, the goods and services described in applications are presumed to travel in all channels of trade that would be normal therefor, to all classes of prospective purchasers of such goods or services. Cunningham, 55 USPQ2d at 1846 (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods”); In re Linkvest S.A., 24 15 Id. at 16, 7 TTABVUE 21. 16 Id. at 19-20, 7 TTABVUE 24-25. Serial No. 79208574 - 10 - USPQ2d 1716, 1716 (TTAB 1992) ; In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).17 Registrant’s trade channels are therefore not limited to those identified by Applicant. We make our determinations under this du Pont factor based on the goods and services as they are identified in the registration and application. See In re Dixie Rests. Inc., 41 USPQ2d at 1534; Octocom Systems, 16 USPQ2d at 1787- The Examining Attorney relies on the website evidence provided with the various Office Actions to establish that the trade channels are the same and used by the same classes of consumers in the same fields of use. Indeed, the goods of the application and the services of the registration are promoted on the same webpages. We therefore find that the goods and services travel in overlapping trade channels. Turning to the classes of purchasers, the evidence reflects that farmers and growers, both large and small, are consumers of seeds and agricultural advice and information.18 See Cropscience webpages referring to “your farm” and “growers.”19 Applicant’s website states that its goods “are aimed at both professional growers and hobby gardeners.”20 We therefore find that classes of purchasers of the involved goods and services overlap. 17 The Examining Attorney argues that “[a]bsent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers,” citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 908 (Fed. Cir. 2012). In this case involving goods and services – which of course are not identical - we cannot make this presumption. 18 Applicant concedes that registrant’s “consumers are farmers and growers that need Registrant’s expertise in farm supply.” Applicant’s brief at 22, 7 TTABVUE 27. 19 See http://www.cropscience.bayer.us, First Office Action, TSDR 18, 20. 20 Id. at 50. Serial No. 79208574 - 11 - d. Purchasing Conditions With regard to purchasing conditions, Applicant argues, “consumers who are potential purchasers of both Registrant’s services and Appellant’s goods will exercise at least a moderate degree of consumer care when making their purchasing decisions.”21 Registrant’s recitation of services includes the term “agriculture” which is defined in the online version of Merriam-Webster Dictionary as “the science, art, or practice of cultivating the soil, producing crops, and raising livestock and in varying degrees the preparation and marketing of the resulting products.”22 Based on this definition, purchasers of such services would apply at least ordinary care when making purchases. Further, even if such purchasers exercise moderate care in their purchasing decisions, they could still infer from Applicant’s and registrant’s marks, which are identical in sound and otherwise highly similar, that the respective goods and services emanate from the same source, or from affiliated sources. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1442 (TTAB 2014); see also In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods.”). 21 Applicant’s brief at 22, 7 TTABVUE 27. 22 https://www.merriam-webster.com/dictionary/agriculture. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 79208574 - 12 - The du Pont factor regarding purchaser care is neutral in our analysis. e. Use of Mark on a Variety of Goods or Services The next du Pont factor which Applicant discusses concerns the variety of goods on which a mark is or is not used (house mark, “family” mark, product mark). According to Applicant, this factor favors a finding of likelihood of confusion because when a mark is used only on one type of goods (in this case, seeds), it is less likely that a consumer will believe that a different type of goods (in this case, a service) is made or offered by the same business.23 While use on a wide variety of goods (such as with a “house mark” or “family of marks”) weighs in favor of likelihood of confusion, see, e.g., In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001), Applicant has cited no cases, and we are not aware of any, that stand for the reverse proposition.24 Given the inherent relationship between seeds and agricultural advice, we do not agree with Applicant’s premise. This du Pont factor is neutral in our analysis. 23 Id. at 23, 7 TTABVUE 28. 24 In re Wilson, cited by Applicant, does not support Applicant’s argument. The other case cited by Applicant is a non-precedential case, which is not binding authority on the Board. The Board does not encourage this practice. Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011). See also In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not binding on the Board and because they have no precedential effect, the Board will generally not discuss them in other decisions). Serial No. 79208574 - 13 - f. Extent of Potential Confusion Applicant argues that potential confusion is de minimus.25 In light of the proximity of the marks and the relatedness of the goods and services, we disagree. This du Pont factor also is neutral in our analysis. g. Conclusion We have considered all of the evidence properly in the record and the arguments of the Examining Attorney and Applicant. In view of the strong similarity of the marks and the relationship between the goods and services, as well as the overlapping purchasers and trade channels, we conclude that confusion is likely between Applicant’s OPTIGROW mark for “seeds for agricultural purposes, seeds for flowers, seeds for fruit and vegetables, seeds for horticultural purposes, seeds for planting, sowing seeds” and registrant’s OPTIGRO mark for “providing advice and information in the field of agriculture.” Decision: The refusal to register is affirmed. 25 Applicant’s brief at 23, 7 TTABVUE 28. Copy with citationCopy as parenthetical citation