Turfgrass Management, Inc. d/b/a Grigg Brothers

Trademark Trial and Appeal Board

May 2, 2014

No. 85596631 (T.T.A.B. May. 2, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Turfgrass Management, Inc. d/b/a Grigg Brothers
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Serial No. 85596631
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Robert R. Mallinckrodt of Thorpe North & Western LLP for Turfgrass Management,
Inc. d/b/a Grigg Brothers.

Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
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Before Kuhlke, Mermelstein and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Turfgrass Management, Inc. d/b/a Grigg Brothers (“applicant”) seeks
registration of the mark PROVEN FOLIAR, in standard characters and with
FOLIAR disclaimed, for “fertilizer for professional golf and sports turf use.”1 The
examining attorney refused registration of the mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark,
when used in connection with applicant’s goods, so resembles the previously-

1 Application Serial No. 85596631, filed April 12, 2012 under Section 1(a) of the Trademark
Act, alleging first use dates of February 15, 2010.
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registered mark PROVEN BLEND, with BLEND disclaimed, for “fertilizer for
agricultural and lawn and garden use,”2 that use of applicant’s mark in connection
with applicant’s goods is likely to cause confusion or mistake or to deceive.
After the refusal became final, applicant appealed and filed a motion for
reconsideration which was denied. Applicant and the examining attorney filed
briefs. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,

2 Registration No. 1979577, issued June 11, 1996; renewed.
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we may not dissect the marks into their various components. In re Nat’l. Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). The test
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 Elec. Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l. Data Corp., 224 USPQ at 751
(“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 the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”).
Here, we agree with the examining attorney that the dominant portion of
both applicant’s mark and registrant’s mark is the identical word PROVEN. In
fact, as evidenced by applicant’s disclaimer of FOLIAR and registrant’s disclaimer
of BLEND, those words are merely descriptive of fertilizer. Bass Pro Trademarks
LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1851 (TTAB 2008).
Moreover, the examining attorney has submitted evidence that “foliar” means “of or
Serial No. 85596631
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relating to a leaf or leaves,”3 and that in the context of the goods FOLIAR refers to
fertilizing a plant’s leaves.4 It is settled that descriptive words such as BLEND and
FOLIAR are entitled to less weight than the distinctive elements of a mark, in this
case the term “proven.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting In re Nat’l. Data, 224 USPQ at
752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed
word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”).
Furthermore, in both applicant’s mark and the cited mark, the word
PROVEN appears first, further establishing that it is the dominant element of both
marks. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“it is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered”); see also, Palm Bay Imports Inc., 73

3 Office Action of July 18, 2012
(http://education.yahoo.com/reference/dictionary/entry/foliar).
4 Office Action of July 18, 2012 (printouts from “planetnatural.com,” “davesgarden.com” and
“walterreeves.com,” and of registrations for the marks PRESCRIPTION FOLIARS,
FOLIAR XL, TRUE FOLIAR, FOLIAR PRIDE and FOLIAR FRIEND, all for fertilizer). See
In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“Third-party registrations
can be used in the manner of a dictionary definition to illustrate how a term is perceived in
the trade or industry.”).
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USPQ2d 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Because applicant’s mark and the cited mark share the dominant word
PROVEN, followed by terms which are merely descriptive for fertilizer, the marks
look and sound similar and convey similar meanings. In fact, given the structure of
the marks and the other similarities between them, consumers familiar with
registrant’s mark would likely assume that applicant’s goods come from the same
line or at least the same ultimate source as registrant’s goods, or vice versa. This
factor therefore weighs in favor of finding a likelihood of confusion.
Turning to the goods, they need not be identical or even competitive in order
to support a finding of likelihood of confusion. It is enough that the goods are
related in some manner or that the 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, to a mistaken belief that
applicant’s and registrant’s goods originate from or are in some way associated with
the same source or that there is an association between the sources of the goods.
Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991);
Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex
Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not
whether purchasers would confuse the goods, but rather whether there is a
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likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ at
832.
Both applicant and registrant offer fertilizers, which are substances which
help plants grow and be healthy, so there is an obvious similarity between the
goods. While applicant’s fertilizer is “for professional golf and sports turf use” and
registrant’s fertilizer is “for agricultural and lawn and garden use,” this does not
mean that the goods are unrelated. To the contrary, the examining attorney has
introduced evidence that the same sources offer both fertilizer for golf and sports
turf and fertilizer for agricultural, lawn or garden use. For example, the following
marks are registered for applicant’s products on the one hand and registrant’s on
the other, or at least for products which encompass both applicant’s goods and
registrant’s goods:
TURF BLEND (Supplemental Reg. No. 1802966) for “turf
grass fertilizer for agricultural, commercial, and domestic
use.”

AGRI-CAL (Reg. No. 2303637) for “Fertilizer for
agricultural and/or domestic use for use on crops, lawns,
gardens and golf courses.”

POLYTRANSPORT (Reg. No. 3865492) for “Horticultural
products, namely, soil amendments that are incorporated
into or onto a turf, lawn or soil profile for creating a
healthy medium for increased root growth and/or a
smoother turf or lawn surface cut or appearance;
Fertilizers; spray-type foliar fertilizer for agricultural
use.”

MAXI CAL (Reg. No. 2782025) for “Calcium nutrient
fertilizer for lawns, turf, horticultural and agricultural
use.”

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STEADY-DELIVERY (Supplemental Reg. No. 3140611)
for “Fertilizer for agricultural use; fertilizer for domestic
use … fertilizer for professional turf application,
professional turf management and professional turf
maintenance, namely, for use on golf courses, athletic
fields and recreational areas.”

ENC (Reg. No. 3202749) for “fertilizer for agricultural,
turf and ornamental use.”

“Third-party registrations which cover a number of differing goods and/or services,
and which are based on use in commerce, although not evidence that the marks
shown therein are in use on a commercial scale or that the public is familiar with
them, may nevertheless have some probative value to the extent that they may
serve to suggest that such goods or services are of a type which may emanate from a
single source.” See, In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1998); In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).5
Moreover, the examining attorney has established that fertilizers for golf and
sports turf and fertilizers for agricultural, lawn or garden use travel in the same
channels of trade. For example:
• A printout from the “fertilizer” directory on the
“einet.net” website reveals that SuperBio offers “[a]
comprehensive organic solution consisting of beneficial
microorganisms that aids in lawn, garden, and turf care
for home and golf course use.” Denial of Motion for
Reconsideration, August 27, 2013.

5 Furthermore, country clubs may have both golf courses and ordinary lawns, and
thus a need for both applicant’s products and registrant’s products. At the very least, they
may be exposed to both fertilizers for golf courses and fertilizers for lawns. Similarly,
landscapers may be responsible for maintaining lawns and gardens on the one hand, and
golf courses or sports turf on the other, and thus have a need for and be exposed to both
applicant’s products and registrant’s products.
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• The same directory identifies Plant Food Company,
Inc. as “… Suppliers of Liquid Fertilizers for Golf Courses,
Turf, Country Clubs, Nurseries, Greenhouses, Farms,
Green Industry, Homeowners ….” Id.

• BEI Hawaii’s website (“beihawaii.com”) indicates
that it is “Hawaii’s leading distributor of agricultural and
industrial chemicals, fertilizer and specialty products.
Our extensive product lines serve major industries that
include farms, golf courses, nurseries, landscapers ….”
Id.

• The “Professional Products” section of the
Nutrients Plus website (“nutrientsplus.com”) includes
listings for “Clarus™ BioDiversity│Golf, Fine Turf” and
“Clarus™ A.G.R. │Agricultural Fertilizer.” Id.

• The growgreen USA website (“growgreen-fertilizer-
usa.com”) promotes fertilizer, including foliar fertilizer,
for agricultural and golf course use. Id.

• The California Organic Fertilizers Inc. website
(“organicag.com”) states that Phyta-Grow® [fertilizer] is
also available in Micro-Granule size for specialty
application to golf greens or starter fertilizer applications
for vegetables using Gandy-type applicators.” Id.

• The Amsoil website, which offers Aggrand
fertilizer, includes the heading “Buy Organic Fertilizer
Farm Pasture Garden Vegetables Fruit Orchard Wildlife
Food Plot Lawn Golf Course Turf—Liquid Fertilizer
Distributors Shipping to USA & Canada” and states “We
offer naturally sustainable resources for farm, garden,
lawn and professional turf.” Id.

• LidoChem, Inc.’s “Performance Nutrition” website
(“performancefertilizers.com”) promotes its “Economical,
Effective and ‘Greener’ products for Turf and
Agriculture,” using a picture of a golf ball on a tee, and
touts its fertilizer (and foliar fertilizer) for “crop, turf,”
and its “turf and lawn fertilizer, agricultural and turf
management product lines.” Id.

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• The Andersons website (“andersonspro.com”)
promotes fertilizer and lists uses including “Golf, Sports
Turf, Lawn & Landscape, Horticulture, Agriculture.” Id.

• The D & K Products website (“dkturf.com”)
indicates that the company “is a wholesale distributor of
quality turf care products to golf courses, lawn care
companies, and sports fields ….” Id.

• Zimco Supply Company’s website
(“zimcosupply.com”) states that Zimco is “Your #1 Source
for Golf and Lawn Care Supply,” and indicates that the
company distributes fertilizer and other products,
including applicant’s products, and states “Whether you’re
a landscaper, lawn care operator or maintaining a golf
course or field, Zimco Supply company has the reliable
service, experience and superior products to meet your
needs.” Id.6

• Walker Supply Inc.’s website
(“walkersupplyinc.com”) reveals that the company offers
fertilizers and related products, and the intended uses
include “Golf Course,” “Sports Turf,” “Lawn and Grounds
Care” and “Vegetation Management.” Id.

This evidence establishes that not only do applicant and registrant both offer
fertilizer, but their goods also travel in the same channels of trade. And consumers
searching for or exposed to fertilizer “for professional golf and sports turf use” are
also exposed to fertilizer for “agricultural and lawn and garden use.” Both the
relatedness of the goods and their channels of trade therefore also weigh in favor of
finding a likelihood of confusion.

6 Applicant argues that “the lawn care referred to by Zimco is professional lawn care,
not what is generally referred to in the industry as ‘lawn and garden use.’” Applicant’s
Appeal Brief at 6. Even if true, this is not relevant because registrant’s fertilizer is not
limited to “professional lawn care,” but instead encompasses all types of lawn fertilizers. In
other words, the printouts from Zimco’s and other websites establish that lawn fertilizers of
various types, as identified in the cited registration, travel in the same channels of trade as
applicant’s fertilizer for professional golf and sports turf use.
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We accept applicant’s argument, and the record establishes, that
“Professional golf and sports turf use is a recognized separate market in the
fertilizer industry from agricultural use and from lawn and garden use.”
Applicant’s Appeal Brief at 4. However, the record also makes clear that these
markets are not so separate that consumers would not simultaneously be exposed to
“fertilizer for professional golf and sports turf use” and “fertilizer for agricultural
and lawn and garden use.” In fact, because those in the market for fertilizer for golf
and sports turf use are accustomed to encountering fertilizer for agricultural, lawn
and garden use offered by the same source, and at times under the same mark,
those familiar with registrant's fertilizer would be likely to assume that golf and
sports turf fertilizer offered under another PROVEN mark would be likely to
originate from the same source.
In its January 18, 2013 Office Action response, applicant claimed, without
supporting evidence, that a third party owns Registration No. 2764287 for the mark
PROVEN WINNERS PW for “fertilizers for domestic use” and related goods, and in
the February 7, 2013 Office Action, the examining attorney addressed this
argument without objection or informing applicant that the identification of the
registration was insufficient, and the examining attorney treated the third party
registration as of record. We have accordingly considered this registration to be of
record, TBMP § 1208.02 (3d ed, rev 2 June 2013), but do not find it persuasive.7 In

7 The situation is different with respect to the third party registrations attached to
applicant’s Appeal Brief. The examining attorney specifically objected to this evidence on
page 3 of his Appeal Brief; the evidence is untimely, Trademark Rule 2.142(d); and
applicant expressly “withdraws its arguments based on the other third party registrations
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fact, PROVEN WINNERS PW has a different structure, and conveys a different
meaning, than applicant’s mark and registrant’s mark. Rather than using
PROVEN to modify a term descriptive of fertilizer, as applicant’s and registrant’s
marks do, the PROVEN WINNERS PW mark appears to be a unitary phrase with a
suggestively laudatory meaning. Furthermore, it is settled that third-party
registrations are not evidence that the marks are in use on a commercial scale or
that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is
not aware of registrations reposing in the U.S. Patent and Trademark Office);
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98
USPQ2d 1921, 1934 (TTAB 2011). In any event, it is settled that “[t]he Board must
decide each case on its own merits” and “the PTO’s allowance of such prior
registrations does not bind the Board or this court.” In re Nett Designs, Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Finally, applicant argues that the relevant purchasers are sophisticated and
careful. Even if we accept that customers will exercise care in purchasing
applicant’s and registrant’s goods, it is settled that even sophisticated purchasers
are not immune from source confusion. See, In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); In re Decombe, 9

listed in its Appeal Brief.” Applicant’s Reply Brief at 3. Accordingly, these third party
registrations have been given no consideration.
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USPQ2d 1812, 1814-15 (TTAB 1988). This factor therefore does not outweigh the
similarity of the marks, related goods and similar channels of trade.
There is no relevant evidence or argument concerning the remaining
likelihood of confusion factors, and we therefore treat them as neutral.
Conclusion
After considering all of the evidence of record as it pertains to the relevant du
Pont factors, including applicant’s arguments and evidence, even if not specifically
discussed herein, we find that confusion is likely based on the similarity of the
marks and channels of trade and the relatedness of the goods.

Decision: The Section 2(d) refusal to register applicant’s mark is affirmed.