Western New York State Nursery & Landscape Association, Inc.

Trademark Trial and Appeal Board

Mar 14, 2013

No. 85204700 (T.T.A.B. Mar. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Western New York State Nursery & Landscape
Association, Inc.
________

Serial No. 85204700
_______

Rebecca M. Stadler of Del Vecchio and Stadler LLP for
Western New York State Nursery & Landscape Association,
Inc.

Jennifer Hazard Dixon, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Cataldo, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Western New York State Nursery & Landscape
Association, Inc., filed an application to register on the
Principal Register the mark
PLANTASIA GARDEN & LANDSCAPE SHOW
in standard characters for “arranging and conducting trade
show exhibitions in the field of gardening and landscaping”
Ser. No. 85204700
2
in International Class 35.1 Applicant disclaimed GARDEN &
LANDSCAPE SHOW apart from the mark as shown.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
services, so resembles the marks
PLANTASIA
(in typed or standard characters), previously registered by
the same entity on the Principal Register, for:
“plants” in International Class 31;2 and
“landscape construction services” in International
Class 37 and “landscape gardening, landscape gardening
design for others, interior landscape design and gardening
services and interior plant care services” in International
Class 44,3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the issue under appeal.

1 Application Serial No. 85204700 was filed December 23, 2010,
based upon applicant’s assertion of March 31 2005 as a date of
first use anywhere and October 31, 2009 as a date of first use of
the mark in commerce.

2 Registration No. 1214007 issued October 26, 1982. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Second
renewal.

3 Registration No. 3053125 issued March 8, 2012. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Ser. No. 85204700
3
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 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 and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider the similarities and dissimilarities
between the marks. In coming to our determination, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that
Ser. No. 85204700
4
confusion as to the source of the goods or services offered
under the respective marks is likely to result.
We note initially that the applicant’s PLANTASIA
GARDEN & LANDSCAPE SHOW mark incorporates the entirety of
registrant’s PLANTASIA marks. Likelihood of confusion is
often found where the entirety of one mark is incorporated
within another. In re Denisi, 225 USPQ 624, 626 (TTAB
1985)(PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB
1983)(LIL’ LADY BUGGY for toy doll carriages and LITTLE
LADY for doll clothing). The term PLANTASIA in applicant’s
mark is identical in appearance and sound to registrant’s
marks. Furthermore, while there is no evidence of record
that the term has a recognized meaning, there is no reason
to suggest that PLANTASIA would have anything other than
the same connotation in applicant’s mark and those of
registrant, namely, a fantastical display or offering of
plants.
We find the presence of the wording GARDEN & LANDSCAPE
SHOW in applicant’s mark is insufficient to create a
Ser. No. 85204700
5
commercial impression that is separate from the one created
by applicant’s mark for the following reasons. First, this
wording is disclaimed in applicant’s mark, and appears to
be generic as applied to the recited services that involve
arranging and conducting a “garden and landscape show.”
Our primary reviewing court instructs us that “[t]here 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.” See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, (Fed.
Cir. 1985). For instance, “that a particular feature is
descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving
less weight to a portion of a mark….” Id at 244 USPQ 751.
Thus, we find GARDEN & LANDSCAPE SHOW to be a far less
significant feature in determining the commercial
impression created by applicant’s mark than the term
PLANTASIA.
Second, we note that PLANTASIA, which is the entirety
of registrant’s marks, and the only distinctive word in
applicant’s mark, is also the first word therein. Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“…[it is] a matter of some importance
Ser. No. 85204700
6
since 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. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692
(“The presence of this strong distinctive term as the first
word in both parties’ marks renders the marks similar,
especially in light of the largely laudatory (and hence
non-source identifying) significance of ROYALE.”). In
addition, consumers are often known to use shortened forms
of names, and it is highly likely that applicant and its
services are referred to as “PLANTASIA.”
In sum, we conclude that applicant’s mark and the
registered marks are substantially similar in terms of
sound, appearance, connotation and overall, convey highly
similar commercial impressions. We note in addition that
in its brief on appeal, applicant does not present any
arguments or evidence with regard to the similarity or
dissimilarity between the marks. Accordingly, this du Pont
factor weighs in favor of finding a likelihood of
confusion.
The Goods and Services
Our likelihood of confusion determination is based
upon the goods and services as they are identified in the
application and registrations at issue. In re Elbaum, 211
Ser. No. 85204700
7
USPQ 639, 640 (TTAB 1981); and In re William Hodges & Co.,
Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”).
In this case, the examining attorney made of record
the following definition of “trade show” – “an event at
which companies show their new products.”4 Thus,
applicant’s trade show services in the field of gardening
and landscaping would appear to be related on their face to
registrant’s landscape and gardening services inasmuch as
applicant conducts trade shows in the exact field of
registrant’s goods and services. In addition, a screenshot
from applicant’s own internet website, submitted as a
specimen of use with the involved application contains the
following [emphasis added]:

4 Macmillandictionary.com
Ser. No. 85204700
8
Plantasia Features:
Two buildings of garden and vendor space!
14 Premier Landscaped Garden Spaces ranging from
585 sq. ft. to 1,000+ sq. ft. To have a
landscaped garden space you must be a current
member of [applicant.]
Cost per garden space is only $250 per member
firm. Price includes electric, web listing and
live plant material based on the square footage
of your space. It doesn’t get any more cost
effective than this.5

Thus, applicant supplies live plants to its members
for display at its trade shows in the field of
gardening and landscaping. Applicant’s specimen of
record also indicates as follows:
Landscape garden exhibitor and vendor
participation in Plantasia is open to landscape
professionals and/or products/services related to
the green industry.

Vendor’s [sic] feature plants, tools pottery,
statuary, garden accessories, services and more.6

Furthermore, the examining attorney made of record the
following information from third-party internet
websites:
Northwest Flower & Garden Show
Marketplace
From greenhouse to gardening tools, bulbs to
botanical art, you will find all things related
to plants; gardens and outdoor living (and only
to those subjects!) in the Marketplace. Over 200
nurseries and other exhibitors display their
wares. Most exhibitors are offering plants and
other products for sale right at the Show.7

5 Plantasia.com/Vendor-Registration

6 Id.

Ser. No. 85204700
9

YWCA GardenFest
Since 2002, the YWCA GardenFest is:
The only horticultural event, promoting plants
and related services in western Wisconsin,
southeastern Minnesota and northeastern Iowa.8

PANTS, the Penn Atlantic Nursery Trade Show has
everything for nursery and greenhouse growers,
independent retail garden centers and landscape
contractors.9

FNGLA
Florida Nursery, Growers and Landscape
Association
All segments of the Nursery & Landscape Industry
are encouraged to attend. From Virginia to
Florida to Texas, the topics, techniques and
issues discussed at GSTC [Great Southern Tree
Conference] will pertain to your business,
because it was designed by business operators.
The conference target audience includes growers,
propagators, landscape contractors, plant
brokers, allied suppliers, landscape architects,
inspectors, foresters… .10

Such evidence serves to demonstrate that third parties are
using a single mark to identify applicant’s types of
services, namely, gardening and landscaping shows that
offer goods including registrant’s plants and landscaping
and gardening services. The evidence further demonstrates
that services such as applicant’s trade shows are marketed

7 Gardenshow.com/the-show/marketplace

8 Ywcagardenfest.com/vendors

9 Pantshow.com

10 Fngla.org
Ser. No. 85204700
10
toward and intended to promote and display registrant’s
goods and services.
Finally, the classification of the respective goods
and services in different International Classes has no
bearing on our determination herein. The determination
concerning the proper classification of goods or services
is a purely administrative determination unrelated to the
determination of likelihood of confusion. Jean Patou, Inc.
v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed.
Cir. 1993); Nat’l Football League v. Jasper Alliance Corp.,
16 USPQ2d 1212, 1216 n.5 (TTAB 1990).
Based upon the evidence made of record by the
examining attorney and the nature of the goods and services
themselves, we find that applicant’s services are closely
related to the goods and services provided by registrant.
As a result, this du Pont factor favors a finding of
likelihood of confusion.
Channels of Trade and Classes of Consumers

As discussed above, the internet evidence made of
record by the examining attorney demonstrates that
applicant’s trade show services in the field of gardening
and landscaping allow providers of registrant’s goods and
services, namely, plants and landscape and gardening
services, to promote and display such products and
Ser. No. 85204700
11
services. Thus, the goods and services move in the same
channels of trade, inter alia, applicant’s own trade shows,
and are available both to providers of registrant’s goods
and services and prospective consumers thereof. As a
result, we are not convinced by applicant’s arguments that
its services move in separate trade channels because they
are provided to other businesses while the goods and
services of registrant are provided to consumers. The
above evidence demonstrates that trade shows such as
applicant’s are attended by businesses in the gardening and
landscape field and also by potential consumers of such
goods and services.
These du Pont factors accordingly weigh in favor of a
finding of likelihood of confusion.
Sophistication of Purchasers
In addition, applicant urges us to consider consumer
sophistication. There is nothing in the record that would
give us insight as to the possible sophistication of
consumers of the relevant goods and services. To the
extent we accept that such goods and services may be
purchased by sophisticated consumers, we expect that with
highly similar marks used on goods and services that are
closely related, even a careful, sophisticated consumer of
these goods or services is not likely to note the
Ser. No. 85204700
12
differences in the marks. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 948-949 (Fed. Cir. 2000). Furthermore, given
the descriptive nature of the wording GARDEN & LANDSCAPE
SHOW, which is the sole difference between the marks, even
careful purchasers who do notice the difference in the
marks will not ascribe it to differences in the source of
the goods or services, but will see the marks as variations
of each other, pointing to a single source. Accordingly,
we deem this du Pont factor to be neutral.
Actual Confusion
Finally, applicant argues that there is no evidence of
any actual confusion and that there has been concurrent use
for five years. We do not accord significant weight to
applicant's contention, unsupported by any evidence, that
there have been no instances of actual confusion despite
contemporaneous use of the respective marks. The Federal
Circuit has addressed the question of the weight to be
given to an assertion of no actual confusion by an
applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
Ser. No. 85204700
13
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may point
toward a finding of a likelihood of confusion, an absence
of such evidence is not as compelling in support of a
finding of no likelihood of confusion. Thus, we cannot
conclude from the lack of instances of actual confusion
that confusion is not likely to occur.
Conclusion
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under the applied-
for mark, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Decision: The refusal of registration under Trademark
Act Section 2(d) is affirmed.