From: Shih, Sally
`
`Sent: 10/26/2010 4:38:38 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 77709903 - EZ GRO - GRH.T1800 -
`EXAMINER BRIEF
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`
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 77709903.doc
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`
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`Sent: 10/26/2010 4:38:38 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 77709903 - EZ GRO - GRH.T1800 -
`EXAMINER BRIEF
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 77709903.doc
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`
`
`
` SERIAL NO:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`77709903
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`
`
`
`
`
`*77709903*
`
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
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`
`
`
`
` MARK: EZ GRO
`
`
`
` Gardenlife, Inc.
`
`
`
`
` CORRESPONDENT ADDRESS:
`
` SALVATORE A. SIDOTI
`
` CURATOLO SIDOTI CO LPA
` 24500 CENTER RIDGE ROAD, SUITE 280
` CLEVELAND, OH 44145-5681
`
`
`
` APPLICANT:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` GRH.T1800
` CORRESPONDENT E-MAIL ADDRESS:
` docket@patentandtm.com
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
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`
`
`
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`I. STATEMENT OF THE CASE
`
`
`The applicant has appealed the final refusal to register the proposed mark, EZ GRO, in
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`standard character form, for use on or in connection with “living flowers and plants;
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`flower and plant seeds.” Registration was refused under Section 2(d) of the Trademark
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`Act, 15 U.S.C. Section 1052(d), on the ground that the proposed mark is likely to be
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`confused with the mark in U.S. Registration No. 2053995, EEZY-GRO, in typed form,
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`for use on or in connection with “flower pots and planters.” In addition, a requirement for
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`a disclaimer of the merely descriptive word GRO under Trademark Act Section 6, 15
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`U.S.C. §1056, has been made final. It is respectfully requested that the Trademark Act
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`Section 2(d) refusal and disclaimer requirement be affirmed.
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`
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`
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`II. FACTS
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`On April 8, 2009, the applicant filed the instant application seeking registration on the
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`Principal Register of the proposed mark, EZ GRO, in standard character form, for “living
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`flowers and plants; flower and plant seeds.” In the first Office action, mailed June 26,
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`2009, registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on
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`the ground that the proposed mark was likely to cause confusion with the mark depicted
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`in U.S. Registration No. 2053995. In addition, a requirement that the applicant disclaim
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`the merely descriptive word GRO and a requirement to correct the spelling for the term
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`“plant” in the identification of goods were issued.
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`
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`The applicant filed a response to the refusal on December 26, 2009, submitting
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`arguments against a likelihood of confusion with the cited mark and disputing the
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`requirement for a disclaimer of the word GRO. The applicant also amended the term
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`“pants” to “plants” in the identification of goods.
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`
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`In an Office action mailed January 14, 2010, the Section 2(d) refusal citing U.S.
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`Registration No. 2053995 and the requirement for a disclaimer of GRO were maintained
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`and made final. The applicant subsequently filed the instant appeal.
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`
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`III. ARGUMENT
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`A. THE PROPOSED MARK IS NOT ENTITLED TO REGISTRATION
`BECAUSE A LIKELIHOOD OF CONFUSION EXISTS WITH THE CITED
`REGISTERED MARK
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`
`
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a
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`registered mark that it is likely that a potential consumer would be confused or mistaken
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`or deceived as to the source of the goods and/or services of the applicant and registrant.
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`See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d
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`1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when
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`determining whether there is a likelihood of confusion under Section 2(d). See TMEP
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`§1207.01. However, not all of the factors are necessarily relevant or of equal weight, and
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`any one factor may be dominant in a given case, depending upon the evidence of record.
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`In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir.
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`2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
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`
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`In this case, the following factors are the most relevant: similarity of the marks,
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`similarity of the goods, and similarity of trade channels of the goods. See In re Opus
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`One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d
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`1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999);
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`TMEP §§1207.01 et seq.
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`
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`The overriding concern is not only to prevent buyer confusion as to the source of the
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`goods, but to protect the registrant from adverse commercial impact due to use of a
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`similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d
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`1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion
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`determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-
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`Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed.
`
`
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`Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025,
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`1025 (Fed. Cir. 1988).
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`
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`1. The Marks Are Confusingly Similar
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`
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`In a likelihood of confusion determination, the marks are compared for similarities in
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`their appearance, sound, meaning or connotation and commercial impression. In re E. I.
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`du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973);
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`TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a
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`likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In
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`re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
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`
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`The question is not whether people will confuse the marks, but whether the marks will
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`confuse people into believing that the goods they identify come from the same source. In
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`re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A.
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`1972); TMEP §1207.01(b). For that reason, the test of likelihood of confusion is not
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`whether the marks can be distinguished when subjected to a side-by-side comparison.
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`The question is whether the marks create the same overall impression. See Recot, Inc. v.
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`M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual
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`Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on
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`the recollection of the average purchaser who normally retains a general rather than
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`specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co.,
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`
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`203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
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`106, 108 (TTAB 1975); TMEP §1207.01(b).
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`
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`In response to the refusal, the applicant argues that the marks are dissimilar in appearance
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`because of the “non-common components of the respective marks (“EZ” from
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`Applicant’s mark and “EEZY” from the Registrant mark).”
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`
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`Slight differences in the sound of similar marks will not avoid a likelihood of confusion.
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`In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).
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`
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`There is no correct pronunciation of a mark because it is impossible to predict how the
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`public will pronounce a particular mark. In re Great Lakes Canning, Inc., 227 USPQ
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`483, 484 (TTAB 1985); TMEP §1207.01(b)(iv); see In re Energy Telecomm. & Elec.
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`Ass’n, 222 USPQ 350, 351 (TTAB 1983). The marks in question could clearly be
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`pronounced the same; such similarity in sound alone may be sufficient to support a
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`finding of likelihood of confusion. See RE/MAX of Am., Inc. v. Realty Mart, Inc., 207
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`USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471
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`(TTAB 1975); TMEP §1207.01(b)(iv).
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`
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`The marks, EZ GRO and EEZY-GRO, are essentially phonetic equivalents and thus
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`sound similar. Similarity in sound alone may be sufficient to support a finding of
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`likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964
`
`
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`(TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see
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`TMEP §1207.01(b)(iv).
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`Accordingly, the proposed mark and the registered mark are confusingly similar.
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`
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`2. The Goods Are Related
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`The goods of the parties need not be identical or directly competitive to find a likelihood
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`of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186
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`USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, it is sufficient that the
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`goods are related in some manner and/or the conditions surrounding their marketing are
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`such that they would be encountered by the same purchasers under circumstances that
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`would give rise to the mistaken belief that the goods and/or services come from a
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`common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999);
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`TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
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`1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry
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`Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
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`
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`The applicant argues that “Registrant specializes in goods that are merely inanimate
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`objects designed and utilized to retain various articles (See Exhibit q attached hereto).” It
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`is true that the goods offered by Registrant, namely, flower pots and planters, are
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`inanimate objects. However, they are commonly used in connection with Applicant’s
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`goods, namely, living flowers and plants; and flower and pant seeds. Living flowers and
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`plants are potted in pots and planters and seeds are planted in flower pots and planters.
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`
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`The fact that the goods of the parties differ is not controlling in determining likelihood of
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`confusion. The issue is not likelihood of confusion between particular goods, but
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`likelihood of confusion as to the source of those goods. In re Shell Oil Co., 992 F.2d
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`1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); TMEP §1207.01; see Safety-Kleen
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`Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975).
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`
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`As evidence in support of the determination that the goods of the parties are closely
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`related, the examining attorney refers to third party registrations submitted with the final
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`Office action mailed on January 14, 2010. This evidence demonstrates that seeds, plants,
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`pots and planters are related goods.
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`
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`By way of example, the examining attorney refers to U.S. Registration No. 1859361 for
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`the mark CHIA, registered for use on planters and seeds; U.S. Registration No. 2832702
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`for the mark PUNCH ‘N GRO, registered for use on living plants, seeds and plant trays
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`and containers; and U.S. Registration No. 3702981 for the mark AHA! MODERN
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`LIVING, registered for use on retail store featuring seeds and planters. Third-party
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`registrations have probative value to the extent that they serve to suggest that the goods
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`listed therein, namely living plants, plant seeds, pots and planters, are of a kind that may
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`emanate from a single source. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214,
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`1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
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`(TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988);
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`TMEP §1207.01(d)(iii).
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`
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`
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`Finally, the applicant argued that “the divergent classification of the Applicant’s and
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`Registrant’s goods supports a finding that the goods are not related.” The fact that the
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`Office classifies goods or services in different classes does not establish that the goods
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`and services are unrelated under Trademark Act Section 2(d). See TMEP
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`§1207.01(d)(v). The determination concerning the proper classification of goods or
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`services is a purely administrative determination unrelated to the determination of
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`likelihood of confusion. Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d
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`1771, 1774 (Fed. Cir. 1993); Nat’l Football League v. Jasper Alliance Corp., 16 USPQ2d
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`1212, 1216 n.5 (TTAB 1990).
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`
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`Accordingly, the goods offered by the applicant and the registrant are related.
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`B. THE TERM “GRO” MUST BE DISCLAIMED BECAUSE IT IS MERELY
`DESCRIPTIVE OF A CHARACTERISTIC OF THE SEEDS AND LIVING
`PLANTS
`
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`Applicant must disclaim the descriptive wording “GRO” apart from the mark as shown
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`because it merely describes an ingredient, quality, characteristic, function, feature,
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`purpose or use of applicant’s goods. See 15 U.S.C. §§1052(e)(1), 1056(a); In re
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`Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re
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`Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213,
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`1213.03(a).
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`
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`
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`In the case at hand, a disclaimer of the word “GRO” is warranted because this word in the
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`proposed mark it is merely descriptive for a characteristic of the living plants, flowers
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`and seeds. Unlike artificial plants, living plants and seeds do grow.
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`
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`It appears that the applicant does not dispute the descriptiveness of the term GRO.
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`Instead, the applicant argued that the proposed mark EZ GRO is unitary. A term or
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`phrase is unitary if it consists of elements that create a single commercial impression or
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`that have a distinct meaning independent of the constituent elements. TMEP §1213.05,
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`1213.05(g)(iv). However, if these elements can be regarded as separable elements, the
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`matter is not unitary. See, e.g., In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007)
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`(finding ZOGGS TOGGS for clothing not unitary; affirming requirement for disclaimer
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`of “TOGGS”); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006) (finding
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`GALA ROUGE for wine not unitary; affirming requirement for disclaimer of “ROUGE);
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`TMEP §1213.05, 1213.05(g), (g)(i).
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`
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`In the present instance, the terms EZ and GRO can be regarded as separated elements and
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`the combination of the terms does not have a distinct meaning independent of the
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`constituent elements. Thus, the terms EZ and GRO are not unitary.
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`
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`The applicant cited third party registrations that include the term “GRO” without a
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`disclaimer for the term “GRO.” However, the cited registered marks are distinguishable
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`from the proposed mark because the registered marks appear in one single word with the
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`
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`term GRO as part of the mark. These marks are unitary because the term GRO is an
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`integral part of the mark and cannot be regarded as a separated element.
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`
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`The wording “GRO” is intentionally misspelled in the mark; however, this wording must
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`appear in its correct spelling – i.e., “GROW” – in the disclaimer. See In re Omaha Nat’l
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`Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d
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`1198, 1203 (TTAB 2009); TMEP §1213.08(c).
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`
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`Accordingly, the term GRO is merely descriptive of a characteristic of the goods offered
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`and must be disclaimed.
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`
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`C. RECORD MUST BE COMPLETE PRIOR TO FILING APPEAL – EVIDENCE
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`SUBMITTED AFTER APPEAL
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`
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`The record in an application must be complete prior to the filing of an appeal; however,
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`applicant has submitted additional evidence with its appeal brief. Because the proposed
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`evidence was untimely submitted, this evidence should not be considered. 37 C.F.R.
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`§2.142(d); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans
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`Cont’l Records Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002); TBMP §§1203.02(e),
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`1207.01; TMEP §710.01(c).
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`
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`
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`IV. CONCLUSION
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`Consumers encountering the proposed mark, EZ GRO, in standard character form, for
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`“living flowers and plants; flower and plant seeds,” used simultaneously with the cited
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`mark, EEZY-GRO, in typed form, for “flower pots and planters,” are likely to mistakenly
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`conclude that the goods are related and originate from a common source. In addition, the
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`evidence of record establishes that the word GRO in the proposed mark is merely
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`descriptive for the living plants, flowers and seeds. Accordingly, it is respectfully
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`requested that the refusal to register under Trademark Act Section 2(d), 15 U.S.C.
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`Section 1052(d), and the requirement for a disclaimer of GRO under Trademark Act
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`Section 6, 15 U.S.C. §1056, be affirmed.
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`
`
`Respectfully submitted,
`
`/Sally Shih/
`Sally Shih
`Trademark Examining Attorney
`Law Office 106
`USPTO
`(tel) 571-272-9712
`(fax) 571-273-9106
`
`Mary I. Sparrow
`Managing Attorney
`Law Office - 106
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