TTAB Reverses A 2(d) Refusal On Relatedness Factor

In a recent Trademark Trial and Appeal Board (the “Board” or “TTAB”) decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the “related services doctrine (services provided in connection with the same goods) has no application here.” See In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential]. In this case, the applicant was seeking registration of the mark GROW WITH US in standard characters on the Principal Register. The application identified the following goods, “Live flowers and living plants in International Class 31”. The Examining Attorney cited the mark, GROW WITH US in standard characters for the following services, “Distributorship services in the field of wholesale horticulture supplies and accessories” in International Class 35. The applicant appealed after the Examining Attorney issued a final refusal on likelihood of confusion grounds.

The Board, as in all decisions based on likelihood of confusion, stated that the two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services. In re, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Another important consideration is the similarity of the trade channels and whether there would be the same customers for the goods and services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). If there are DuPont factors that are not relevant to the facts of a particular case, the Board will only consider the pertinent factors. The other factors are treated as neutral.

Since the parties’ marks were identical, the Board focused on the similarities and differences of the goods and services. On this point, the law requires that the goods and services be related in some manner and/or that circumstances involving the marketing give rise to a mistaken belief that the goods and services come from the same source. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Analysis of the relatedness of the goods and services is based on the language used in the application and registration. One special rule that will apply here will be since the marks are legally identical there will be a lesser degree of relatedness required between the goods and services. See our blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, for more strategies in responding to Office Actions involving 2(d) refusals.

It is also well settled that there can be confusion of source for goods distributed from one party and services rendered by another party. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). The Board emphasized in the decision that using two goods together or using goods and services together in and of itself will not suffice to demonstrate relatedness. The Board also points out that the cited registration’s identification is limited to the wholesale level for horticultural supplies.

The applicant provided evidence that horticultural supplies did not include plants and flowers by producing print outs of five companies’ websites that appear when searching online for horticultural supplies. These five companies did not also sell live plants or flowers. There was a lack of evidence to show the same mark used for the applicant’s goods and the registrant’s services. Applicant strongly asserted that horticultural supplies are an independent category from plants and flowers.

The Board agreed with the applicant, and stated that the “related services doctrine” is not applicable when one party’s services are provided in connection with goods that are different from the other party’s goods. The same entities do not sell live plants and horticultural supplies. Registrant’s services are provided in connection with horticultural supplies and accessories not with live flowers and plants. Simply because applicant’s plants and registrant’s horticultural services have some relationship to the broad category of horticultural products, does not render them related in a manner to cause confusion. If you have questions regarding relatedness of goods and services or other trademark questions, please contact the firm for a courtesy consultation.