United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90248200
Mark: EMPIRE
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Correspondence Address: 2001 MARKET STREET, SUITE 2800
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Applicant: The Conard-Pyle Company
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Reference/Docket No. 689494.0311
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 24, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:
PRIOR-FILED APPLICATION ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1737739, 3879413, 4247215, and 5152668. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applied-for mark is “EMPIRE” in standard character form for “live plants” in International Class 31.
The cited mark in U.S. Registration No. 1737739 is “ROYAL EMPIRE” in typed drawing form with “EMPIRE” disclaimed for “apple trees and apples” in International Class 31.
The cited mark in U.S. Registration No. 3879413 is “EMPIRE TURF THE PROVEN ZOYSIA GRASS” in stylized form with “TURF” and “ZOYSIA GRASS” disclaimed for “Zoysia grass, Zoysia grass plugs, Zoysia grass sod, turf and live Zoysia turf” in International Class 31.
The cited mark in U.S. Registration No. 4247215 is “EMPIRE LIVE OAK” in standard character form with “LIVE OAK” disclaimed for “live oak trees” in International Class 31.
The cited mark in U.S. Registration No. 5152668 is “EMERALD EMPIRE” in standard character form for “live plants” in International Class 31.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The 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.”); TMEP §1207.01.
Similarity of the Marks
The applied-for mark is “EMPIRE” in standard character form.
The cited mark in U.S. Registration No. 1737739 is “ROYAL EMPIRE” in typed drawing form with “EMPIRE” disclaimed.
The cited mark in U.S. Registration No. 3879413 is “EMPIRE TURF THE PROVEN ZOYSIA GRASS” in stylized form with “TURF” and “ZOYSIA GRASS” disclaimed.
The cited mark in U.S. Registration No. 4247215 is “EMPIRE LIVE OAK” in standard character form with “LIVE OAK” disclaimed.
The cited mark in U.S. Registration No. 5152668 is “EMERALD EMPIRE” in standard character form.
Applicant’s mark is similar in overall commercial impression to each registrant’s mark under Section 2(d) of the Trademark Act. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s applied-for mark “EMPIRE” is sufficiently similar to registrants’ marks “ROYAL EMPIRE” and “EMERALD EMPIRE” to find a likelihood of confusion because the only difference in applicant’s mark is the removal of the terms “ROYAL” or “EMERALD” that modify the shared word “EMPIRE”, which does not obviate their similarity. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of each registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Applicant’s applied-for mark “EMPIRE” is sufficiently similar to registrant’s mark “EMPIRE TURF THE PROVEN ZOYSIA GRASS” to find a likelihood of confusion because they share the same dominant word and the only difference in applicant’s mark is the removal of stylization and non-dominant wording, which does not obviate their similarity. The word “EMPIRE” is dominant in the registered mark because it appears first and is the largest sized word, and wording is dominant over stylization. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). If anything, the stylized plant points to the similarity of the shared plant goods.
The additional words “TURF” and “ZOYSIA GRASS” are disclaimed in the registered mark. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The phrase appearing at the bottom of the registered mark, “THE PROVEN ZOYSIA GRASS”, is likely to be perceived as a slogan accompanying the “EMPIRE TURF” mark of registrant, for which “EMPIRE” is the dominant part. Accordingly, these marks are likely to be perceived by consumers as different lines of goods from the same “EMPIRE” source.
Applicant’s applied-for mark “EMPIRE” is sufficiently similar to registrant’s mark “EMPIRE LIVE OAK” to find a likelihood of confusion because the only difference in applicant’s mark is the removal of disclaimed wording “LIVE OAK”, which does not obviate their similarity. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Applicant seeks broad protection by seeking standard character form for the applied-for mark. With standard character protection, there is nothing to prevent applicant from using its mark in the same stylization as the registered marks. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Thus, U.S. Registration No. 3879413’s design elements and stylized font do not detract from the dominant wording shared by the registered and applied-for marks.
As such, considered in their entireties, applicant’s and each registrant’s marks share a common term and evoke a highly similar overall commercial impression which substantially outweighs the differences in additional wording and stylization. Therefore, the marks are confusingly similar under Section 2(d) of the Trademark Act.
Relatedness of the Goods
Applicant’s goods are closely related to each registrant’s goods under Section 2(d) of the Trademark Act. The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The identified goods in the applied-for mark are for “live plants” in International Class 31.
The identified goods in U.S. Registration No. 1737739 are for “apple trees and apples” in International Class 31.
The identified goods in U.S. Registration No. 3879413 are for “Zoysia grass, Zoysia grass plugs, Zoysia grass sod, turf and live Zoysia turf” in International Class 31.
The identified goods in U.S. Registration No. 4247215 are for “live oak trees” in International Class 31.
The identified goods in U.S. Registration No. 5152668 are for “live plants” in International Class 31.
When analyzing an applicant’s and each registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and U.S. Registration No. 5152668 are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and U.S. Registration No. 5152668’s goods are related.
In this case, the application uses broad wording to describe live plants, which presumably encompasses all goods of the type described, including U.S. Registration No. 1737739’s more narrowly worded apple trees and apples. Please see the attached evidence from The American Heritage Dictionary showing apples are a type of plant. The application uses broad wording to describe live plants, which presumably encompasses all goods of the type described, including U.S. Registration No. 3879413’s more narrowly worded Zoysia grass, Zoysia grass plugs, Zoysia grass sod, turf and live Zoysia turf. Please see the attached evidence from the United Stated Department of Agriculture and Merriam-Webster showing Zoysia is a type of plant. The application uses broad wording to describe live plants, which presumably encompasses all goods of the type described, including U.S. Registration No. 4247215’s more narrowly worded live oak trees. Please see the attached evidence from the United Stated Department of Agriculture showing oak trees are a type of plant. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and U.S. Registration Nos. 1737739’s, 3879413’s, and 4247215’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Based on the analysis above, applicant’s goods are closely related to each registrant’s goods.
Section 2(d) Refusal Summary
In total, the parties’ marks are confusingly similar in overall commercial impression. Applicant’s applied-for mark “EMPIRE” is sufficiently similar to registrants’ marks “ROYAL EMPIRE” and “EMERALD EMPIRE” to find a likelihood of confusion because the only difference in applicant’s mark is the removal of the term that modifies the shared word “EMPIRE”, which does not obviate their similarity. Applicant’s applied-for mark “EMPIRE” is sufficiently similar to registrant’s mark “EMPIRE TURF THE PROVEN ZOYSIA GRASS” to find a likelihood of confusion because they share the same dominant word and the only difference in applicant’s mark is the removal of stylization and non-dominant wording, which does not obviate their similarity. Applicant’s applied-for mark “EMPIRE” is sufficiently similar to registrant’s mark “EMPIRE LIVE OAK” to find a likelihood of confusion because the only difference in applicant’s mark is the removal of disclaimed wording, which does not obviate their similarity. Applicant’s and each registrant’s goods are commercially related and are available in the same trade channels because no party has restricted its channels of trade. Thus, consumers encountering the marks are likely to confuse them and mistake the underlying sources of the goods. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
REFUSAL – APPLIED-FOR MARK IS A VARIETAL NAME
Registration is refused because the applied-for mark is a varietal name for the identified goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.12. See attached evidence from the United States Department of Agriculture, Germplasm Resources Information Network (GRIN) database, and International Union for the Protection of New Varieties of Plants (UPOV) database that shows that “EMPIRE” is the varietal name for alfalfa, almond tree, apple, big bluestem, bluegrass, bristle grass, cabbage, corn, cotton, eggplant, lettuce, meadow grass, melon, millet, oat, onion, pea, peach, rape, ryegrass, setaria, shallot, squash, strawberry, tomato, trefoil, wheat, and zoysia japonica, all encompassed by applicant’s identified live plants.
Varietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds. TMEP §1202.12. They are generic and cannot be registered as trademarks because they are the common descriptive names of plants or seeds by which such varieties are known to the U.S. consumer. Id. Moreover, a consumer “has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.” In re Pennington Seed, Inc., 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) (quoting In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1036 (TTAB 1979)); see In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993).
INFORMATION REQUIRED REGARDING APPLIED-FOR MARK
To permit proper examination of the applied-for mark, applicant must indicate the following:
(1) Whether “EMPIRE” has ever been used or will be used as a varietal or cultivar name; and
(2) Whether “EMPIRE” has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection.
TMEP §1202.12; see 37 C.F.R. §2.61(b).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/D. Zarick/
D. Zarick
Trademark Examining Attorney
Law Office 126
(571) 270-5013
diana.zarick@uspto.gov
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