Tuesday, February 21, 2012

Precedential No. 5: Parties Choose ACR, TTAB Finds TURFECTA and TRIFECTA Confusingly Similar for Grass Seed

Had the parties not chosen the ACR route, I bet this case would not have been deemed precedential. The first half of the opinion deals with the parties' somewhat clumsy attempt to comply with the Accelerated Case Resolution Procedure. The second half addresses the substantive Section 2(d) issues: the Board found the mark TURFECTA for "grass seed" likely to cause confusion with the registered mark TRIFECTA for "lawn seed." Lebanon Seaboard Corporation v. R & R Turf Supply, Inc., 101 USPQ2d 1826 (TTAB 2012) [precedential].

ACR: The parties stipulated to submission of their trial evidence concurrently with their legal arguments, sort of like the case of cross-motions for summary judgment. They stipulated that testimony could be submitted by affidavit or declaration. They also stipulated that, inter alia, Opposer has standing and priority of use, the goods of the parties are legally identical, and the word "trifecta" has no special meaning in the field of grass seed.

Although the Board found it "admirable" that the parties chose the ACR route, it noted that the parties needlessly submitted evidence as to certain facts and issues that had already been stipulated. The parties also needlessly stipulated that the Board could "resolve any disputed issues of material fact in making a final determination on the merits." Such a provision applies in a summary judgment context, but not here because the parties actually went to trial. So of course the Board could decide factual issues.

Likelihood of confusion: The Board plodded through the du Pont factors, first noting that because the goods are identical, they are presumed to travel in the same channels of trade. Neither party addressed the issue of "consumer care" in the purchasing of the goods, and so that factor was neutral.

As to the strength of Opposer's mark, the Board found TRIFECTA to be arbitrary for lawn seed. Dictionary definitions showed the primary meaning of the word to be "a variation of the perfecta in which a bettor wins by selecting the first three finishers of a race in the correct order of finish." Opposer's sales topped $8 million in the period 2006-2010 and it spent some $250,000 for advertising in a 14-year period. These advertising expenditures were not "overwhelmingly large," and there was no evidence as to how these figures compared with other brands of grass seed, nor any evidence regarding media coverage or brand awareness. And so the Board refused to find the TRIFECTA mark to be famous.

On the other hand, there was no evidence of any use of similar marks on similar goods. Applicant pointed to third-party registrations in an attempt to show that the suffix "FECTA" is commonly used and is therefore a weak formative. The Board pointed out, however, that TRIFECTA is the only mark containing "FECTA" that is registered for grass seed.

Consequently, the Board concluded that TRIFECTA, being an arbitrary mark in use for 25 years, is a strong mark entitled to a broad scope of protection.

As to the marks, the Board observed that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Applicant contended that FECTA is a "common laudatory suffix" that imports the word "perfect" into the mark. The Board disagreed.

[G]iven the definitions of “trifecta” that applicant has made of record, we cannot conclude that consumers would view the FECTA portion of opposer’s mark TRIFECTA separately from the mark as a whole; rather, they would ascribe to the mark the dictionary meaning of the word. *** Further, even if consumers were aware that a trifecta is a variation of a perfecta, they would not regard FECTA in opposer’s mark as referencing the laudatory term “perfect,” but would understand it to refer to a type of bet.

Third-party registrations for marks that include the suffix "FECTA" were not probative on this issue. Many were for the mark PERFECTA by itself or with an additional word, and they do not demonstrate that the "FECTA" portion of the mark has the connotation "perfect." The remaining registrations were for the mark TRIFECTA, alone or with other words. Again, this word has a recognized meaning and consumers are not likely to extract the "FECTA" portion and ascribe to it a separate meaning.

Therefore, the Board refused to give "FECTA" a separate laudatory meaning and instead considered the involved marks as a whole.

As to meaning, the marks plainly differ, but that difference was not sufficient to distinguish the marks.

Because of the similarity in structure of TURFECTA to "trifecta," consumers are likely to see TURFECTA as a play on "trifecta," with the descriptive or generic word "turf" replacing the element "tri." This connotation is subtly reinforced by the horse racing meaning of "turf": "a. A racetrack, b. The sport or business of racing horses." As a result, the marks TRIFECTA and TURFECTA convey a similar commercial impression, and TURFECTA may be seen as a variation of opposer’s mark TRIFECTA, indicating origin in opposer.

Next, the Board considered the lack of actual confusion evidence. It noted that the period of concurrent use of the two marks was limited: only 18 months elapsed between Applicant's first use date and the date it submitted its testimony. Moreover, Applicant's sales and advertising were limited as well, and there was no overlap in actual customers or marketing channels. The Board treated this factor as neutral.

Finally, Applicant maintained that it chose the mark TURFECTA in good faith, with no intention to mimic or copy Opposer's mark. The Board observed, however, that good faith adoption of a mark does not prevent a finding of likely confusion.

Balancing the relevant du Pont, the Board found confusion likely and it sustained the opposition.

TTABlog comment: Anything of particular interest here? Not that I see.

Text Copyright John L. Welch 2012.


At 3:33 PM, Anonymous Anonymous said...

another reason not to use the accelerated decision process and get a long precedential decision instead of 1 page ala the 9th Circuit. and nothing of any interest that I can see.


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