In Re Northland Organic Foods Corp. , 337 F. App'x 878 ( 2009 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1139
(Serial No. 77/001,674)
IN RE NORTHLAND ORGANIC FOODS CORP.
Michael E. Florey, Fish & Richardson P.C., of Minneapolis, Minnesota, for appellant.
With him on the brief was Jana L. France.
Raymond T. Chen, Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Alexandria, Virginia, for the Director of the United States Patent and
Trademark Office. With him on the brief were Thomas L. Stoll and Christina J. Hieber,
Associate Solicitors.
Appealed from: United States Patent and Trademark Office
Trademark Trial and Appeal Board
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1139
(Serial No. 77/001,674)
IN RE NORTHLAND ORGANIC FOODS CORP.
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal
Board.
___________________________
DECIDED: July 8, 2009
___________________________
Before NEWMAN, CLEVENGER, and BRYSON Circuit Judges.
NEWMAN, Circuit Judge.
Northland Organic Foods Corp. (Northland) seeks registration on the Principal
Register of the mark SEED TO PLATE and associated design, for various goods and
services. The examining attorney in the United States Patent and Trademark Office (PTO)
refused Northland’s application on the ground that the mark is likely to be confused with the
registered service mark SEED TO PLATE A COMMUNITY PARTNERSHIP IN CARING in
International Class 41, Registration No. 3,047,968, issued January 24, 2006 (the ‘968
mark). The Trademark Trial and Appeal Board (TTAB or Board) upheld the examining
attorney’s rejection 1 , and we affirm.
BACKGROUND
On September 18, 2006, Northland filed trademark application Serial No. 77/001,674
seeking to register the mark SEED TO PLATE and the associated design:
for various goods and services in a number of International Classes. The examining
attorney refused registration based on likelihood of confusion for the following classes of
goods and services: “books, magazines, newsletters and circulars, all on the subject of
information relating to environmentally sound and sustainable agricultural practices and the
production of organic and non-GMO [Genetically Modified Organisms] crops; printed
recipes distributed individually; and art prints” in International Class 16; “educational
information relating to agricultural research namely, research relating to environmentally
sound and sustainable agricultural practices and the production of organic and non-GMO
crops” in International Class 42; and “educational information relating to agricultural advice
namely, advice relating to environmentally sound and sustainable agricultural practices and
the production of organic and non-GMO crops” in International Class 44. 2 The examining
1
In re Northland Organic Foods Corp., Serial No. 77001674 (TTAB Sept. 29,
2008).
2
Northland also applied for registration for goods in International Classes 5 and
29. They are not at issue on this appeal. Northland, Serial No. 77001674, Board op. at 3
n.2 (“The refusal to register applied to the goods in International Classes 5 and 29 based
2009-1139 2
attorney determined that Northland’s mark is likely to be confused with the registered ‘968
mark
for “educational services, namely, conducting classes, seminars and workshops in the field
of planting, growing and harvesting crops” in International Class 41, 15 U.S.C. §1052(d). 3
The examining attorney found that the two marks have the same dominant literal element
SEED TO PLATE and that the associated designs do not sufficiently distinguish the marks.
The examining attorney also found that the two marks have similar potential purchasers
including crop growers and farmers and that the marks are likely to have the same general
commercial impression on these potential purchasers.
on requirement for more definite identifications has been withdrawn. In view thereof,
regardless of the outcome regarding the specified goods and services at issue in this
appeal, a notice of allowance may be issued for applicant’s mark for at least the remaining
goods in the application.”) (citing Trademark Rule 2.65(a)).
3
15 U.S.C. §1052(d) (entitled “Trademarks registrable on principal register;
concurrent registration”) provides, in relevant part:
No trademark by which the goods of the applicant may be distinguished from
the goods of others shall be refused registration on the principal register on
account of its nature unless it—
***
(d) Consists of or comprises a mark which so resembles a mark registered in
the Patent and Trademark Office, or a mark or trade name previously used in
the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause confusion, or to
cause mistake, or to deceive . . . .
2009-1139 3
The TTAB upheld the examiner’s likelihood of confusion determination. The TTAB
found that the two marks appear identical in sound, meaning and commercial impression
because the phrase SEED TO PLATE is the dominant element in both marks. The TTAB
found that the goods and services identified in Northland’s application are related to those
in the ‘968 mark based on “several third-party use-based registrations . . . show[ing] that
numerous entities have adopted a single mark for books, magazines, educational services,
and information services.” The TTAB also determined that the subject matter field
“planting, growing and harvesting crops” listed for the ‘968 registered mark encompasses
the channels of trade and class of purchasers relevant to Northland’s mark.
DISCUSSION
The determination of likelihood of confusion is a question of law based on underlying
facts. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 671 (Fed. Cir.
1984). In accordance with the Administrative Procedure Act, the TTAB’s legal conclusions
are reviewed de novo and factual findings are reviewed on the standard of support by
substantial evidence. 5 U.S.C. §706; see, e.g., On-Line Careline Inc. v. American On-Line,
Inc., 229 F.3d 1080, 1085 (Fed. Cir. 2000) (applying the Administrative Procedure Act to
issues of likelihood of confusion). Likelihood of confusion is conventionally determined by
applying the factors set forth in In re E.I. DuPont De Nemours & Co., 476 F.2d 1357, 1361
(CCPA 1973). The marks are compared for similarities “in their entireties as to
appearance, sound, connotation, and commercial impression.” Id.; see Specialty Brands,
748 F.2d at 672-76 (applying the DuPont factors).
Northland argues that the TTAB erred by focusing only on the phrase SEED TO
PLATE in the mark without considering the associated drawing or the commercial
2009-1139 4
impression created by the entirety of the mark. Northland argues that unlike the ‘968 mark
which has an elaborate design including a tree being tended by a man and a woman
planting seeds, the mark at issue contains a simple design of “a soybean sitting on a plate”
with very clean lines. Northland argues that confusion is unlikely because a viewer would
notice the visual differences between the two marks. Northland argues that while both
marks contain the phrase SEED TO PLATE, the TTAB erred by giving no weight to the
phrase A COMMUNITY PARTNERSHIP IN CARING in the ‘968 mark. Northland argues
that because the viewer’s attention would immediately focus on the design element of the
‘968 mark rather than the word elements of the mark. Northland argues that the TTAB
incorrectly found the phrase SEED TO PLATE to be the dominant phrase in the ‘968 mark.
Northland also argues that there are sufficient dissimilarities in the commercial
impression rendered by the two marks to prevent a likelihood of confusion. As argued by
Northland: “the connotation or commercial impression created by the [‘968] mark is that one
can attend one of registrant’s classes, seminars or workshops to learn to grow his or her
own food,” Appellant Br. at 14, whereas “the connotation and commercial impression
created by [Northland’s] Mark is that of being able to eat more wholesome food products.”
Id. at 15.
The PTO argues that the TTAB correctly found that the phrase SEED TO PLATE in
large, bold letters across the top of the mark is the dominant element of the ‘968 mark
whereas the phrase COMMUNITY PARTNERSHIP IN CARING is written in smaller letters
at the bottom of the design. The PTO states that the TTAB properly considered both marks
in their entireties including the associated designs, and found that the similarities outweigh
the dissimilarities. The PTO argues that the similarities between the commercial
2009-1139 5
impressions, i.e., both marks relating to growing crops as food, will be likely to cause
confusion because the two marks offer related goods and services with overlapping
channels of trade and purchasers.
Trademarks are considered in their entireties, words and design. In re Shell Oil Co.,
992 F.2d 1204, 1206 (Fed. Cir. 1993). “Although examining the marks in their entireties,
the comparison, for rational reasons, may give more or less weight to a dominant feature of
the mark.” Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002). In
this case, both marks contain the identical phrase “SEED TO PLATE.” The phrase SEED
TO PLATE is prominent in each mark, where it is presented in capitalized and bold letters.
Although we agree with Northland that the associated drawings are different, in considering
the overall impression “it is not proper to dissect a mark; our predecessor court recognized
that one feature of a mark may be more significant than other features, and that it is proper
to give greater force and effect to the dominant feature.” Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983). ”[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.” In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985).
The Board found that the phrase SEED TO PLATE dominates both marks, and that
the differences in the associated designs do not diminish their effect of substantial identity
as to source, when viewed in their entireties. See China Healthways Institute, Inc. v.
Wang, 491 F.3d 1337, 1340 (Fed. Cir. 2007) (“The word CHI is an integral part of both
marks and must be given appropriate weight.”)
2009-1139 6
On appeal, Northland does not disagree with the Board’s determination that the
goods and services at issue are related and that the channels of trade and classes of
customers overlap. Northland instead argues that its mark creates a different commercial
impression than that of the ‘968 mark based on the differences in their overall designs.
Northland argues:
The [‘968] mark creates the impression of a community who comes together
to grow its own food as a result of the use of an image of a man and a
woman tending a garden along with the words “A Community Partnership in
Caring.” Whereas, . . . [Northland’s] mark, when viewed in connection with
the manner in which it is used, creates the impression that the food that is
placed on one’s plate will be of the highest quality due to [Northland’s]
fastidious supervision of the production cycle from its earliest stage when the
food one the plate was merely as seed. Therefore, the differences between
the marks, visually, phonetically and connation, support a finding of no
likelihood of confusion.
Likelihood of confusion requires consideration of the degree of similarity between the marks
including the respective commercial impression; and it is thus not necessary for the
commercial impressions to be identical in order to sustain a finding of likelihood of
confusion. See In re Research & Trading Corp., 793 F.2d 1276, 1278 (Fed. Cir. 1986)
(“The confusion referred to in section 2(d) is that of purchasers in the market place where
the marks are used. It is thus not necessary that the goods of the parties be identical in
order to sustain a finding of likelihood of confusion.”).
In view of the identity of the words of the marks, and the undisputed finding that the
marks offer related goods and services and have overlapping channels of trade and
customers, reversible error has not been shown in the Board’s finding that potential
purchasers are likely to be confused. “That the relevant class of buyers may exercise care
does not necessarily impose on that class the responsibility of distinguishing between
2009-1139 7
similar trademarks for similar goods.” Research & Trading, 793 F.2d at 1279. (“Human
memories even of discriminating purchasers . . . are not infallible.”) (citation omitted).
The refusal of registration is affirmed.
2009-1139 8