Thursday, February 24, 2005

TTAB Turns Thumbs Down On "GREEN THUMB CLUB" In 2(d) Opposition

Advanced Impact Marketing Services, Inc.'s failure to introduce any evidence played a major part in its downfall in TruServ Corp. v. Advanced Impact Marketing Service, LLC, Opposition No. 91124078 (February 4, 2005) [not citable]. The Board sustained Opposer's (True Value's) opposition to registration of the mark GREEN THUMB CLUB for "providing on-line chat rooms for transmission of messages among computer users concerning gardening" (in class 38), and "gardening club; providing gardening information via on-line electronic communications network" (class 42) (CLUB disclaimed), finding the mark likely to cause confusion with True Value's previously used and registered mark GREEN THUMB for lawn and gardening products.

True Value fell short in attempting to prove its mark famous (its evidence of sales and advertising covered only four years, and it provided no evidence of its share of the lawn and gardening market). Applicant urged that the mark GREEN THUMB is highly suggestive and thus entitled only to narrow protection. The Board, however, found that the mark "has acquired a not insubstantial measure of consumer recognition or strength and . . . it therefore cannot be considered as 'not distinctive,' as urged by applicant." The Board also noted that "there is no evidence that any third party currently is using a mark which consists of or contains the term 'GREEN THUMB' in connection with lawn and/or gardening products."

The Board not surprisingly had no hesitation in finding the marks GREEN THUMB CLUB and GREEN THUMB to be "substantially identical."

However, the Board went out on a limb in finding the goods and services at issue to be "closely related." The evidence showed that True Value markets its products on the Internet, and also provides "an avenue whereby actual and prospective customers can request gardening advice."
"While such advice has not been offered under opposer's 'GREEN THUMB' marks, the evidence nevertheless is significant inasmuch as it shows that consumers interested in purchasing lawn and gardening products could reasonably expect to encounter, as an adjunct thereto, a web-based information service devoted to chatting about and providing gardening advice. Such discussions and advice, as applicant acknowledges, could plainly include the recommendation of a specific brand or brands of lawn and gardening products."
Therefore, the Board reasoned, consumers familiar with Opposer's products could reasonably believe that Applicant's chat rooms and on-line information are sponsored by or affiliated with True Value.

Concluding that confusion is likely, the Board declined to reach Opposer's dilution claim (although it seems apparent that True Value's failure to prove its mark famous for Section 2(d) purposes would perforce mean that it could not have met the standard for proving its mark famous for dilution purposes).

There are two things that are unsettling about the Board's decision. First, the record does not seem to support its conclusion that the goods and services at issue are "closely related." Second, the Applicant's failure to submit any evidence left the record devoid of proof that "green thumb" is a ubiquitous term in the gardening field.

Text and flower photograph ©John L. Welch 2005. All Rights Reserved.


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