TTAB Test: Is "PhotoGro" Confusable With "PHOTO MAX" for Fertilizer?

The USPTO refused registration of the mark PhotoGro for "fertilizers for agricultural use," finding the mark likely to cause confusion with the registered mark PHOTO MAX for "fertilizers; plant nutrition preparations" [PHOTO disclaimed]. Applicant argued that "photo" is suggestive of plants, and therefore is the "much less dominant part of its mark." How do you think this came out? In re CP Bio, Inc., Serial No. 85692806 (December 9, 2014) [not precedential].

Since registrant's fertilizers encompass applicant's "fertilizers for agricultural use," the Board found the goods to be legally identical. The Board therefore presumed that the involved goods travel through the same channels of trade to the same classes of consumers. Moreover, when the goods are legally identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion.

Applicant and Examining Attorney Brian P. Callaghan argued at length over which portions of the marks should be considered dominant. The Examining Attorney submitted various third-party registrations for marks for fertilizer, with the word GROW disclaimed. Applicant pointed to its disclaimer of the word PHOTO in arguing that GRO is the dominant part of its mark, but the Board observed that the voluntary disclaimer of PHOTO does not mean that PHOTO cannot be dominant, since consumers are unaware of any disclaimer that might have been entered in the USPTO record.

Applicant also asked the Board to consider the dictionary definition of the word "photosynthesis," arguing that PHOTO is suggestive of a product for plants. It pointed to its ownership of several registration for other marks containing the word GRO, while registrant owns three other registration for marks containing the term MAX, showing that applicant emphasizes the GRO part of its mark, while registrant emphasizes MAX.

The Board saw no reason to give substantially more weight to any component of either mark, concluding that PHOTO, GRO, and MAX are of "relatively equal distinctiveness." The other third-party marks owned by applicant and registration were of little relevance. But the Board did acknowledge that PHOTO, as the first term in each of the involved marks, may have slightly more prominence than the remainder of the marks.

The Board found that the marks "resemble each" other visually and phonetically, and also in meaning, to the extent that both begin with the word PHOTO. They are also "structurally similar." Considering the overall commercial impressions of the two marks, the Board concluded that consumers would likely perceive the marks as "related to each other."

Applicant claimed that it  used its mark first, but that is, of course, irrelevant in an ex parte proceeding. Section 2(d) requires refusal based on a mark's resemblance to a mark "registered" in the USPTO, regardless of the alleged priority of the applicant.

Finally, applicant contended (but without  proof) that is mark has co-existed with the registered mark for at least 15 years. Of course, such uncorroborated statements are of little evidentiary value [I would have said no evidentiary value - ed.], particularly in an ex parte context where the registrant has no opportunity to be heard on the issue.

And so the Board affirmed the refusal.

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TTABlog note: Looking at the packaging/labels of the two products, do you think a court would find infringement?

Text Copyright John L. Welch 2014.