Thursday, August 31, 2017

Despite Consent Agreement, TTAB Affirms Section 2(d) Refusal of NORDIC (Stylized) For Live Plants

Despite a consent agreement between Applicant and the cited Registrant, the Board affirmed a Section 2(d) refusal of the mark NORDIC in the stylized form below, for various live plants [NORDIC disclaimed], finding it likely to cause confusion with the registered mark NORDIC, in standard character form, both for "live plants, namely holly cultivars." In re A-Plant 2000 ApS, Serial No. 79162833 (August 25, 2017) [not precedential] (Opinion by Judge Angela Lykos).


Likelihood of Confusion: The Board found the marks to be similar in sound, appearance, connotation and commercial impression, the goods in part legally identical or closely related, and the channels of trade and classes of consumers the same.

As to the consent agreement, the Board observed that "there is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined." Here the agreement had "multiple failings."

First, the agreement that applicant will not use its mark on “holly cultivars” is not reflected in the broad identification of the application, and even if it were, it would not overcome the highly related nature of the remaining goods in the application. The assertion that applicant will be using its mark for "tough and hardy plants" does not distinguish the goods from registrant's "holly cultivars," which are sometimes marketed as "hardy" plants.

Moreover, there is there is no indication that the parties’ goods are restricted to different markets, trade channels and consumers. While applicant refers to its sophisticated customers, "it seems plausible that the ultimate consumer of both Applicant’s and Registrant’s goods in many instances will be the ordinary consumer who will only exercise ordinary care. No provisions have been made to diminish the likelihood of confusion for these consumers."

Applicant’s promise “to only use the registration that extends from the ‘833 application with the distinctive, stylized characters” does nothing to distinguish the marks as they may appear to prospective consumers. The agreement lacks a corresponding provision restricting Registrant’s depiction of its mark, which is highly similar to Applicant’s applied-for mark.

Finally, although the agreement provides for mutual notification in the event of consumer confusion, there are no specific measures that Applicant and Registrant agree to take steps to prevent consumer confusion: e.g., promises to use distinctly different packaging, labeling, or signs, etc., in association with their marks.

The subject application is based on an international registration, and Applicant has yet to use its mark in U.S. interstate commerce. Consequently, the agreement lacks the type of provision typically found in consent agreements, indicating that “each party had done business for many years under their present names, that each had been aware of the other’s use of its name as at present, and neither knew of any instances of customers’ confusion, mistake, or deception” in U.S. interstate commerce.

In sum, the Board found that Registrant’s consent is outweighed by the other relevant du Pont factors. Because confusion remains likely, the Board affirmed the refusal under Section 2(d).

Geographical Descriptiveness:The Board also affirmed a refusal to register Applicant's mark under Section 2(e)(2) on the ground that the mark is primarily merely geographically descriptive of the goods. Applicant disclaimed the word NORDIC, but the Board found that the stylization of the mark was not sufficient to render the mark inherently distinctive as a whole: "[T]he impression conveyed by Applicant’s mark is not separate from the disclaimed wording in the mark. Accordingly, we find that the stylization element does not render Applicant’s mark inherently distinctive as a whole, and therefore affirm the Examining Attorney’s refusal to register on this ground."

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TTABlog comment: A rather feeble attempt at a coexistence agreement, don't  you think? When you start off with highly similar marks and overlapping goods, you may have a problem crafting a coexistence agreement that will pass muster.

Text Copyright John L. Welch 2017.

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