TTABlog Test: Is ELLA FRESH & Design for Fruits and Vegetables Confusable With ELLA ROSE FARM for Flowers?
The USPTO refused to register the mark ELLA FRESH in the design form shown below, for "fresh fruits and vegetables" [FRESH disclaimed], finding confusion likely with the registered mark ELLA ROSE FARM (in standard characters, ROSE FARM disclaimed) for “rose flowers; dried rose flowers for decoration; natural rose flowers; cut rose flowers; dried rose flowers; fresh edible rose flower; live rose flowers; natural rose flower; seeds for rose flowers; and wreaths of natural rose flowers." How do you think this came out? In re Innova Agri Bio Park Limited, Serial No. 88489477 (July 7, 2022) [not precedential] (Opinion by Judge Cindy B. Greenbaum).
Strength of the Cited Mark: Applicant contended that ELLA is a weak formative but did not submit any evidence of third-party use. It did submit nine third-party registrations for marks containing the word ELLA or variations thereof. However the registrations covered restaurant or food preparations services, and none related to fruits, vegetables, plants, or flowers. The Board concluded that the registred mark is entitled to the normal scope of protection.
The Marks: The Board agreed with Examining Attorney Jeffrey Oakes that ELLA is the "distinctive portion, and therefore the strongest element, of each mark." The Board found the marks to be very similar in appearance, sound connotation, and commercial impression due to this shared term. ELLA appears as the first literal portion of each mark followed by descriptive wording that indicates the category of goods. "[C]onsumers will likely view the terms FRESH and ROSE FARM in their descriptive senses rather than source-identifying elements of either mark."
The general principle that the word(s) in a word-plus-design mark are likely to make a greater impression on purchasers than the design portion applied here. Here the design element in applicant's mark, if noticed, would not be verbalized. The prominence of the word ELLA is enhanced by its placement as the initial or initial element in each mark.
The Goods: The Examining Attorney submitted printouts from a dozen third-party farms, garden centers, greenhouses, and nurseries that offer fresh fruit, produce, and live roses or other flowers, in each case under same mark. In addition, he submitted ten use-based registrations identifying these goods. Furthermore, the Internet evidence demonstrated that the involved goods travel in the same channels of trade to the same classes of consumers (the general public).Lack of Actual Confusion: Applicant argued that the marks have "peacefully coexisted" for more than five years without any instance of actual confusion. This argument, however, was unsupported by any evidence of applicant's dates of use or of the nature and extent of use of the marks. In any case, the issue is likelihood of confusion, not actual confusion.
Conclusion: And so, the Board affirmed the refusal to register.
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TTABlogger comment: Another mechanical analysis of likelihood of confusion. Do you think anyone in the real world would be confused?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 7/11/2022
6 comments
6 Comments:
It was so "refreshing" (not sure if that's the right word to describe my feeling) to read your commentary that this was yet another "mechanical application of likelihood of confusion". Not a day goes by that I don't argue with a client (against my own financial incentive!) who can't believe I'm telling her that their trademark will not be approved because of another trademark that, to the "normal" person seems very different, and for goods that are not at all "similar" (but for which an examining attorney, to their credit, will somehow find all the existing "evidence", which may or may not be truly probative, in the alleged support of relatedness. This is SO frustrating because it prevents me from even considering submitting a very rational argument against a would-be 2(d) refusal, that would make me feel like a lawyer as opposed to a robot. I wish the TTAB would start truly BALANCING the factors as opposed to using the binary approach (which they say is not the proper approach but still do so 100% of the time). And what's even worse is that it takes them WAY too many pages to come to their "mechanical" conclusion that should take a page or two.
I am just wondering if a better test is whether the applied for mark (ELLA FRESH) could be considered a subset of the registered mark (ELLA ROSE FARM)? In this case, it would be - such in fresh roses. Would ELLA FRESH FRUITS? Probably not as it has nothing to do with roses.
Another mechanical analysis of likelihood of confusion. Do you think anyone in the real world would be confused? --> Absolutely not!! This decision is utterly ridiculous and mechanical. The problem is the following:
The Goods: The Examining Attorney submitted printouts from a dozen third-party farms, garden centers, greenhouses, and nurseries that offer fresh fruit, produce, and live roses or other flowers, in each case under same mark. In addition, he submitted ten use-based registrations identifying these goods. Furthermore, the Internet evidence demonstrated that the involved goods travel in the same channels of trade to the same classes of consumers (the general public).
Ugh! This type of evidence is the death knell for winning any case at the TTAB. How does one disprove what the examiner cited?
Ironically, an application for the nearly identical mark (ELLA FOODS FOOD MADE HEALTHIER and design), for fresh fruits and vegetables, was not rejected on the basis of the ELLA ROSE FARMS registration. (app. no. 97014684).
Gene Bolmarcich - do you have a case where the TTAB should "balance" the DuPont factors rather than using binary approach?
I think the Board gives too little weight to the words that have been disclaimed. The consumer doesn't know what words are disclaimed, and he or she encounters the mark as a whole. Instead, the Board mechanically lops of disclaimed words and then compares what's left.
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