TTAB Reverses Section 2(d) Refusal of FITO for Seeds Due to Dissimilarity of Marks and 13th DuPont Factor (Strategic Partners)

The Board reversed a refusal to register the mark FITO in stylized form (below left) for, inter alia, unprocessed edible seeds, finding confusion unlikely with the word-and-design mark shown below right, for several kinds of seeds, including plant seeds. The Board deemed the marks "significantly dissimilar" under the first DuPont factor and gave the applicant the benefit of Strategic Partners under the thirteenth factor. In re SEMILLAS FITO, S.A., Serial No. 79311562 (January 21, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The First DuPont Factor: The Board found the overall commercial impressions of the marks to be "significantly different." It first noted that applicant’s mark "is in an unusual, highly-stylized typeface." Although FITO is prominent in the registered mark (as the lead literal element), it does not dominate the commercial impression of that literal component. Furthermore, the words FITO PERU are integrated into a banner which is attached to "a semi-circular element partially surrounding a prominent design comprising a circular element vaguely reminiscent of a globe that itself serves as the background for a prominent leaved, plant-like design."

The Thirteenth DuPont Factor: Applicant invoked Strategic Partners, pointing to its two registrations for marks that are quite similar to the subject mark, which registrations co-existed on the Trademark Register with the cited registration. The Board observed that "the way that a Strategic Partners co-existence circumstance bears on likelihood of consumer confusion is that it can provide circumstantial evidence as to the view of the owner of the cited registration on whether confusion is likely."

A typical Strategic Partners-type scenario has the following characteristics:

• First, the cited registration issues;
• Later, an applicant obtains a registration for a mark and goods arguably similar to the mark and goods in the cited registration;
• A period of time then passes during which the owner of the cited registration does not file a petition to cancel the applicant’s later registration for causing a likelihood of confusion;
• Later still, the applicant applies for another registration of a mark similar to its prior registration both in terms of the mark and the goods, but, unlike the applicant’s first registration, that application is refused due to a likelihood of confusion with the mark in the cited registration.

The Board noted that there is "no requirement that, for this type of Strategic Partners thirteenth factor to apply at all, the case has to be just like Strategic Partners. No two trademark cases are the same, and each is decided on its own unique facts and evidence." The Board then explored the factual situation here, noting that one of the applicant's registrations expired two years ago and the other had just barely reached its 5-year maturity date. It found the marks of the two registrations to be similar enough to that of the subject application, and the goods at least overlapping and/or immaterially different.

Like many other factors, a Strategic Partners-type thirteenth factor can vary from zero (i.e., neutral) to dispositive. The shorter the co-existence period, the weaker any inference that confusion is unlikely. The longer the coexistence period, the more it tends to indicate that confusion is unlikely. It’s not a binary thing. We do agree, however, that the five-year birthday of the applicant’s registration is significant, but not because it is an absolute requirement. Rather, because five years marks the end of the period within which the prior registrant may petition for cancellation based on likelihood of confusion, we can be more confident after five years in inferring that the owner of the cited registration believes that the applicant’s registration does not create a likelihood of confusion.

Here the Board found two significant periods of co-existence between Applicant’s "very similar" prior registrations and the cited registration: "a several-year period while the ’134 Registration existed through and beyond the date when the owner of the cited registration applied for registration; and a several-year period after Applicant obtained its ’285 Registration. Either period separately would tilt the Strategic Partners thirteenth factor against a determination that confusion is likely as between the cited registration and the application at issue. Together, they amplify each other."

And so the Board, giving Strategic Partners a rather liberal interpretation, concluded that the thirteenth DuPont factor weighed against a finding that confusion is likely.

Conclusion: The first and thirteenth factors outweighed the overlapping goods and presumably identical channels of trade and classes of consumers, and so the Board reversed the refusal to register.

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TTABlogger comment: Judge Casagrande's opinions are refreshingly down-to-earh and readable. A tip of the TTABlog fedora to the Judge for not using the word "incontestable" in connection with applicant's five-year old registration.

Text Copyright John L. Welch 2025.