The Board reverses about 1 in 10 Section 2(d) refusals, or on the average about two per month. Here is the last reversal of the year 2019. The Board overturned a Section 2(d) refusal to register GROW WITH US for "Live flowers and living plants," in view of the identical mark registered for "Distributorship services in the field of wholesale horticulture supplies and accessories." The relatedness of the involved goods and services and the sophistication of purchasers were at the center of the Board's decision. In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential] (Opinion by Judge Linda A. Kuczma).
Applicant Costa pointed out that the cited registration "is expressly limited to distributorship services of horticultural supplies at the wholesale level, and it is that distribution channel where any confusion analysis must focus, as wholesale customers are the only class of relevant purchasers who might be confused." Furthermore, Costa offered a declaration of its Vice President of Sales, asserting that the term "horticultural supplies" does not encompasses its live plants and flower. The examining attorney did not dispute that assertion.
And so the Board agreed with Applicant Costa that the "related services doctrine (services provided in connection with the same goods)" does not apply here. "Applicant's live flowers and plants, ... are at most related to a different type of goods, i.e., horticultural supplies and accessories." Moreover,
[e]ven if Applicant's flowers and plants and, Registrant's distributorship in services in the field of wholesale horticultural supplies and accessories, both have some relationship to the broad category of horticultural products, this does not render them related in a manner that confusion is likely to occur.
Applicant Costa and the examining attorney agreed that Section 2(d) confusion analysis must focus on "the customers of wholesale distribution," including retail outlets, such as nurseries, garden centers and garden departments of large chain stores. Although the businesses that purchase Costa's flowers and plants could also engage registrant's services, there was no evidence that the same individuals make the decision to purchase both wholesale distributor services for horticulture supplies and accessories, and live flowers and plants. Costa's Vice President declared that "the growing of live plants and flowers . . . requires specialized handling, [and] it is generally done by different companies and using different trademarks." According to Costa, the wholesale purchasers of live plants and of registrant's distribution services would be aware of the industry practices and would recognize that these different goods and services do not emanate from a single source.
The Board agreed with Costa that the fact that "end consumersmight make 'conjoint use' of the two types of goods is not at all probative of whether wholesale customers at issue here would be confused." It noted that none of the evidence submitted showed the same mark being used for flowers and plants sold at wholesale and the wholesale distribution of horticultural supplies.
The Board concluded that "the potential for confusion appears to be a mere possibility not a probability." It agreed with Applicant that:
[t]he sophisticated purchasers involved in the wholesale purchase of Applicant's live plant goods and Registrant's distributorship services in the field of wholesale horticulture supplies and accessories would be aware of the practices of the industry and recognize that such goods and services do not emanate from a single source.
Concluding that "the factors of the dissimilarity of the goods and services and even more importantly, the sophistication of the purchasers, outweigh the other factors, including the identity of the marks," the Board reversed the refusal to register.
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