Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE WHITE SWAN, LTD.
Serial No. 617,169
August 10, 1988
Kolisch, Hartwell & Dickinson, P.C. for applicant
Julie B. Seyler
Trademark Examining Attorney
Law Office 2
(John C. Demos, Managing Attorney)
Before Simms, Krugman and Hanak
Opinion by Hanak
Applicant has applied to register the mark SHAKE SCATTER & GROW in block letters for "flower seeds." [FN1] Applicant's flower seeds are packaged in three-ounce cylindical shaker containers.
Registration was refused pursuant to Section 2(d) of the Lanham Trademark Act on the grounds that applicant's mark, as applied to flower seeds, so resembles the mark SHAKE-N-GROW previously registered in block letters for "grass seed" [FN2] as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed to this Board.
Considering the nature of the goods first, it is applicant's position that registrant's grass seed and applicant's flower seeds "are either marketed through very different trade channels, or registrant is not even using its mark." Applicant has not filed a petition to cancel the registration of SHAKE-N-GROW, and is not permitted in this ex parte proceeding to contest the validity of this registration on any ground, including purported nonuse of the mark.
Moreover, even assuming arguendo that SHAKE-N-GROW grass seed and SHAKE SCATTER & GROW flower seeds currently are not marketed in the same channels of trade, it must be remembered that neither the registration nor the application contains any limitation as to channels of trade. Both the registrant and the applicant are free to market their respective products in all channels of trade, and in considering the issue of likelihood of confusion, we must assume that registrant and applicant will market their respective products in the normal channels of trade. Glamorene Products Corp. v. Proctor & Gamble Co., 538 F.2d 894, I90-USPQ 543, 545 (CCPA 1976).
In this regard, the Examining Attorney has made of record Yellow Pages excerpts demonstrating that many nurseries stock both flower and grass seeds. In addition, the Examining Attorney has also made of record a number of registrations where the goods listed include, among other things, both grass seed and flower seeds. In view of the foregoing, we conclude that registrant's goods and applicant's goods are sold in the same channels of trade.
Turning to a consideration of the marks, we believe that registrant's mark and applicant's mark are similar in terms of both sight (appearance) and sound (pronunciation). Obviously, both marks begin with the word SHAKE and end with the word GROW. The only difference of any consequence is that applicant's mark contains the additional word SCATTER. The fact that the registrant's mark contains the letter "N" surrounded by hyphens and applicant's mark contains an ampersand constitutes but a very minor difference. The letter "N" and the ampersand are pronounced either in identical fashion or in near identical fashion. Moreover, the letter "N" in registrant's mark and the ampersand in applicant's mark constitute such small portions of the respective marks that the difference in appearance of these two features carries little impact.
*2 In appropriate cases, a finding of similarity as to any one factor (sight, sound or meaning) alone "may be sufficient to support a holding that the marks are confusingly similar." Trak, Inc. v. Traq Inc., 212 USPQ 846, 850 (TTAB 1981); General Foods Corp. v. Wisconsin Bottling, Inc., 190 USPQ 43, 45 (TTAB 1976); In re Mack, 197 USPQ 755, 757 (TTAB 1977); Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968). However, it is applicant's contention that its mark and registrant's mark are very dissimilar in terms of meaning or connotation. Presumably, even if applicant conceded the similarity of the marks in terms of sight and sound (which applicant has not), it would be applicant's position that the significant dissimilarity in meaning would in itself avoid a likelihood of confusion.
To be more specific, applicant contends that its mark SHAKE SCATTER & GROW "brings to mind the well-known song or expression 'Shake, Rattle & Roll.' " Continuing, applicant argues that its "mark does not 'conjure up the same general connotation' as registrant's mark because applicant's mark brings to mind 'Shake, Rattle & Roll' whereas registrant's mark does not."
Registrant's mark SHAKE-N-GROW does not bring to mind a song. On the other hand, applicant's mark SHAKE SCATTER & GROW probably does--for some consumers-- bring to mind a song. However, we are not convinced that applicant's mark is so like the title of a song, and that that song is so well known, that the overwhelming majority of consumers associate applicant's mark solely with the song. Stated differently, we think that at least an appreciable number of consumers would not associate applicant's mark with a song, and would simply view applicant's mark--as well as registrant's mark--as suggestive of how the products might be utilized. Likewise, even for those consumers who do make a connection between applicant's mark and a song, we believe that at least some of these consumers would also view applicant's mark as suggestive of how applicant's product is to be utilized.
Applicant has cited three cases in which marks were held to be not "merely descriptive" because they had two meanings, one of which was descriptive of the ingredients, qualities or characteristics of the goods or services, and the other of which was not. [FN3] Applicant apparently asks this Board to extend this concept to the issue of likelihood of confusion and find that there is no likelihood of confusion in this case because even assuming that applicant's mark has one connotation similar to registrant's mark, the other connotation of applicant's mark--that of the song "Shake, Rattle & Roll"--is totally dissimilar from the connotation of registrant's mark SHAKE-N-GROW.
However, there is a basic difference between a refusal to register on the ground of likelihood of confusion [Section 2(d) of the Lanham Trademark Act] and a refusal to register on the ground of "merely descriptive" [Section 2(e) of the Lanham Trademark Act] that causes us to reject applicant's request. In appropriate cases, the fact that a descriptive word has a double meaning may indicate that the word is not "merely descriptive" of the goods or services. See In re Quick-Print Copy Shop, Inc., 616 F.2d 523, 203 USPQ 505, 507 n. 7 (CCPA 1980) ("Merely" means "only."); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for bakery products also reminiscent of nursery rhyme). In contrast, in the context of likelihood of confusion, the fact that a word mark will be understood by some individuals in a manner such that confusion with a prior mark is likely and by other individuals in a manner such that confusion is unlikely, will generally still result in a finding of likelihood of confusion, provided that the size of the group of individuals who are likely to be confused is not inconsequential. Cf. 2 J. McCarthy, Trademarks and Unfair Competition, § 23:18 at pp. 44-45 (2d ed. 1984).
*3 Moreover, in deciding the issue of descriptiveness, it is the policy of this Board to resolve doubts in favor of the applicant and allow the mark to be published. In re Gracious Lady Service, Inc., 175 USPQ 380, 382 (TTAB 1972). In contrast, in deciding the issue of likelihood of confusion, it is the policy of this Board--as mandated by the Court of Appeals for the Federal Circuit--to resolve doubts against the applicant in favor of the registrant. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.Cir.1983). We will concede this case is not free of doubt. However, given the similarities the marks in terms of sight and sound, and the fact that at least a significant minority of consumers would perceive the marks to be similar in terms of meaning, this Board is of the view that the use of SHAKE SCATTER & GROW for flower seeds and SHAKE-N-GROW for grass seeds by two separate entities is likely to cause confusion, mistake or deception.
Decision: The refusal to register is affirmed.
R. L. Simms
G. D. Krugman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 617,169, filed August 28, 1986 claiming first use on May 7, 1986.
FN2. Registration No. 940,232 issued August 8, 1972.
FN3. Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55, 60 (2d Cir.1961) (POLY PITCHER for polyethylene pitchers also reminiscent of Molly Pitcher of Revolutionary period); Ex parte Barker, 92 USPQ 218 (Com'r Pats 1952) (CHERRY-BERRY-BING for fruit and berry preserves also reminiscent of song Chiribiribin); and In re Priefert Mfg. Co., Inc., 222 USPQ 731 (TTAB 1984) (HAY DOLLY for trailers for hauling hay also reminiscent of Broadway hit Hello Dolly).