IP Law Daily, TRADEMARK—TTAB: FIELDS OF GREEN for moisturizers confusable with FIELDS OF GREENS, (Sep 23, 2024)

By Jonathan Anderson

The goods are related, and the marks are very similar in appearance, sound, connotation, and commercial impression, the Board said.

The Trademark Trial and Appear Board has affirmed the Examining Attorney’s refusal to register the mark FIELDS OF GREEN for facial moisturizers because it would likely be confusable with the registered mark FIELDS OF GREENS for nutritional supplements. The Board found that the marks are very similar in appearance, sound, connotation, and commercial impression, noting that both marks convey goods coming from green fields. The Board further found that the goods are related. Consumers could be confused as to the source of the goods, the Board concluded, citing evidence of facial moisturizer and nutritional supplements sold by the same source under the same mark (In re Summer Soles, LLC, Serial No. 97287607 (T.T.A.B. Sept. 20, 2024)).

Background. Applicant Summer Soles, LLC sought registration on the principal register of the standard character mark FIELDS OF GREEN for “Facial moisturizers containing matcha” in International Class 3. The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles two marks owned by the same entity—FIELDS OF GREENS (typed drawing) and FOREVER FIELDS OF GREENS (standard character)—for “nutritional supplement containing barley green” in International Class 5. Applicant appealed and requested reconsideration, which the Examining Attorney denied.

Likelihood of confusion. The Board considered each DuPont factor for which there was evidence and argument. The Board limited its discussion to the registered mark FIELDS OF GREENS because it is closest to Applicant’s mark. The Board did not analyze the likelihood of confusion with the other mark, FOREVER FIELDS OF GREENS.

Similarity or dissimilarity of the marks. First, the Board found that the marks are very similar in appearance, sound, connotation, and commercial impression, weighing in favor of likelihood of confusion. The Board found that the marks are nearly identical in sound and appearance, with the additional letter “S” in Registrant’s mark a “minimal difference that is insignificant in the similarity of the marks analysis.” The Board further concluded that the connotation and commercial impression of the marks are similar in that both marks convey goods coming from fields containing green plants or coming from fields containing green foliage. Applicant had argued that its mark refers to the green color of matcha, while Registrant’s mark refers to the green color of barley greens. The Examining Attorney responded that consumers would not likely dissect the terms “GREEN” or “GREENS” and perceive them as the color of ingredients, but rather as conveying the impression of fields containing green or greens.

Similarity or dissimilarity of the goods. Second, TTAB found that the goods are related, which also weighed in favor of likelihood of confusion. The Board recognized that even when goods do not compete or are related intrinsically, consumers may assume a common source when marks are nearly identical. The Examining Attorney provided internet evidence showing that facial moisturizer and nutritional supplements may emanate from the same source under the same mark. Applicant responded that while in some instances the same company may produce cosmetic products and nutritional supplements, the product brands are different between the two classes of goods. However, the Board wrote that manufacturers display house marks in connection with both products, which is probative evidence. The Examining Attorney also provided eight third-party registrations based on use in commerce showing nutritional supplements and facial moisturizers under the same mark, which may serve to suggest that the listed goods are of a type that emanate from a single source.

Applicant cited Vital Pharms, Inc. v. Kronholm, Opp. No. 91181806, 2011 TTAB LEXIS 207, at *15 (TTAB 2011), for the proposition that the goods are unrelated. The Board in Vital Farms found that because the plaintiff failed to provide evidence, the identifications for the parties’ goods—cosmetics, fragrances and perfumes, and nutritional supplements — did not support a finding of relatedness on their face. But here, the Board said it does have evidence in the record as to relatedness.

Applicant further argued the Examining Attorney’s internet evidence shows only that the goods are being sold through the same stores, which alone would be insufficient to establish relatedness. The Board found this argument unpersuasive, concluding that the internet evidence also showed manufacturers offer facial moisturizers and nutritional supplements under the same house mark. Third-party registrations also show that companies offer facial moisturizers and nutritional supplements under a single mark.

Applicant argued there is no evidence that purchasers seeking matcha will look for barley greens. The Board responded that the issue is not whether consumers would search for matcha and barley greens at the same time, but rather whether consumers will be confused as to the source of the goods.

The Case is Serial No. 97287607.

Judge: Goodman, C.

Attorneys: Kirby Blair Drake (Kirby Drake Law PLLC) for Summer Soles, LLC. Sahar Nasserghodsi for the USPTO.

Companies: Summer Soles, LLC

Cases: Trademark USPTO