Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA115171
`ESTTA Tracking number:
`12/18/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168365
`Plaintiff
`MTD Products Inc
`MTD Products Inc
`
`,
`
`DANIELLE A. SKOCZEN
`Wegman, Hessler & Vanderburg
`6055 Rockside Woods Blvd.Suite 200
`Cleveland, OH 44131
`UNITED STATES
`daskoczen@wegmanlaw.com
`Opposition/Response to Motion
`Danielle A. Skoczen
`daskoczen@wegmanlaw.com, amlavin@wegmanlaw.com,
`whvipgroup@wegmanlaw.com, ldolan@addmg.com
`/DAS/
`12/18/2006
`BRF AML Brief In Opp to MSJ (Redacted).pdf ( 78 pages )(7270590 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK AND APPEAL BOARD
`
`MTD PRODUCTS INC
`
`Opposition No. 91168365
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`Opposer,
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`- vs —
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`HARRELIJS, INC.
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`Mark: Growing a Better Worid
`Application No. 78/541,594
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`Applicant.
`
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`OPPOSER MTD PRODUCTS INC’S MEMORANDUM IN OPPOSITION
`TO APPLICAN'I"S MOTION FOR SUMMARY JUDGMENT
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`FILED UNDER SEAL
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`Now comes Opposer, MTD Products Inc. (“MTD”), by and through its attorneys, Wegman,
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`Hessier & Vanderburg, pursuant to Ruie 56 of the Federal Rules of Civil Procedure and 37 CPR
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`§212'7(e), and respectfully submits its Memorandum In Opposition to Applicant I-Iarre1l’s Inc.’s
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`(“Harre11’s”) Motion for Summary Judgment. MTD contends that HarreI1’s has failed to demonstrate
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`that it is entitled to judgment as a matter of law with respect to each of the ciaims set forth in MTD’s
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`Notice of Opposition. Further, Harrei1’s use of the proposed mark, “Growing A Better Worid,” is
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`iikeiy to cause confusion, mistake, or deception of consumers of MTD’s goods and services.
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`The grounds for MTD’s opposition to summary judgment are more fully set forth in the
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`Memorandum In Support attached hereto and incorporated herein.
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`Respectfully submitted,
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`;,.4_~_J;.g‘ ééa g7,._....____.;
`
`39886)
`ruce E. Peacock
`Angeia M. Lavin (0069604)
`Danieile Skoczen (0071104)
`WEGMAN, HESSLER. & VANDERBURG
`6055 Rockside Woods Blvd. #200
`
`Cleveland, Ohio 44131
`Tet: (216) 642-3342;’ Fax: (216) 642-8826
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`

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`Certificate of Service
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`A true and accurate copy of the foregoing Memorandum In Opposition To Harre11’s Incfs
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`Motion for Summary Judgment was served by Electronic Mail and regular U.S. Mail this 18th day
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`of December 2006 to the following
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`Linda C. Dolan, Esq.
`Allen, Dyer, Doppelt, Milbrath & Giichrist, P.A.
`255 South Orange Avenue
`Suite 101
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`Oraland, FL 32801
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`1do1aI1@addmg.coII1
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`Attorneyfor Applicant, Harrell ’s Inc.
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`On;ofthe Attorneys forOppoir
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`C?
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`

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`MEMORANDUM IN SUPPORT
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`I.
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`INTRODUCTION
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`This matter arises from Harreifs Inc.’s (“Harre1i’s” or “App1icar1t”) application to
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`register the mark, “GROWING A BETTER WORLD,” (hereafter “the proposed mark”) for use
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`in its fertilizer business. Harrell’s submitted its trademark application, Serial No. 78/541,594, for
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`its intended use of the proposed mark, on January 4, 2005, in accordance with Section 1(1)) of the
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`Lanharn Act, 15 U.S.C. § 1051(b). MTD Products Inc (“MTD” or “Opposer”) has used its “FOR
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`A GROWING WORLD” marks] continuously, in commerce, in connection with its lawn and
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`garden equipment since 1996. Because the similarity in these marks is iikely to cause confusion,
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`mistake, and/or deception of consumers of MTD’s goods and services all to MTD’s detriment,
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`MTD filed a Notice of Opposition to Harrell’s trademark application on January 3, 2006.
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`This matter proceeded to discovery in accordance with the case management schedule
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`estabiished by the Trademark Triai and Appeal Board’s (“the Board”) January 4, 2006
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`scheduiing order and its September 15, 2006 Order granting Harrei1’s consent motion to extend.
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`1ViTD’s testimony period was scheduled to begin November 20, 2006. On November 10, 2006,
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`MTD served I~iIarrel1’s with Notices of Deposition scheduled for December 6 and 7, 2006 in
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`Cleveland, Ohio. I-iarreil’s filed its Motion for Summary Judgment on November 17, 2006.
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`As the following discussion demonstrates, Harre11’s Motion fails to demonstrate that it is
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`entitled to judgment as a matter of law, and it should be overruled.
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`“FOR A GROWING WORLD” (words oniy), “FOR A
`1 MTI) owns registrations for the following marks:
`GROWING WORLD” (words and design), and “MTD FOR A GROWING WORLD” (words and design). See US.
`Registration Nos. 2, 241082; 2,419,404; and 2,250,i06. These marks are coilectively referred to herein as “i\/ITD’s
`marks.”
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`

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`II.
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`FACTS
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`A.
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`MTD’s Corporate Brand
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`i\/ETD was formed in 1932 and, since then, it has become a leading manufacturer of lawn
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`and garden equipment products, acquiring approximately ” the market
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`share in North America and an even greater percentage in the global marketplace.
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`(See
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`Affidavit of Matthew Rechin (“Rechin Aff.”) at 112). MTD manufactures and seiis its products
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`under several brand names, and the MTD brand family is designed to meet the needs of both
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`residential consumers and commercial purchasers, including, but not limited to, individuals,
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`retail and wholesale consumers, golf course maintenance crews, grounds keepers, landscapers,
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`and gardeners. (Rechin Aff. at 11117-8.)
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`In the mid i990’s, MTD determined that it needed to develop a unified corporate identity.
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`(See Affidavit of William Docherty (“Docherty Afff’) at 113.) To accomplish its goal, MTD
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`adopted a corporate parent brand, which was intended to serve as an endorsement on all product
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`brands.
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`(Id.) MTD’s efforts resulted in a corporate logo that would appear on corporate and
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`product
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`advertisements, product
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`catalogs, brochures, product manuals, packaging for
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`replacement parts, and product accessories:
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` TD' "',‘ii'33i{'!.«fi'3,ltf}i!l'l:li7’=:ifI,filr:l'f'lli:I.ii=ii
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`(Docherty Aff. at 116.)
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`In 1997, MTD applied for trademark registrations in the words and
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`design which comprise the corporatelogo. (Registrations for MTD’s marks attached hereto as
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`Exhibit A.) The applications have issued as registrations and the marks are now incontestable
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`due to the tiling of a Section 15 Affidavit for each. (fat)
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`

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`Since 1996, MTD’s marks have consistently and continuously been used in connection
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`with the following products and product lines: “power-operated lawn and garden equipment,
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`namely, riding mowers,
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`leaf shredders,
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`lawn vacuums, walk—behind mowers, self propelled
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`mowers, side discharge mowers, convertible mowers, rear discharge mowers, side discharge high
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`wheel mowers, mulching mowers, electric mowers, chipper/shredders, front and rear tine tiliers,
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`edgers, log splitters, snow throwers, two—stage snow throwers, track drive snow throwers and
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`service parts for all the foregoing.” (See Ex. A.)
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`In addition, MTD’s marks can be found on
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`product rnanuais that accompany the goods when sold, novelty items (such as shirts and hats),
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`stationery, and packaging for product parts and accessories. (See Docherty Aff. at 1l6.)
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`Further, MTD has made a considerable financial investment in marketing its corporate
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`brand.
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`In an effort to launch this brand strategy, MTD invested more than-
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`-in advertising the corporate brand during the first year alone. (Docherty Aff. at
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`15.)
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`In fact, MTD’s marks were displayed on the Cleveland Indian’s scoreboard and were seen
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`on nationai television during the World Series. (Docherty Aff ‘[[5.) And, MTD has continued to
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`invest in its corporate brand. MTD’s marks have been displayed during nationally televised
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`Detroit Tigers baseball games and in various print media. (Id.)
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`B.
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`MTD’s Expansion Into The Fertilizer Market
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`In recent years, MTD has expanded its presence in the lawn and garden industry.
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`Beginning in January 2007, MTD will join competitors, such as The Deere Company and The
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`Toro Company who have sold fertilizer products, and it will market and sell fertilizer.
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`(See
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`Affidavit of Jeff Jerosek (“leroaselc Afff’) at 112.) MTD’s brand of fertilizer, which will be
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`carried nationwide by Ina} or retailers such as Lowes, The Home Depot, Walrnart, Ace Hardware,
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`

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`Meijers, True Value, and Tractor Supply Company, and it will be marketed to landscapers,
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`groundskeepers, golf course maintenance crews and gardeners. (Id.)
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`As with other MTD products, MTI)’s marks will appear on product advertising and
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`packaging for the fertilizer products. (Jerousek Aff. at 115.)
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`C.
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`Harrell’s “Growing A Better World” Mark
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`Eight (8) years after MTD began using its marks and subsequent to MTD’s registration
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`dates, Harrell’s allegedly used, “Growing a Better World,” on promotional materials for a golf
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`tonrnarnent.
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`(See Exhibit B, Applicant’s Responses To Opposer’s First Set of Interrogatories, at
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`39.5.) Then, sometime in 2005, Harre1l’s allegedly began including “Growing a Better World” on
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`its products. 2 While Harrel1’s claims that its products are not sold in retail markets, it admits
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`that its products are sold in one retail market and that its application is not limited to any
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`particular channel of trade. (See Harrel1’s Motion for Summary Judgment (“I-Iarrell’s Motion”) at
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`pp.8-9; Grimes Affidavit at 19.) Thus, like MTD’s products, Harrell’s fertilizer products are sold
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`at retail and to “publicly and privately owned goif courses” and “commercial lawn care service
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`providers.” (See Harreil’s Motion at Grimes Aff. at $19.)
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`Harrell’s g§y_e; conducted a thorough search of the United States Patent and Trademark
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`Office’s trademark database. If it had, I-Iarrell’s would have discovered MTD’s marks.
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`(Rechin
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`Aft". at 1110.)
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`indeed, a subsequent standard clearance search, using the very terms in Harrel1’s
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`proposed mark, produced each of MTD’s marks.
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`(Id) Furthermore, the constructive notice
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`provisions of the Lanharn Act as applied to MTD’s registrations means that Harrell’s is charged
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`with knowledge of MTD’s claims of ownership of the MTD marks.
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`(See 15 U.S.C. §l072.)
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`Thus, its assertion that it conducted a good faith trade mark is simply not supported by the facts.
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`2 Harre1l’s discovery responses provide conflicting information regarding the date the proposed mark appeared on its
`products. Compare Ex. B, Applicant’s Responses to Opposefs First Set of Interrogatories, at p. 5, and Exhibit C,
`Excerpt from Applicanfs Confidential Suppiemental Responses to First Set of Interrogatories, at p. 4.)
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`

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`III.
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`LAW AND ARGUMENT
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`A.
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`Summary Judgment Standard
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`A party is entitled to summary judgment on all claims under Ruie 56 of the Federal Rules
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`of Civil Procedure where (1) there is no genuine issue of material fact, (2) the moving party is
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`entitled to judgment as a matter of law, and (3) reasonable minds can come to but one conclusion
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`and that conclusion is adverse to the nonmoving party, said party being entitled to have the
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`evidence construed most strongly in his favor.
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`The party moving for summary judgment bears
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`the burden of showing that there is no genuine issue of material fact and that it is entitled to
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`judgment as a matter of law. Corporate Document Services Inc. v. I.C.E.D. Management Inc,
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`48 USPQ2d 1477 (TTAB 1998). The moving party’s burden on summary judgment is greater
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`than the evidentiary burden at trial. See e.g. Gasser Chair Co.
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`12. Infants’ Chair Manufacturing
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`Corp, 60 F.3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir.l995_). If the moving party meets its
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`burden, the nonmoving party may not rest upon the mere allegations or denials, but the party’s
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`response, by affidavit or as otherwise provided in Rule 56, must set forth specific facts showing
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`that there is a genuine issue for trial. See Orcom Systems Inc. 12. Houston Computer Services Inc,
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`918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. E990).
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`Summary judgment should not be granted unless there is no issue of material fact and the
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`moving party is entitled to judgment as a matter of law. Land 12. Hennepin County, 427 F.3d
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`1123, 1125 (8th Cir. 2005); Med. Protective Co. v. Watkins, 198 F.3d 100, 103 (3d Cir. 1999).
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`Summary judgment should not be granted "if the evidence is such that a reasonable jury could
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`return a verdict for the nonmoving party.” Ia’. Finally, in reviewing a motion for summary
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`judgment, the court reviews the facts in the light most favorable to the party against the non»
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`moving party.
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`Ia’.
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`

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`B.
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`The Self»-Serving Statements Contained In Tami Grimes’ Affidavit Are
`Insufficient To Satisfy Harrell’s Burden On Summary Judgment.
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`As a preliminary matter, the self-serving and unsupported statements contained in Tami
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`Grimes’ affidavit are insufficient to overcome I~Iarrell’s burden on summary judgment.
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`In Ms.
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`Grimes’ affidavit, she asserts that
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`''
`
`I
`I
`
`It
`'
`
`=
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`t
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`none of Harrell’s competitors manufacture fertilizer products by means different from
`those used by Harrell’s,
`none of Harre1l’s competitors manufactures any type of equipment,
`the search results produced in an internet search on Google are based upon frequency of
`access to an internet site,
`the results of an internet search on Google correspond to market presence or recognition;
`in her opinion, MTD’s customers access its products solely “by brand name rather than
`its tagiinef’ and that
`there have been no reported incidents of confusion.
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`(See Grimes Aff. at MS, 10, 11.) Yet, conspicuously absent from her affidavit is any factual
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`basis to support these conclusions.
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`An affidavit may inctude inferences and opinions as long as they are based on underlying
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`facts of which the affiant has personal knowledge. Payne v. Pauley, 337 F.3d 767, 772 (7th
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`Cir.2003); Drake v. Minnesota Mining & Marzufacruring Co., 134 F.3d 878, 887 (7th Cir.l998).
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`See also Fenje v. Feld, 301 F.Supp.2d 781, SE4 (N.D. Ill, 2003). Here, Ms. Grimes’ statements
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`lack the foundation and any evidence or basis of personal knowledge. Further, Ms. Grimes’s
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`nncorroborated statements of no known instances of actual confusion are of little evidentiary
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`value. See In re Majestic Distilling Ca, 315 F.3d 1311, 1317 (“The lack of evidence of actual
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`confusion carries little weight***.”); In re Bissetr—Berman Corp, 476 F.2d 640, 642, 177 USPQ
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`528, 529 (CCPA 1973) (stating that self-serving testimony of appellant's corporate president's
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`unawareness of instances of actual confusion was not conclusive that actual confusion did not
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`exist or that there was no likelihood of confusion). Moreover, given Harreli’s admission that its
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`proposed mark was not placed on product tags until the end of 2005 (see Ex. C, hereto), Ha1'rell’s
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`proposed mark, arguabiy, has not been used long enough to test actual confusion.
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`Absent some basis of personal knowiedge, Ms. Grimes’ assertions are improper, and they
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`shouid be given no weight in determining the issues raised by Harreil’s Motion for Summary
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`Judgment.
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`C.
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`Harre!i’s Proposed Mark Is Likeiy To Cause Confusion With M’I‘I)’s Marks.
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`Due to the similarity of Harrell’s proposed mark with M'i‘D’s Marks, consumers and
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`purchasers of MTD’s products are likely to be confused and/or mistaken as to the source or
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`affiliation of these products. “The ultimate question of the likelihood of consumer confusion has
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`been termed a question of fact.”3 In re EJ. DuPont DeNemours & Co., 476 F.2d 1357, 1361,
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`177 U.S.P.Q. 563 (C.C.P.A. 1973) (citing Coca Cola Company v. Snow Crest Beverages, Inc,
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`162 F,2d 280, 73 U.S.P.Q. 518 (1st Cir. 1947).) And, the test for likelihood of confusion turns on
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`an analysis of all of the relevant facts in evidence that are relevant to the factors set forth in Du
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`Pont.4 See In re Majestic Distilling Company, Inc, 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
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`2003).
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`“In any likelihood of confusion analysis,
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`two key considerations
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`are
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`the
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`similarities between the marks and the similarities between the goods and/or services.” See In re
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`3 But see Bose Corp v. Qsc Audio Products Inc 293 F.3d 1367 (Fed. Cir., 2002) (“Each of the DuPont factors
`presents a question of fact***. The uitirnate question of whether a iikeiihood of confusion exists is, however, a
`question of law ***.”)
`(1) the similarity or dissimilarity of the marks in their entireties as
`4 The DuPont court established thirteen factors:
`to appearance, sound, connotation and commercial impression; (2) the similarity or dissirniiarity and nature of the
`goods or services as described in an application or registration or in connection with which a prior mark is in use; (3)
`the similarity or dissimilarity of established, iikely-to-continue trade channels; (4) the conditions under which and
`buyers to whom sales are made, i.e., “impulse" vs. careful, sophisticated purchasing; (5) the fame of the prior mark
`(sales, advertising, iength of use); (6) the number and nature of similar marks in use on similar goods; (7) the nature
`and extent of any actual confusion; (8) the length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used
`(house mark, "faniiiy" mark, product mark); (10) the market interface between appiicant and the owner of a prior
`mark; (11) the extent to which applicant has a right to exclude others from use of its mark on its goods; (12) the
`extent of potential confusion, i.e., whether de minimis or suhstantiai; and (13) any other established fact probative of
`the effect of use. DuPont, 476 F.2d at 1361. Though Harreli’s Motion for Summary Judgment addresses only
`factors one through five as being at issue for the Board’s determination, Harrell’s acknowledges that the facts of this
`case weigh in MTD’s favor on the sixth factor in so far as it could find no other marks siiniiar to MTD‘s marks in
`the lawn and garden industry. (See Ha1'reii’s Motion at p.
`i 1.)
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`

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`Dixie Restaurants Inc, 105 F.3d 1405, 4i USPQ2d 1531 (Fed. Cir. 1997); Federated Foods, Inc.
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`12. Fort Howard Paper C0,, 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
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`Though no one factor is determinative in the likelihood of confusion anaiysis and each
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`factor must be weighed and balanced one against the other" Checkpoint Sys., Inc. v. Check Point
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`Software Techs, Inc., 269 F.3d 270, 280 (3d Cir. 2001), any doubt as to likelihood of confusion
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`must be resolved against the newcomer because the newcomer has the opportunity and duty to
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`avoid a likelihood of confusion with an existing mark. In re Shell Oil Co., 992 F.2d 1204, 1209,
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`26 U.S.P.Q.2D (BNA) 1687, 1691 (Fed. Cir. 1993).
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`A review of all of the relevant factors in the present case reveals that a likelihood of
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`confusion will result from Harre1l’s proposed mark. Therefore, Harre1l’s has failed to meet its
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`burden, and its motion for summary judgment must be denied.
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`1.
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`The Marks At Issue Are Similar In The Entirety Of Their Appearance,
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`Sound, And Meaning.
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`With regard to the first factor — similarity or dissimiiarity in appearance, sound and
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`meaning, I~Iarre1l’s asserts that its proposed mark, GROWING A BETTER WORD, is dissimilar
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`to 1VlTD’s mark, FOR A GROWING WORLD. However, consideration of these marks in their
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`entirety reveals that Harretl’s assertion is without merit.
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`An analysis of this factor requires the Board to View the marks in their entireties. Shell
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`Oil Co., 26 USPQ2d at 1688. “The degree of similarity *** needed to prove likely confusion will
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`vary with the difference in the goods *** of the parties. Where the goods .
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`.
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`. are directly
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`competitive, the degree of simiiarity required to prove a likelihood of confusion is less than in
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`the case of dissimilar products.” 3 McCarthy on Trademarks and Unfair Competition § 23:20.}
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`(4th ed. 2003).
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`The marks at issue in this case share severai critical similarities:
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`they share three
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`identical words, “a”, “growing,” and “world,” they both end with the word “world,” they are
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`both displayed with a similar horizontal bar; and the common parts of the respective marks are
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`virtually identical. Not only do the marks look similar, but, when stated audibly, they sound
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`similar. Clearly, the similarities in appearance and sound outweigh the differences. See Walla
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`Corp.
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`v. Calzform'a Concept Corp, 558 F.2d 1619, 194 USPQ 419, 422 (CCPA 1977)
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`(CALIFORNIA CONCEPT and surfer design likely to be confused with CONCEPT for hair care
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`products); In re Credit Suisse First Boston Corporation, 2005 TTM3 LEXIS 134, (finding that
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`marks using “FUNDCENTRAL” and “MUTUAL FUNDS CENTRAL” look and sound similar
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`to the extent that the corninon part of both marks "Funds Central" is virtually identical.)
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`Harrell’s would differentiate the marks by distinguishing unimportant features, namely
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`that MTD’s mark begins with the word “for” and that Harrell’s mark includes the word “better.”
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`(Harrell’s Br. at pp.5~6.)
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`“But the proper legal test is not whether there is some confusing
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`similarity between sub-parts of the marks;
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`the overarching question is whether the marks,
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`‘viewed in their entirety’, are confusingly similar.” Kos Pharms, Inc. v. Andrx Corp, 369 F.3d
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`700, 713. And, applying the proper legal test, Harrell’s assertion is simply without merit. Thus,
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`this factor weighs in favor of MTD.
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`2.
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`The Marks At Issue Are Similar In Their Nature And Established Trade
`Channels.
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`The facts in this case clearly establish that both Harrell’s and MTII) produce and seil
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`products Within the lawn and garden industry. Further, both companies market their products to
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`commercial purchasers in this industry. Accordingly, the second and third DuPont factors favor
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`MTD.
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`Harrell’s is quick to point out that MTD sells a broader range of products within the
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`industry that include a variety of lawn and garden tools and equipment as if to suggest that the
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`

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`parties’ goods are not similar. However, Harreli’s cannot escape the indisputable fact that both
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`parties sell related goods.
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`Indeed, both sell lawn and garden products, and it is axiomatic that
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`MTD’s marks are entitled to protection against the use of identical or similar marks by a maker
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`of related goods. See Scarves by Vera, Inc. v. Todo Imports Lrd., 544 F.2d 1167, 1172 (2d
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`Cir.l976); Fleischmann Distilling Corp. v. Manier, 314 F.2d 149, 151 (9th Cir. 1963); Chrysler
`Corp. V. Vtznzrant, 44 F.Supp.2d 1062 (CD. Cal. 1999).
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`Moreover,
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`it is undisputed that MTD will expand into fertilizer sales within the next
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`month. At that point, MTD and Harrell’s will be selling identical goods.
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`In this regard, the
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`similarity in the nature of the goods is unquestionab1e.5
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`With regard to the third DuPont factor -— similarity in trade channels M the Board must
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`consider whether the predominant purchasers of the parties’ goods are similar or different, and
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`whether the marketing approaches used resemble each other. See Gray v. Mezjer, Inc, 295 F.3d
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`641, 649 (6th Cir. 2002).
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`Direct competition between the parties’ products is not required for this
`factor to weigh in favor of a likelihood of confusion. Similarly, the
`parties‘ outlets and customer bases need not be identical; rather, only
`some degree of overlap must be present before the factor favors a
`finding of likelihood of confusion.
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`Glow Indus. v. Lopez, 252 F. Supp. 2d 962 (CI). Ca. 2002) (citing Frehling Enterprises, Inc. v.
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`International Select Group, Inc, 192 F.3d 1330, 1339 (1 1th Cir. 1999).)
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`Here, the undisputed testimony is that both MTD and Harre11’s market and sell their
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`products, including MTD’s fertilizer products, to landscapers, golf course maintenance crews,
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`5 Even if MTD had not already endeavored to expand its product line to include fertilizers, the Board could find a
`likelihood of confusion to exist in this case given the possibility that it might do so into the future. See Brookfield
`Communications, Inc. v. West Coast Entertainment Corp, £74 F.3d 1036 (9th Cir. 1999) (“Even though [the
`parties? offerings *** are not identical products, likelihood of confusion can std} result where, for example, there is
`a iikciihood of expansion in product lines”)
`
`10
`
`

`
`and professional gardeners. Since both HarrelI’s and MTD sell their respective products through
`
`retail outlets, there can be no dispute that there is “some degree of overlap” present in their
`
`marketing channels. (See Harreli’s Motion at Grimes Aff. at $9.)
`
`3.
`
`Purchasers Of MTD’s Products Include Impulse Buyers That Are Likely
`To Be Confused By I-}Iarrel1’s l’roposed Mark.
`
`Contrary to Harrell’s assertions, purchasers of MTD’s products are likely to be confused
`
`by Harrell’s proposed mark. “To assess properly the degree of consumer care at issue, the Board
`
`must consider both parties’ potential consumers.” See Cae Incorp. v. Clean Air Engineering, 267
`
`F.3d 660, 682 (7th Cir., 2001)
`
`In doing so, it is important to note that “although many of the
`
`parties’ customers are sophisticated and decide to buy only after extensive negotiations, these
`
`customers‘ technical sophistication about their particular industry does not equate to trademark
`
`sophistication.” Id. at 683. Further, “[t]he more widely accessible and inexpensive the products
`
`and services,
`
`the more likely that consumers will exercise a lesser degree of care and
`
`discrimination in their purchases.” Id.
`
`Here, both Harrell’s proposed mark and MTD’s marks will appear on fertilizer products,
`
`which by their very nature are inexpensive items.
`
`(ierousek Aff. at 114.) While purchasers,
`
`including commercial landscapers and groundskeepers, may be knowledgeable about lawn and
`
`garden care,
`
`the low price of these products suggest that “the norrnai buyer will exercise
`
`relatively less caution” in their buying decisions, “making confusion more likely.” See Harold F.
`
`Ritchie, Inc. v. Chesebrough-Ponds Inc, 281 F.2d 755, 762, n.i9 (2d Cir. 1960). As a result,
`
`this factor weighs in MTD’s favors.
`
`ll
`
`

`
`4.
`
`MTD’s Marks Are Sufficiently Famous As To Warrant Protection From
`The Likelihood Of Confusion Resulting From Harrell’s ihroposed Mark.
`
`Fame of an opposer’s mark, if it exists, plays a “dominant role” in the Board’s review of
`
`the DuPont factors. Palm Bay Imports Inc. v. Veuve C1z'cquotPonsardz'n, 369 F.3d L369, 1374
`
`(Fed. Cir. 2005). “Famous marks enjoy wide latitude of legal protection since they are more
`
`likely to be remembered and associated in the public mind than weaker marks ***.” Id.
`
`Direct evidence of fame rarely appears in contests over iikelihood
`of confusion. Instead, *** the fame of a mark may be measured
`indirectly, among other
`things, by the volume of sales and
`advertising expenditures of the goods traveling under the mark,
`and by the length of time those indicia of cornrnerciai awareness
`have been evident.
`
`Bose Corp, 293 F.3d at 1371.
`
`Here, the undisputed facts demonstrate that MTD invested more than-
`in an effort to launch the corporate brand embodied in MTD’s marks.
`(Docherty Aff. at 115.)
`
`And, since 2000 alone, it has spent more tha-in overall product advertising,
`which has included MTD’s rnarks.6 (Rechin Aft". at '1l5.) During this same time period, MTD’s
`
`sales in the lawn and garden industry have accounted for a significant market share the lawn and
`
`garden industry, making it a ieading manufacturer of lawn and garden equipment products in the
`
`industry. (Rechin Aff. at $2.) Clearly, these statistics weigh in l\/iTD’s favor. Id. (“*** we have
`
`consistently accepted statistics of sales and advertising as indicia of fame: when the numbers are
`
`large, we have tended to accept them without any furtherisupporting proof.”)7
`
`5 MTD has spent more than oEeIy on packaging for parts and accessories all of which
`
`include M’FD°s marks. (Rechin Aff. at ‘([5 .
`7 See QSIO Nina! Ricci, S./i.R.L. V. E.T.F. Enters, II’£C., 889 F.2d i070, 1072, 12 USPQ2d E90}, 1902 (Fed. Cir. 1989)
`(NENA RICCI for perfume, clothing and accessories: $200 miiiion in sales, over $37 million in advertising over 27
`years); Kfmberly~Clark Corp. v. H. Douglas Em‘cr., Ltd., 774 F.2d 1144, 1146-47, 227 USPQ 541, 542 (Fed. Cir.
`l985) (HUGGIES for diapers: over $300 million in sales over 9 years, $15 million in advertising in one year);
`Specialty Brands Inc. V. Coffee Bean D1's1fribs., Inc, 748 F.2d 669, 674575, 223 USPQ 1128i, 1284 (Fed. Cir. 1984)
`(SPICE ESLANDS for teas, spices and seasonings: $25 niiilion annually in sales for spices, $12 million between
`1959 and 1981 for tea, "several miiiion“ in advertising,
`in use for 40 years); Giant Food,
`Inc. v. Nations
`
`12
`
`

`
`Additionally, the fact that MTD’s registrations are incontestable serves as a conclusive
`
`presumption that its marks are not descriptive and have acquired a secondary meaning. See J.
`
`Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §l5:35 at 15—54, 55. (4th
`
`ed.1997).
`
`D.
`
`Registration of HarreII’s Mark Will Result In The Dilution Of lVi’I‘D’s
`Marks, And Therefore, Harre!I’s Is Not Entitled To Judgment As a Matter
`Of Law.
`
`Harre11’s claim that its proposed mark will not dilute MTD’s marks fails as a matter of
`
`law. The trademark dilution remedy aliows an owner of a uniquely famous trademark to prevent
`
`subsequent use of the mark even where there is no likelihood of confusion, as in cases involving
`
`completely different products. See J. Thomas l\/EcCarthy, McCarthy on Trademarks and Unfair
`
`Competition § 24:68, at 24-112 (4th ed.1997).
`
`In order to succeed on a claim of dilution under
`
`the Federal Trademark Diiution Act, a party must show that the mark is distinctive and famous
`
`and that the complainant’s mark is commercial and in commerce which is likeiy to cause
`
`dilution.
`
`Intermatice Inc. v. Toeppen, 947 F. Supp. 1227 (ND. 111. 1996). To be inherently
`
`distinctive, a mark must “clearly be more than just distinctive in a trademark sense.” King of the
`
`Mountain Sports, Inc. v. Chrysler Corp, 968 F.Supp. 568, 578 (D.Co1o.l997). Further, for
`
`dilution to occur, the marks “must be ‘very’ or ‘substantially’ similar and **°*‘ absent such
`
`similarity,
`
`there can be no viable ciaim of ditution.” Michael Caruso & Co. v. Esrefan
`
`Enterprises, 994 F.Supp. I454, 164 (SD. Fla. 1998).
`
`As demonstrated above, MTD’s marks are clearly distinctive and famous. They have
`
`been publicized nationwide in conjunction with lV.tTD’s products. Further, for the reasons noted
`
` ..m*&
`
`(GLANT FOOD for
`Inc., 710 F.2d 1565, 567-68, 2E8 USPQ 390, 392-93 (Fed. Cir. E983)
`Foodservice,
`supermarket services and food products: saies over $1 billion in one year, "considerable amounts of money“ in
`advertising, 45 years use); DuPont, 476 F.2d at £36}, 177 USPQ at 567; Planters Nut & Chocolate Co. v. Crown
`Nut Co, 305 F.2d 916, 917-18, 134 USPQ 504, 506 (CCPA 1962) (MR. PEANUT DESIGN for nuts and nut
`products: $350 million in sales, $10 rnitlion in advertising over 10 years).
`
`13
`
`

`
`above, Harre11’s proposed mark, which identical
`
`to MTD’s marks in severai respects,
`
`is
`
`substantially similar. Therefore, Harre1i’s motion for summary judgment fails, as a matter of
`
`law, with respect to MTD’s dilution claim.
`
`V.
`
`CONCLUSION
`
`For all of the foregoing reasons, Applicant Harre11’s hie. has failed to meet its burden on
`
`summary judgment. Acoordingiy, Opposer MTD Products Inc moves the Trademark Trial and
`
`Appeal Board for an Order overriding Ha1‘rei1’s Inc.’s Motion for Summary Judginent. Further,
`
`consistent with the holding in Visa International Service Assn. v. L1fe—Code Systems, Inc, 220
`
`U.S.P.Q. 740, Opposer respectfully requests judgment in its favor on all claims set forth in MTD
`
`Products Inc’s Notice of Opposition.
`
`Respectfully submitted,
`
`E) 53$-_-L; g % 9
`
`886)
`B ce E. Peacock (00
`Angeia M. Lavin (0069604)
`Danielle Skoczen (0071104)
`WEGMAN, HESSLBR. & VANDERBURG
`6055 Rockside Woods Blvd. #200
`
`Cleveland, Ohio 44131
`(216) 642-3342
`Fax: (216) 642~8826
`
`Attorneysfor Opposer MTD Products Inc
`
`14
`
`

`
`EXHIBIT A
`
`

`
`.‘ .,!“"
`:‘?:u‘:1ITm 1
`
`
`
` 1.3-ems.-S;.m';I_%§: -I
`
`
`
`UNITED STATES DEFARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`November 01, 2006
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 2,250,1 06 IS
`
`CERTIFIED TO BE A TRUE CO1’Y WHICH IS IN FULL FORCE AND
`EFFECT WITHINOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`THEREON AS DISCLOSED BY THE RECORDS OF THE “UNITED STATES
`
`PATENT AND TRADEMARK OFFICE.
`
`
`
`
`
`REGISTERED FOR A TERM OF 10 YEARS FROM June 01, 1999
`
`SECTION8 & 15
`
`
`
`SAID RECORDS SHOW TITLE TO BE IN:
`
`Registrant
`
`
`
`
`
`
`
`
`
`By Authority of the
`
`
`
`
`
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and 'I‘rademark Office
`
`a
`
`P. R. GRANT
`
`Certifying Officer
`
`
`
`
`
`

`
`Int. CL: 7
`
`Prior U.S. Cls.: 13, 19, 21, 23, 31, 34, and 35
`
`Reg. No. 2,250,106
`
`United States Patent and Trademark Office
`
`Registered June 1, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`MTFm}Growing_l/I/arid.
`
`MTD PRODUCTS INC (OHIO CORPORATION)
`5965 GRAFTON ROAD
`VALLEY CITY, OH 44280
`
`POWER-OPERATED LAWN AND
`FOR:
`GARDEN EQUIPMENT, NAMELY, RIDING
`MOWBRS, LEAF SHREDDERS, LA