'Reasonable Manners' Standard Does Not Apply To Ex Parte Trademark Examinations

This article previously appeared in Last Month at the Federal Circuit, April 2012

Judges: Dyk, Moore, and O'Malley (author)

[Appealed from TTAB]

In In re Viterra Inc., No. 11-1354 (Fed. Cir. Mar. 6, 2012), the Federal Circuit affirmed the TTAB's refusal to register the trademark XCEED, in standard character form, for agricultural seed. The Court found that this mark would likely cause confusion with the previously registered word and design mark for agricultural seeds X-SEED. In doing so, the Court applied its recent holding in Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011), which eliminated the "reasonable manners" standard in an inter partes opposition case, to ex parte examination cases.

Viterra Inc. ("Viterra") sought to register the mark XCEED for agricultural seed in standard character form without claim to any particular font, style, size, or color. For the same class of goods, X‑Seed, Inc. ("registrant") had previously registered the mark X-SEED in special form as a word and design mark, consisting of a stylized letter X and surrounding dots in red with the term "-Seed" in black and outlined in gray. In its registration, X-Seed had disclaimed rights to the term "seed" apart from the mark.

The TTAB affirmed the examining attorney's refusal to register Viterra's mark, giving heavy weight to the identical nature of the goods involved. It also noted the similarity of the marks—sounding virtually identical—and presumed that the goods travel in overlapping trade channels and are bought by the same classes of potential customers. Regarding similarity of appearance, the TTAB applied the "reasonable manners" standard, which requires consideration of all reasonable manners in which the words could be depicted. The TTAB concluded that one reasonable variation of XCEED could include a large capital letter "X" followed by "ceed" in smaller letters, thus resembling the X-SEED mark. Because of this evidence, the TTAB agreed that purchasers familiar with X-Seed's agricultural seed would be likely to mistakenly believe, upon encountering Viterra's mark, that the goods originated with, or were somehow associated with or sponsored by, X-Seed, i.e., there would be a likelihood of confusion. Consequently, the TTAB affirmed the examiner's registration refusal. Viterra appealed.

On appeal, the parties argued only one factor from In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), bearing on the...