Bio-One, Inc.v.A.L.E.G., Inc.

Trademark Trial and Appeal Board

Mar 8, 2012

No. 92052195 (T.T.A.B. Mar. 8, 2012)

Mailed:
March 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bio-One, Inc.

v.

A.L.E.G., Inc.
_____

Cancellation No. 92052195
_____

Robert S. Salter of Salter & Michaelson for Bio-One, Inc.

Wendy B. Mills of Law Office of Wendy B. Mills for A.L.E.G.,
Inc.
_____

Before Seeherman, Cataldo and Wellington, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Bio-One, Inc. (petitioner) has petitioned to cancel
Registration No. 3397476, owned by A.L.E.G., Inc.
(respondent) for the mark BIO1ONE, in standard character
form, for “fertilizers and soil amendments for agricultural
use.” This registration issued on March 18, 2008, from an
application that was filed on April 18, 2007. The grounds
listed in the petition for cancellation are likelihood of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92052195
2
confusion and fraud.1 In the petition for cancellation
petitioner has combined allegations of fact with arguments
of law, but, essentially, petitioner has alleged that since
1992 petitioner has used the mark BIO-ONE in connection with
liquid organic fertilizer and soil amendments to promote
plant growth; that petitioner has superior common law rights
in the mark BIO-ONE based on prior use; that petitioner’s
and respondent’s goods are identical, and the parties’ marks
are nearly identical; and that respondent’s use of the mark
BIO1ONE is likely to cause confusion, deception and mistake
within the meaning of Section 2(d) of the Trademark Act;
that petitioner has filed application Serial Nos. 77320110
for BIO-ONE and this application was refused registration
based on respondent’s registration; that in 2002 petitioner
entered into a wholesale distribution agreement and in 2006
entered into an exclusive distribution agreement with a
company petitioner has variously described as respondent and
a parent company of respondent, namely AsiaLink Enterprise
Group Corp.; that upon petitioner’s discovery of
respondent’s filing of the application which matured into
the registration that is the subject of this cancellation

1 We note that in the ESTTA form that comprises part of the
electronic filing of a petition for cancellation petitioner
listed, in addition to the grounds of likelihood of confusion and
fraud, deceptiveness and false suggestion of a connection under
Section 2(a). Petitioner did not allege any facts in the
petition that would give rise to these grounds, nor did it make
Cancellation No. 92052195
3
proceeding, petitioner terminated its business relationship
with respondent and its affiliates. With respect to the
ground of fraud, petitioner has alleged that the subject
registration is “riddled with fraud” since in its original
application it stated that the date of first use was 1988,
and that it was not until petitioner sent a cease and desist
letter that respondent sought to amend the date of first use
to 2004; that respondent knew or should have known that at
the time it made the initial declaration that it was false.
In its answer respondent has denied all of the salient
allegations in the petition for cancellation. It also made
various affirmative statements, including that it is not
affiliated with AsiaLink Enterprise Group Corp. as a
subsidiary, division or otherwise, although it also stated
that a default judgment petitioner obtained against that
company was obtained without proper service, and that the
judgment was being opposed by that company. Respondent also
stated that it believed that it had the right to file the
application for BIO1ONE “in accordance with numerous verbal
discussions and agreements with Petitioner prior to filing
for registration.” ¶ 19.
By operation of the rules, the record includes the
pleadings and the file of the subject registration.
Petitioner has also submitted the testimony, with exhibits,

any argument about them in its brief, and therefore we have not
Cancellation No. 92052195
4
of Aydemir Arapoglu, petitioner’s president and CEO, and two
notices of reliance. By the notices of reliance, petitioner
has made of record documents from its trademark application
Serial Nos. 77320110 and 7730124; petitioner’s and
respondent’s articles of incorporation; and papers in two
civil actions in the District Court Dallas, Texas between
petitioner and Asia Link Enterprise Group Corp., in one of
which petitioner was the plaintiff and in one of which
petitioner was the defendant.2 Included in the notice of
reliance are some documents that are not appropriate for
submission by notice of reliance, such as distributor
agreements and various correspondence. However, because
these documents were also identified and made of record as
exhibits to Mr. Arapoglu’s deposition, they have been
considered.
Respondent did not submit any evidence. Only
petitioner filed a brief.
Standing
The evidence shows that petitioner’s two applications,
Serial No. 77320110 for BIO-ONE and Serial No. 77320124 for
BIO1ONE, have been refused registration on the basis of the
instant registration. In view thereof, petitioner has

given these claims any consideration.
2 In its petition for cancellation petitioner alleged that it
had filed suit against respondent in state district court in
Texas and a final default judgment against respondent was entered
Cancellation No. 92052195
5
demonstrated its standing. Life Zone Inc. v. Middleman
Group Inc., 87 USPQ2d 1953 (TTAB 2008).
Fraud
In the petition for cancellation, as noted above,
petitioner asserted a ground of fraud on the basis of a
false statement of the date of use that was made in
respondent’s application, alleging in paragraph 12 that
respondent’s registration
is riddled with fraud since it stems from the
deliberate submission of a false and misleading
declaration. Registrant represented under penalty
of perjury in its application that the date of
first use in commerce was 1988. It was not until
Applicant demanded that Registrant cease and
desist all use of the marks BIO1ONE and BIO-ONE on
September 13, 2007 that a post publication
amendment was filed with the UPTO by Registrant
amending the date of first use to 2004. As such,
Registrant knew, or should have known, at the time
of making the initial Declaration, that it was
false.

In order to prove fraud, a plaintiff must prove three
elements: that the statement was false, that it was
material, and that it was made with the intention to
persuade the USPTO to issue a registration which, were it
not for the falsity of the statement, the Office would not
issue. See Torres v. Cantine Torresella S.r.l., 808 F.2d
46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986), quoted with
approval in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938,
1939 (Fed. Cir. 2009): “Fraud in procuring a trademark

in that case on June 5, 2008. It appears that this allegation
Cancellation No. 92052195
6
registration or renewal occurs when an applicant knowingly
makes false, material representations of fact in connection
with his application.” Petitioner’s claim of fraud in the
petition for cancellation is based on the assertion that
respondent falsely stated its date of first use. However, a
false claim in a date of use is not material so long as the
mark was in use in commerce at the time the application was
filed, if the application was based on use in commerce
(Section 1(a) of the Trademark Act), or at the time the
Statement of Use was filed, if the application was based on
intent-to-use (Section 1(b) of the Act). See L. & J.G.
Stickly Inc. v. Cosser, 81 USPQ2d 1956, 1970 n. 17 (TTAB
2007) (inaccurate information regarding claimed dates of
first use does not, by itself, constitute fraud); Western
Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17
USPQ2d 1137, 1141 (TTAB 1990) (“The Board repeatedly has
held that the fact that a party has set forth an erroneous
date of first use does not constitute fraud unless, inter
alia, there was no valid use of the mark until after the
filing of the [Section 1(a)] application”). Petitioner does
not allege, nor has it proven, that respondent did not make
use of its mark as of the filing date of the application in
2007. Thus, petitioner’s claim of fraud, even if the
allegations were taken as true, does not state a ground of

pertains to these civil actions.
Cancellation No. 92052195
7
fraud because it fails to allege that the supposed false
statement was material. Further, petitioner has failed to
prove that respondent did not make use of its mark prior to
the filing date of its application.
In its appeal brief petitioner appears to change the
basis for the ground of fraud, contending that the
declaration in respondent’s underlying application was
fraudulent because it failed to disclose use by others, and
specifically that it failed to disclose use of the mark by
petitioner when respondent knew that petitioner had superior
rights in the mark. This contention was not pleaded, nor
can we say that it was tried by consent of the parties.
Accordingly, we can give no consideration to the ground of
fraud based on material false misstatements in the
declaration of the underlying application. The petition on
the ground of fraud must be dismissed.
Likelihood of confusion
There are two elements to the ground of likelihood of
confusion, priority and likelihood of confusion. With
respect to the issue of priority, the record shows that
petitioner was established as a Texas corporation in August
1992. It manufactures and sells a liquid biological organic
product comprised of natural living soil microorganisms
which aid in improvement of soil fertility. The testimony
of Aydemir Arapoglu, petitioner’s president, CEO and current
Cancellation No. 92052195
8
owner, is that petitioner has used the mark Bio-One
continuously since 1992 for this product. Because
respondent has not submitted any evidence, the earliest date
of use on which it can rely is the April 18, 2007 filing
date of the application which issued into the registration
that is the subject of this proceeding. Thus, petitioner
has established its priority.
With respect to the issue of likelihood of confusion,
petitioner has concentrated its arguments on its assertion
that respondent was a distributor for petitioner, that
petitioner is the owner of the mark BIO-ONE, and that
respondent obtained the registration for BIO1ONE without
petitioner’s permission. However, the evidence submitted by
petitioner shows that it had a manufacturer/distributor
relationship with Asia Link Enterprise Group, not A.L.E.G.,
Inc., the respondent.
Petitioner’s witness testified that he believes the
name of the respondent, A.L.E.G., Inc. is an acronym for
Asia Link Enterprise Group, and that respondent is the same
or a related company to Asia Link Enterprise Group. And
there is evidence showing some connections between
respondent and Asia Link Enterprise Group, in that a paper
filed with the Texas Secretary of State’s office changing
the name of Asia Link Enterprise Corporation was signed by
Mark Ma as an officer, and Mark S. Ma is listed as the
Cancellation No. 92052195
9
director who filed a certification of formation for
respondent, A.L.E.G. Inc. Also, on February 25, 2008, the
registered office address for respondent was changed to 5005
St. Lawrence Ct., Plano TX, and on October 1, 2008 Zhi Ma
filed a change of address for the registered office for
American Asia Link Enterprise Group Corporation to the same
address. In addition, Mark Ma signed checks from Asia Link
to petitioner. However, this evidence is not sufficient to
show that respondent and Asia Link Enterprise Group are the
same company, or, as petitioner has alleged and respondent
has denied in the pleadings, that Asia Link Enterprise Group
is the parent company of respondent.
Accordingly, we do not analyze this case as one of a
distributor of a trademarked product that has registered the
trademark under which the product is sold. Rather, we
analyze the issue in the normal manner for likelihood of
confusion, determining likelihood of confusion based on all
of the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
The goods are identical. Petitioner has shown that its
goods are a liquid biological organic product comprised of
natural living soil microorganisms which aid in improvement
Cancellation No. 92052195
10
of soil fertility, and which fix nitrogen in the soil and
provide plants and crops with nitrogen which is biologically
fixed. Agro, pp. 6-7. Respondent’s goods are identified as
“fertilizers and soil amendments for agricultural use.”
Although there is no specific testimony about petitioner’s
customers in order for us to determine the scope of its
common law rights, because respondent’s goods are legally
identical to petitioner’s, they must be deemed to travel in
the same channels of trade in which petitioner’s goods are
sold. The du Pont factors of the similarity of the goods
and the channels of trade favor petitioner.
With respect to the marks, when marks would appear on
virtually identical goods or services, as they do here, the
degree of similarity necessary to support a conclusion of
likely confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Petitioner’s mark is BIO-ONE,
respondent’s mark is BIO1ONE. The marks are identical in
pronunciation and meaning, with the “1” in respondent’s mark
merely emphasizing the meaning of the word “ONE” in both
marks. The marks are also extremely similar in appearance,
both starting with the element “BIO” and ending with the
word “ONE,” with the only difference being that these two
elements are separated by a hyphen in petitioner’s mark and
the number 1 in respondent’s mark. This small difference is
Cancellation No. 92052195
11
not sufficient to distinguish the marks, particularly when
the marks are used for identical goods. The commercial
impressions of the marks are the same. This du Pont factor
also favors a finding of likelihood of confusion.3
There has been no argument or evidence as to any of the
remaining du Pont factors. We therefore treat them as
neutral.
Considering the du Pont factors on which there has been
argument or evidence, we find that petitioner has met its
burden of proving likelihood of confusion. The petition to
cancel is therefore granted on this ground.
Decision: The petition to cancel is granted.

3 As noted above, petitioner has also applied to register the
mark BIO1ONE, which is identical to respondent’s mark. However,
it is not clear when petitioner began using this mark.
Petitioner’s witness testified that the mark was used “as early
as 1996,” p. 106, but when asked why petitioner filed the
application based on intent-to-use, the question and answer was
not entirely clear:
Q.: So on the filing basis 1(b) for Bio1One, that
would be an intent to use application, I think you
said earlier, and that was based on my client’s use,
et cetera, but you wouldn’t be applying for an intent
to use if you were actually using it; isn’t that
correct?
A.: I don’t even know what you said. I completely
lost you.
Because of the uncertainly as to whether petitioner made use of
the BIO1ONE mark prior to the filing date of respondent’s
underlying application, and therefore has shown priority of use
for this mark, we do not base our finding of likelihood of
confusion on petitioner’s rights in the BIO1ONE mark.