Eco Soil Systems, Inc.v.Atlantic County Utilities Authority

Trademark Trial and Appeal Board

Oct 20, 1999

No. 91105231 (T.T.A.B. Oct. 20, 1999)

Paper No. 21
HRW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB OCT. 20,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Eco Soil Systems, Inc.
v.
The Atlantic County Utilities Authority
_____
Opposition No. 105,231
to application Serial No. 75/016,421
filed on November 6, 1995
_____
Neil F. Martin of Brown, Martin, Haller & McClain
for Eco Soil Systems, Inc.
Timothy D. Pecsenye of Blank, Rome, Comisky and McCauley
for The Atlantic County Utilities Authority.
______
Before Hohein, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Atlantic County Utilities Authority has filed an
application to register the mark ECOSOIL for “compost
derived from the composting of vegetative waste.” 1

1 Serial No. 75/016,421, filed November 6, 1995, with claimed
first use dates of March 1993.
Opposition No. 105,231
2
Eco Soil Systems, Inc. has filed an opposition to
registration of the mark under Section 2(d), 15 USC
§1052(d), on the ground of likelihood of confusion. Opposer
alleges use since at least September 1987 and ownership of a
registration for the ECO SOIL SYSTEMS and design mark
depicted therein 2 for consultation and soil analysis
services for commercial and residential soil treatment,
including golf course and farmland soil treatment; use of
the ECO SOIL SYSTEMS mark for particulate and liquid
fertilizers since at least 1990; and a likelihood of
confusion if applicant is permitted to register and use its
ECOSOIL mark in connection with applicant’s goods.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The Record
The record consists of the file of the involved
application; the trial testimony deposition of Jeffery A.
Johnson, president and general manager of opposer’s golf
turf division for two years and prior to that president and
chief operating officer of opposer since 1990, with

2 Reg. No. 1,545,799, issued June 27, 1989, for the mark
with a claimed first use date of September 12, 1987 and a claimed
first use in commerce of February 5, 1988. Combined Section 8 &
15 affidavit filed and accepted; disclaimer made of the phrase
“SOIL SYSTEMS.”
Opposition No. 105,231
3
accompanying exhibits; and opposer’s notice of reliance on a
certified status and title copy of its pleaded registration
and its requests for admission, accompanied by the
declaration of opposer’s counsel with respect to applicant’s
failure to respond thereto. Opposer filed a brief on the
case, but an oral hearing was not requested. Applicant
filed no brief.
Mr. Johnson testified that prior to joining opposer in
1990 he had visited facilities of opposer in 1989 and had
seen evidence of use of the ECO SOIL SYSYTEMS notation on
fertilizer bags and on jugs containing liquid fertilizers;
that from customer contacts he had reason to believe that
the mark had been used on fertilizers since incorporation of
the business in 1987, but in an application filed for
registration of the mark for fertilizers, 3 the claimed date
of first use was set forth as “as early as 1990,” it being
restricted to the personal knowledge of Mr. Johnson; that
opposer’s fertilizers range from pure organic fertilizers to
synthetic fertilizers, and include mixtures thereof, with
the organic fertilizers being made from both animal products
and vegetable byproducts; that in addition to being a trade
name for opposer, ECO SOIL SYSTEMS is used to identify both
the services and products of opposer, with Exhibit 5
consisting of representative examples of this usage; that
Opposition No. 105,231
4
the reversed format depicted in opposer’s registration is
sometimes used on products as well as services, but the word
format ECO SOIL SYSTEMS is more commonly used on
fertilizers; that most of opposer’s marketing is done by
salesman on a one-to-one basis; and that in 1997 the
approximate sales volume for the ECO SOIL SYTEMS fertilizers
was around one million dollars.
The requests for admission which opposer served upon
applicant, and which are deemed admitted under FRCP 36 in
view of applicant’s failure to respond thereto, contain
admissions of the following relevant facts:
The channels of trade for Ecosoil products are the same
as the channels of trade for the Opposer’s Eco Soil
Systems products (Req. No. 2);
Compost and particulate fertilizers are both used from
time to time to treat at least some of the same
soil conditions (Req. No. 4);
Applicant is aware of persons who are actually
confused, and believe that Ecosoil products emanate
from the same source as Eco Soil Systems products (Req.
No. 8); and
The nature of the products on which Applicant uses or
proposes to utilize the mark Ecosoil are substantially
the same as the type of product on which the mark Eco
Soil Systems is utilized (Req. No. 9).
The requests directed to conclusions made by applicant with
respect to the ultimate issue of likelihood of confusion or
with respect to the likelihood that purchasers would assume
a common source for the respective products are not,

3 Serial No. 75/254,040 for ECO SOIL SYSTREMS for particulate and
Opposition No. 105,231
5
however, admissions of fact upon which opposer can rely and
accordingly have not been considered. See Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151 (CCPA 1978) [facts alone can be admitted, not legal
conclusions].
The Opposition
Insofar as priority is concerned, opposer’s submission
of a status and title copy of its registration for the mark
ECO SOIL SYSTEMS and design, showing that this registration
is subsisting and owned by opposer, is sufficient to
establish priority with respect to the services recited in
the registration. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Opposer, however, is relying almost exclusively upon use of
the mark ECO SOIL SYSTEMS for particulate and liquid
fertilizers, and thus prior common law usage of this mark
for these goods must be proven.
Having introduced no evidence with respect to use of
its ECOSOIL mark, applicant is entitled only to the filing
date of its application, namely, November 6, 1995, as the
earliest date upon which it can rely in this proceeding.
Opposer’s witness Mr. Johnson has testified to observing the
presence of the mark ECO SOIL SYSTEMS on bags of fertilizer
produced by opposer as early as 1989 and to attesting in an

liquid fertilizers, which now stands abandoned.
Opposition No. 105,231
6
application for registration of the mark for fertilizers to
use since “at least as early as 1990.” Mr. Johnson has also
made of record brochures and labels demonstrating present
use of ECO SOIL SYSTEMS as both a service mark and trademark
(Exhibit 5). Inasmuch as this evidence stands uncontested,
we find that opposer is entitled to rely upon a first use
date of at least 1990, a date clearly prior to the 1995 date
upon which applicant may rely, and even prior to applicant’s
claimed first use date in 1993.
Thus we turn to the issue of likelihood of confusion
and to those of the du Pont factors which are most relevant
to the circumstances at hand. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We agree with opposer that, on the basis of the
admissions set forth above, the respective goods of the
parties must be considered to be highly similar and capable
of being used to treat similar soil conditions. Mr. Johnson
has further testified to the similar composition of certain
of its fertilizers and applicant’s compost. The channels of
trade for the respective products have been admitted to be
the same.
Accordingly, the key factor in this case is the degree
of similarity of the marks being used by opposer and
applicant, namely, ECO SOIL SYSTEMS and ECOSOIL on their
respective soil treatment products. In comparing the marks,
Opposition No. 105,231
7
we are guided by the general principle that the greater the
degree in similarity of the products, the lesser the degree
of similarity of the marks required for there to be a
likelihood of confusion as to source or sponsorship. See
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). It is equally
well established that, although the marks must be considered
in their entireties, there is nothing improper in giving
more or less weight to a particular feature of a mark. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).
As such, we find that applicant’s mark ECOSOIL and
opposer’s mark ECO SOIL SYSTEMS create similar commercial
impressions. The dominant term in each mark is ECOSOIL (or
in separated form ECO SOIL). Neither the descriptive term
SYSTEMS not the design element, if used, is sufficiently
distinctive to alter the overall commercial impression
created by opposer’s mark, so as to make applicant’s mark
distinguishable therefrom. See In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ 1531 (Fed. Cir. 1997).
Accordingly, since the weight of these three factors
falls squarely in opposer’s favor, 4 and since applicant has

4 While opposer also argues that its mark has gained fame in view
of the length of use and extent of sales, the evidence clearly is
not sufficient to show that opposer’s mark is famous or even a
strong mark in the relevant field. Thus we do not find consider
this to be a factor to be added to the balance in opposer’s
Opposition No. 105,231
8
offered no evidence which might be weighed in its favor with
respect to any other factor, we find that opposer has
established that there is a likelihood of confusion.
Decision: The opposition is sustained and registration
is refused to applicant.
G. D. Hohein
H. R. Wendel
C. M. Bottorff
Trademark Administrative Judges,
Trademark Trial and Appeal Board

favor. On the other hand, applicant’s admission with respect to
actual confusion may be considered sufficient to weigh this
factor in opposer’s favor.