Emerald Bio-agriculture Corporationv.Biosafe Systems, LLC

Trademark Trial and Appeal Board

Feb 9, 2006

No. 92042503 (T.T.A.B. Feb. 9, 2006)

Mailed:
9 February 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Emerald Bioagriculture Corporation
v.
Biosafe Systems, LLC
_____

Cancellation No. 92042503

_____

John C. Blattner of Butzel Long for Emerald Bioagriculture
Corporation.

Robert S. Smith, Esq. for Biosafe Systems, LLC.
______

Before Bucher, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 5, 2001, Biosafe Systems, LLC (respondent)
applied to register the mark OXYGROW, in standard character
form, for “chemical compositions for treating soil to
enhance growth of agricultural and horticultural products”
in Class 1. On September 16, 2003, respondent’s application
issued as Registration No. 2,765,685 alleging a date of
first use and first use in commerce of June 15, 2001.
On September 22, 2003, Emerald Bioagriculture
Corporation (petitioner) filed a petition to cancel
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92042503
2
respondent’s registration on the ground that “Petitioner’s
AUXIGRO mark is likely to be confused with Registrant’s
OXYGROW mark.” Petition to Cancel at 2. Petitioner is the
owner of Registration No. 2,428,652 for the mark AUXIGRO, in
standard character form, for “fertilizers, namely, organic
acids that increase plant growth and yield for agricultural
or domestic use” in Class 1. The registration, issued
February 13, 2001, is based on an intent-to-use application
filed March 24, 1997, and it now contains an allegation of
dates of first use of June 1997. Respondent denied the
salient allegations of the petition to cancel.
The Record
The record consists of the following items: the file
of the involved registration; the testimony deposition
of petitioner’s President, Chief Executive Officer, and
expert witness, John McIntyre, with accompanying exhibits;
the testimony deposition of petitioner’s linguistics expert,
Cynthia P. Gardiner, with accompanying exhibits; the
testimony deposition of respondent’s Chief Executive
Officer, Robert Larose; and copies of responses to
interrogatories, requests for admissions, status and title
copies of petitioner’s registration, and other documents
submitted by notice of reliance.
Cancellation No. 92042503
3
Priority
In this case, both petitioner and respondent own a
federal registration for their marks AUXIGRO and OXYGROW.
In such cases the ownership of registrations by both parties
is offsetting.
While it is true that petitioner owns a registration
for BREWSKY'S, by the same token, respondent owns a
registration for BREWSKI BROTHERS. Hence, unlike in
an opposition proceeding where the opposer may own a
registration and applicant, of course, does not, we are
confronted here with a situation where both parties own
registrations. Under such circumstances, it is the
Board's practice "to hold that [as a practical matter]
a petitioner, whether a registrant or not, must, in the
first instance, establish prior rights in the same or a
similar mark and the respondent in turn can defeat the
petitioner's claim of damage by establishing that, as
between the parties, it possesses [prior] superior
rights in the mark sought to be cancelled." United
States Mineral Products v. GAF Corp., 197 USPQ 301, 305
(TTAB 1977). See also 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 20:18 at page
20-39, footnote 3 (4th ed. 1998) and Pamex Foods, Inc.
v. Clover Club Foods, Inc., 201 USPQ 308, 313 (TTAB
1978) ("Thus, the Board has taken the position, in
essence, that the registrations of each party offset
each other; that petitioner as a plaintiff, must, in
the first instance, establish prior rights in the same
or similar mark …").

Of course, petitioner or respondent may rely on its
registration for the limited purpose of proving that
its mark was in use as of the application filing date.
Thus, a petitioner -- whose application filing date was
earlier than respondent's application filing date --
could take its chances and elect to make of record
simply a copy(s) of its registration. Trademark Rules
2.122(d)(1) and 2.122 (d)(2). By so doing,
petitioner's proven first use date of its mark would
then be the filing date of the application. However,
if respondent thereafter proved an actual first use
date pre-dating petitioner's filing date, the issue of
priority, and hence petitioner's Section 2(d) claim,
would be resolved in favor of respondent.

Cancellation No. 92042503
4
Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281,
1284 (TTAB 1998).
In this case, petitioner’s registration is based on an
application with a filing date of March 27, 1997. The
filing date of respondent’s underlying application is
December 5, 2001, and respondent’s president has testified
that it first marketed its OXYGROW product “somewhere around
2001.” Larose dep. at 8. Petitioner “may rely on its
registration for the limited purpose of proving that its
mark was in use as of the application filing date.” Id.
Therefore, because petitioner’s application that resulted in
its registration was filed several years before respondent’s
earliest date of use or its application’s filing date,
petitioner has priority in this case.
Likelihood of Confusion
The question in this case is whether respondent’s mark
OXYGROW is confusingly similar to petitioner’s mark AUXIGRO
when they are used on the identified goods. In likelihood
of confusion cases, we analyze the facts as they relate to
the relevant factors set out in In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
See also In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000).
Cancellation No. 92042503
5
We begin our analysis by examining the similarities and
dissimilarities of petitioner’s and respondent’s marks. We
must determine whether the marks are similar in sound,
appearance, meaning, and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Both registrations are for a mark composed of a single word
depicted in typed or standard character form. Respondent’s
registration is for the mark OXYGROW while petitioner’s mark
is for the mark AUXIGRO. Regarding the sound of the marks,
petitioner has submitted the testimony of a linguistic
expert. This witness concluded that:
It is my opinion that in normal speech most speakers of
North American English would pronounce these two words
as homophones, that is, identically or with only slight
and largely imperceptible difference in the initial
vowels, and that most hearers would perceive no
difference between the two words without visual clues.
Even those who would normally distinguish between the
two vowels in familiar words would have difficulty
hearing the difference between these neologisms unless
the speaker’s pronunciation of the first syllable was
deliberately, artificially exaggerated, and the two
words were contrasted in the same utterance.
Homophones can and do exist in a language so long as
they present adequate semantic (as “read” and “red”) or
syntactic (e.g., noun/verb) contrast. These two
homophonous trademarks, however, have no syntactic
contrast and occur in the same semantic context; it
would therefore be very unlikely that most North
American hearers would perceive any difference between
them.

Gardiner Ex. at A00199-00200.
Respondent argues that the marks are “radically
different” (Brief at 8), but at least as far as
Cancellation No. 92042503
6
pronunciation is concerned, we agree with petitioner’s
expert that the marks would be pronounced by many, if not
most, prospective purchasers virtually identically. The
virtually identical pronunciation of the marks is a factor
that favors petitioner. “And particularly we feel that in
this age of business over the telephone and advertising on
TV and radio the close similarity in sound between GRAND
SLAM and GRAND AM would be likely to result in mistake if
not confusion.” TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44
USPQ2d 1315, 1318 (Fed. Cir. 1997).
Regarding the appearance of the marks, we note that
there are certain similarities. Both petitioner’s and
respondent’s marks (AUXIGRO and OXYGROW) are seven letter
words that end with a “gro(w)” and have an “X” in the middle
of the word. However, the spelling of the words is also
different because they begin with different letters “A” and
“O” and have different letters to produce the “I” sound (“I”
and “Y”) and we agree that the overall spelling of the words
is different.
We also look at the meaning of the marks. The words
OXYGROW and AUXIGRO are not common English words so they
have no established meanings. As pronounced, their meanings
would be indistinguishable. When viewed, the initial part
of the mark (OXY- and AUXI-) may suggest a connection with
different words, “oxygen” and “auxiliary” but, when viewed
Cancellation No. 92042503
7
in the context of fertilizer and similar products, it is
unlikely that prospective purchaser would assume that
petitioner’s mark would be interpreted as some type of
shortening of the words “auxiliary grow.” Instead, if
petitioner’s mark has any meaning at this point, purchasers
may understand the “AUXI-” portion to have the same meaning
as the phonetically identical prefix “OXY-.” Therefore, to
the extent that these terms have any meaning, the meanings
are likely to be similar. Regarding the commercial
impression of the marks, it is likely that they would
suggest “oxygen” and “growing” in the context of fertilizer.
Overall, the marks are similar because their
pronunciations are virtually identical and their meanings
and commercial impressions would be somewhat similar.
The second factor we consider is whether the goods of
the parties are related. The goods in respondent’s
registration are identified as “chemical compositions for
treating soil to enhance growth of agricultural and
horticultural products.” Petitioner’s goods are
“fertilizers, namely, organic acids that increase plant
growth and yield for agricultural or domestic use.” While
the parties discuss the specific goods on which they use
their marks, it is important to recognize that we must
consider the goods as they are identified in the
identification of goods in the registrations. See
Cancellation No. 92042503
8
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“[T]he identification of
goods/services statement in the registration, not the
goods/services actually used by the registrant, frames the
issue”). See also In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (punctuation in
original), quoting, Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed.
Cir. 1987) (“‘Likelihood of confusion must be determined
based on an analysis of the mark applied to the … services
recited in applicant’s application vis-à-vis the … services
recited in [a] … registration, rather than what the evidence
shows the … services to be’”); Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”).
When we look at the identification of goods,
respondent’s goods are chemical compositions for treating
soil to enhance the growth of agricultural and horticultural
products and petitioner’s goods are organic acids that
increase plant growth and yield for agricultural or domestic
use. Both respondent’s and petitioner’s goods are chemical
compositions that increase plant growth. Petitioner’s CEO
and expert witness agreed that its goods can be
Cancellation No. 92042503
9
characterized as “a chemical composition for treating plants
and/or soil for the purpose of enhancing plant growth.”
McIntyre dep. at 10. Therefore, inasmuch as both
respondent’s and petitioner’s goods include chemical
compositions for enhancing plant growth, they are, at least
in part, virtually identical.
Furthermore, while respondent’s witness (Larose dep. at
8) testified that “[w]e market Oxygrow specifically to golf
courses and specifically for applications to the putting
greens on golf courses,” petitioner (McIntyre dep. at 19)
maintains that its product has similar uses.
We have recognized the benefits that AuxiGro has
provided turf grass even before the first
commercialization and naming of the product. We’ve had
tests with Scotts Company. We’ve had tests with other
agriculture – or other, I should say, turf grass
related companies in the United States both for
professional and consumer application and also
companies and application testing in Japan.

Therefore, even as actually used, which is not the test, the
products at least overlap.
When we view the relatedness of the goods, we conclude
that they are at least, in part, virtually identical.
In addition to the marks and the goods, we also look at
the channels of trade, the prospective purchasers, and the
sophistication of the purchasers. Respondent argues (Brief
at 13) that:
Registrant has established that the end users of its
product exercises a high level of care in selecting the
types of products they use to address particular needs
Cancellation No. 92042503
10
and/or problems, and that they rely heavily upon the
input of crop advisors in so doing. The product of
Registrant is not sold at the supermarket check out
counter. The consumer is a professional who is fully
capable of distinguishing “Auxi” from “Oxy” even though
there is one letter that is common. These
professional[s] have extensive training.

As we indicated, there are no specific limitations in
respondent’s or petitioner’s identification of goods besides
such general terms as for “agricultural and horticultural
products” and for “agricultural and domestic use.”
Therefore, we must presume that they include all normal
channels of trade for those products. Morton-Norwich
Products, Inc. v. N. Siperstein, Inc., 222 USPQ 735, 736
(TTAB 1984)(“Since there is no limitation in applicant's
identification of goods, we must presume that applicant's
paints move in all channels of trade that would be normal
for such goods, and that the goods would be purchased by all
potential customers”); Schieffelin & Co. v. Molson Companies
Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since
there are no restrictions with respect to channels of trade
in either applicant's application or opposer's
registrations, we must assume that the respective products
travel in all normal channels of trade for those alcoholic
beverages”). Furthermore, there is nothing inherent in
either identification of goods for fertilizer or chemical
compositions to increase or enhance plant growth that limits
the purchasers to sophisticated purchasers or to specific
Cancellation No. 92042503
11
channels of trade. Indeed, we must assume that the
purchasers of fertilizer and similar products for
horticultural products could include gardeners and others
interested in enhancing plant growth. The channels of trade
and purchasers for these goods overlap and we cannot hold
that sales are limited to sophisticated purchasers.
Therefore, these factors are either neutral or favor
petitioner.
We briefly address the other factors and start by
noting that there is no evidence of actual confusion, but
this is not normally significant. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396
(Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991).
Indeed, evidence of the length of time and the actual
marketing conditions of the parties’ goods is somewhat
limited and therefore we cannot conclude that the lack of
actual confusion is significant in this case. Several
factors such as the fame of petitioner’s mark, their market
interface, the variety of the goods sold under the mark, and
the right to exclude others are either embraced in our
discussion of other factors or not significant factors in
this case.
Two other factors that also merit some discussion are
the existence of other marks and respondent’s intent when it
Cancellation No. 92042503
12
adopted its mark. Except for some indication that there are
other marks that include the prefix or suffix “gro-,” there
is no indication that others are using marks similar to
AUXIGRO. However, respondent does argue (Brief at 5) that
there was “a United States registration for OXY-GRO at the
time [petitioner] selected their mark as well as [at] the
time they filed their application for registration.”
Furthermore, respondent argues (Brief at 15, citation to
record omitted) that it “has a strategic partnership with
the owner of the mark OXY-GRO that was registered prior to
Petitioner’s mark. Registrant adopted OXYGROW less than two
years after cancellation of the registration for the OXY-GRO
mark. There is no evidence of abandonment by the strategic
partner in the two year period.” It is not entirely clear
what a “strategic partnership” is. Larose dep. at 5 (“There
is a strategic partnership with [the third party] and they
in turn are our manufacturer and warehousing and shipping
arm”). However, it is clear that respondent did not own or
license this mark. Larose dep. at 30 (“Q. Did [the owner of
the third-party registration] ever assign the mark to you?”
A. No. Q. Did they ever license the mark to you? A. No.
Q. Was there ever any written communication from them at all
permitting you to use that trademark? A. No.”). Therefore,
petitioner cannot rely on this mark to show that there is no
likelihood of confusion with petitioner’s mark or for
Cancellation No. 92042503
13
priority purposes. Furthermore, inasmuch as the
registration has long since been cancelled it does not
impact our likelihood of confusion analysis regarding
respondent’s mark. Action Temporary Services Inc. v. Labor
Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989 (“[A] canceled registration does not provide
constructive notice of anything”).
The last factor we consider is petitioner’s argument
that respondent adopted its mark in bad faith primarily
because of the inadequacy of its initial search. A failure
to conduct a search does not prove bad faith on respondent’s
part. Savin Corp. v. Savin Group, 291 F.3d 439, 73 USPQ2d
1273, 1286 (2d Cir. 2004). In this case, the other evidence
of respondent’s bad faith is simply not sufficient to
support a conclusion that respondent acted in bad faith.
Therefore, we do not find that this factor favors
petitioner.
In order to determine whether there is a likelihood of
confusion, we must now consider the evidence as it relates
to the factors we discussed. The similarity, if not virtual
identity, of the goods is obviously a factor that favors
petitioner. “When marks would appear on virtually identical
goods or services, 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
Cancellation No. 92042503
14
874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). Also, because
the goods are virtually identical, we must assume that the
channels of trade and prospective purchasers are the same.
Indeed, there is evidence that both respondent’s and
petitioner’s products can be used with turf. Furthermore,
both parties’ products are intended for agricultural
purposes. Therefore, the evidence reinforces the
overlapping nature of the channels of trade and purchasers.
We also cannot find that, based on the identification of
goods, the purchasers are necessarily sophisticated
purchasers.
The decisive question then becomes whether the marks
are similar. The marks here are phonetically identically.
Furthermore, their meanings and commercial impressions are
also somewhat similar when viewed in the context of the
parties’ goods. While fertilizer is not necessarily always
purchased by verbally ordering the product, these products
would be discussed among farmers, gardeners, and others.
Radio and television could be used to promote these products
as well as to report news about the products. The
pronunciation of the marks would be virtually identically
and confusion under these circumstances would be likely.
Decision: The petition to cancel is granted.