LETCO Group, LLC

Trademark Trial and Appeal Board

Aug 26, 2011

No. 77541687 (T.T.A.B. Aug. 26, 2011)

Hearing: Mailed:
April 6, 2011 August 26, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

The LETCO Group, LLC
________

Serial No. 77541687
_______

Karla S. Lambert of the law firm Fulbright & Jaworski, LLP for
The LETCO Group, LLC.

Odessa Bibbons, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Bucher, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

The LETCO Group, LLC (“applicant”) filed an application to
register the mark LIVING EARTH, in standard character format,
for “soil amendments; potting soil; planting soil” in
International Class 1; “sand; gravel” in International Class 19;
and “mulch; natural recycled wood fiber mulch for use as a
playground ground cover” in International Class 31.1

1 Serial No. 77541687, filed August 7, 2008, pursuant to Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), alleging August 2006 as the
date of first use anywhere and in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77541687
2
As to International Class 1 only, the Trademark Examining
Attorney refused registration of applicant’s mark under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the registered mark
LIVING SOIL, also in standard character format, for “planting
soil, namely, planting mix” in International Class 1,2 that when
used on or in connection with applicant’s identified goods in
Class 1, it is likely to cause confusion or mistake or to
deceive.
Registration has also been finally refused as to Class 1 in
light of applicant's failure to comply with the examining
attorney's requirement for a disclaimer of the word “EARTH,”
pursuant to Trademark Act § 6(a), 15 U.S.C. § 1056(a), on the
ground that the term is generic for the identified goods.
First, we consider the refusal to register the mark LIVING
EARTH under Section 2(d). We base our determination under
Section 2(d) on an analysis of all of the probative evidence of
record bearing on a likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any

2 Registration No. 3289351, issued September 11, 2007 on the Principal
Register under Section 1(a) of the Trademark Act, claiming March 2003
as the date of first use anywhere and in commerce. Registrant has
disclaimed the word SOIL.

Serial No. 77541687
3
likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the
goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the
goods and differences in the marks”). We discuss each of the
du Pont factors as to which applicant or the examining attorney
submitted relevant argument or evidence.
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. See Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30,
54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc.
v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The proper
focus is on the recollection of the average purchaser who
normally retains a general rather than specific impression of
trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203
USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Serial No. 77541687
4
Here, we find that both applicant’s and registrant’s marks
create the same commercial impression because the significance
of the marks is identical. The first term in each mark consists
of the same word LIVING. While the second term in each mark
(EARTH and SOIL), is different as to sound and appearance, both
have the same meaning as “soil” or “dirt.” According to the
definitions of record, the word “earth” is defined as “soil,
especially productive soil.” American Heritage Dictionary of
the English Language: 4th ed. 2000. The word “dirt” is defined
as “[e]arth or soil.” American Heritage Dictionary of the
English Language: 4th ed. 2000. This supports a finding that
both applicant’s and registrant’s marks LIVING EARTH and LIVING
SOIL will have the same meaning to consumers, when used in
connection with applicant’s and registrant’s goods. Consumer
confusion has been held likely for marks that do not physically
sound or look alike but that convey the same idea, stimulate the
same mental reaction, or may have the same overall meaning. See
Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ
301, 304 (C.C.P.A. 1970) (holding MISTER STAIN likely to be
confused with MR. CLEAN on competing cleaning products); Ralston
Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125 (TTAB 1978)
(holding TUNA O’ THE FARM for canned chicken likely to be
confused with CHICKEN OF THE SEA for canned tuna); Downtowner
Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973) (holding
Serial No. 77541687
5
UPTOWNER for motor inn and restaurant services likely to be
confused with DOWNTOWNER for the same services).
Applicant has submitted a dictionary definition of EARTH to
support its argument that the word is not limited to the meaning
of “dirt” but in fact has a wide range of different meanings,
including the proper name for the planet we inhabit. Applicant
contends that when used in combination with "LIVING," the term
"EARTH" in applicant's mark conveys to consumers the image of a
vibrant, fertile planet, suggesting that applicant’s goods are
conducive to fostering the ecological and environmental health
of the planet Earth. Applicant further argues that because the
meaning of the word “soil” focuses on the rocky mineral
substance in which plant life grows, or on agriculture and plant
growth itself, the registered mark LIVING SOIL gives rise to a
different commercial impression.
We do not find this argument persuasive. The fact that the
word “earth” has other meanings does not obviate the fact that
when considered in relation to applicant’s goods, it does have
the meaning of “dirt” or “soil.” In addition, although
applicant has submitted a dictionary definition of the term
EARTH, applicant did not submit any evidence of usage of the
phrase “living earth” to support the contention that prospective
consumers would perceive applicant’s mark as suggesting that
applicant’s goods have environmentally friendly attributes.
Serial No. 77541687
6
Applicant also argues that registrant’s mark is a weak mark
entitled to a narrow scope of protection. In support thereof,
applicant has submitted 12 third-party registrations to show
that the term “LIVING” is used in connection with goods and
services similar or related to those of applicant and
registrant, as set forth in the chart below.
Federal Registered Trademarks
Mark Registration No. Goods/Services Owner
LIV-E-ARTH 2,189,793
Soil amendments and fertilizers for agricultural
and horticultural use (Cl 01)
Mineral supplements (Cl 05)
Live Earth
Products, Inc.
DR. SUBLER'S
LIVING SOIL
(Disclaims "LIVING
SOIL")
2,912,899
Natural, organic and synthetic soil additives;
plant food supplements; soil amendments; soil
conditioners; and fertilizers, all for domestic and
commercial plant care, gardening, landscaping,
horticultural and agricultural use (IC 01)
Pacific Garden
Company
LIVING MULCH
(Disclaims
"MULCH")
3,456,111
Growing media and potting soil for plants,
namely, earthworm castings compost and
compost (IC 01)
EarthSweet, Inc.
SOILS ALIVE
(Disclaims "SOILS")
3,493,184 Fertilizers; soil amendments (Cl 01) Soils Alive, LLC
COMPOST ALIVE!
(Disclaims
"COMPOST")
1,972,632 Materials useful in the production of gardening mulch, namely compost (Cl 01) Gardens Alive, Inc.
ORGANICS ALIVE
(Disclaims
"Organics")
3,363,134
Biological fertilizer in the nature of dry worm
castings and dry worm castings with composts
mixes and aerobically activated worm castings
tea which may be comprised of worm castings
only and may also contain basic organic products
such as molasses, seaweed extract, rock mineral,
and other products to make a complete mix or
liquid (Cl 01)
California
Vermiculture, LLC
BRINGING SOIL TO
LIFE 3,080,064
Fertilizers, soil conditioners, and plant growth
regulators for agricultural and domestic use;
surfactants and adjuvants for use in connection
Wilbur-Ellis
Company
Serial No. 77541687
7
with agricultural pesticides and herbicides (Cl 01)
PUT LIFE BACK
INTO YOUR SOIL 2,637,157
Liquid inoculants in the nature of fertilizer and
soil supplements, used in agriculture,
horticulture, turf, and bioremediation industries
(Cl 01)
Biologically
Integrated
Organics, Inc.
LAND LIFE 3,234,033 Soil conditioners for agricultural and horticultural use (Cl 01)
I & OC of Japan
Co., Ltd.
MEADOW-LIFE 1,806,638
Liming agents, synthetic soil substitute, soil
conditioner and fertilizer for agricultural use (Cl
01)
Middlesex County
Utilities Authority
LIVING DESIGNS
(Disclaims "Designs")
2,633,606 Landscape design (Cl 42) Robert E. Jones
LANDSCAPES FOR
LIVING 3,267,921
Retail lawn, garden and nursery stores (Cl 35)
Landscape construction (Cl 37)
Landscape gardening design for others (Cl 44)
Mickman Brothers

Third-party registrations are not evidence that the marks
shown therein are in use, or that the public is familiar with
them. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200,
22 USPQ2d 1542, 1545 (Fed. Cir. 1992). However, third-party
registrations may be considered in the same manner as a
dictionary to show a term's significance in a particular trade.
Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB
1975). In this case, we find that the third-party registrations
noted above show that the word LIVING and derivations thereof
(e.g. LIVE, LIFE) have a suggestive meaning with regard to the
goods at issue, and further that registrant’s mark has a limited
scope of protection. However, even weak marks are entitled to
protection from the registration of very similar marks for
Serial No. 77541687
8
identical goods, as discussed below. See Giant Food Inc. v.
Rosso and Mastracco, Inc., 218 USPQ 521 (TTAB 1982).
Next we consider the second du Pont factor, the
similarities or dissimilarities of the goods. As to the goods,
it is well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods recited in
applicant's application vis-à-vis the goods identified in the
cited registration. In re Shell Oil Co., 26 USPQ2d at 1690 n.4;
and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1783 (Fed. Cir. 1992).
With regard to this issue, we note that the examining
attorney focused her analysis on whether applicant’s goods are
related to registrant’s goods, and submitted third-party
registrations in support thereof. However, based on the
identification of goods as written, we need not reach the
question as to whether applicant’s and registrant’s goods are
related since in fact they are identical.
The nature and scope of a party’s goods or services must be
determined on the basis of the goods or services recited in the
application or registration. See, e.g., Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002); In re Shell Oil Co., 992 F.2d 1204, 1208 n.4, 26 USPQ2d
1687, 1690 n.4 (Fed. Cir. 1993).
Applicant’s identified goods are:
Serial No. 77541687
9
“Soil amendments; potting soil; planting soil;”
Registrant’s identified goods are:
“Planting soil, namely, planting mix.”
(emphasis added).
Because “planting soil” is recited broadly in applicant’s
identification without any limitation as to the type, it
necessarily encompasses registrant’s more specific type of
“planting soil” identified as “planting mix.” As such,
applicant’s goods necessarily encompass registrant’s goods and
are therefore legally identical. Moreover, because the goods
are legally identical, they are presumed to move in the same
channels of trade and to be sold to the same classes of
consumers. Thus, these du Pont factors of the similarity of the
goods and channels of trade weighs in favor of finding a
likelihood of confusion.3
To the extent that there are any other relevant du Pont

3 In view of our finding that the goods are in part identical, we need
not discuss the evidence regarding the relatedness of the remaining
goods. If there is likely to be confusion with respect to any item
that comes within the identification of goods of applicant’s
application in Class 1 and the cited registration, this is sufficient
to find a likelihood of confusion for all goods listed in Class 1.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Serial No. 77541687
10
factors, we treat them as neutral. After considering all of the
evidence of record and argument pertaining to the du Pont
likelihood of confusion factors, we conclude that there is a
likelihood of confusion between applicant’s LIVING EARTH mark
for “soil amendments; potting soil; planting soil” in
International Class 1, and the registered mark LIVING SOIL for
“planting soil, namely, planting mix.”
In light of our decision, we need not consider applicant's
failure to comply with the examining attorney's requirement for
a disclaimer of the term EARTH.
Decision: The Section 2(d) refusal is affirmed. The
application will be forwarded for publication in Classes 19 and
31 only.