NH3 Service Company

Trademark Trial and Appeal Board

Jun 12, 2014

No. 85603905 (T.T.A.B. Jun. 12, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re NH3 Service Company
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Serial Nos. 85603905; 856041131
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Koren R. McWilliams of Johnson, Moncrief & Hart, PC
for NH3 Service Company.
Keri-Marie Cantone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Seeherman, Kuhlke and Hightower,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
NH3 Services Company (“Applicant”) seeks registration on the Principal
Register of the mark ROOT ZONE (in standard characters)2 and the mark shown
below for “Fertilizers for agricultural use; Fertilizing preparations; Mixed
fertilizers” in International Class 1.

1 On January 9, 2014, the Board granted the Examining Attorney’s request to consolidate
these appeals.
2 Application Serial No. 85604113 was filed on April 20, 2012, based on a claim of first use
and first use in commerce on January 16, 1967, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
Serial Nos. 85603905; 85604113
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3
This application includes a disclaimer for the wording “NH3 SERVICE CO.”
“FERTILIZERS” and “SALINAS GREENFIELD HOLLISTER,” and the following
description of the mark:
The mark consists of a single outline oval. Inside the oval
is the stylized wording "NH3 SERVICE CO." centered
above the wording "ROOT ZONE" centered above the
word "FERTILIZERS". The word "FERTILIZERS"
appears inside a quadrilateral shape superimposed over a
circle encompassing the silhouette of plant roots. Below
that is the wording "SALINAS GREENFIELD
HOLLISTER".
The Examining Attorney has refused registration of Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that
Applicant’s marks so resemble the previously registered mark ROOT ZONE (in
standard characters) for “potting soil” in International Class 1,4 that use of
Applicant’s mark in connection with Applicant’s goods is likely to cause confusion,
to cause mistake, or to deceive.5

3 Application Serial No. 85603905 was filed on April 20, 2012, based on a claim of first use
and first use in commerce on January 16, 1967, under Trademark Act Section 1(a), 15
U.S.C. § 1051(a).
4 Registration No. 4004448 issued on the Supplemental Register on August 2, 2011.
5 The Examining Attorney also initially refused registration of Application Serial No.
85604113 under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e) on the basis that
the term ROOT ZONE is merely descriptive, and for that reason required a disclaimer of
Serial Nos. 85603905; 85604113
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register both
marks.
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905 (Fed. Cir. 2012); and In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any 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 (CCPA 1976). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
Turning to the factor of the similarity or dissimilarity of the marks, in making
our determination, we compare the marks “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve

the term under Section 6 of the Trademark Act, 15 U.S.C. § 1056, in Application Serial No.
85603905. The refusal and requirement were subsequently withdrawn.
Serial Nos. 85603905; 85604113
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Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005), quoting du Pont, 177 USPQ at 567.
In Application Serial No. 85604113, the mark ROOT ZONE (in standard
characters) is identical to the mark ROOT ZONE (in standard characters) in the
cited registration.
Turning to the mark in Application Serial No. 85603905, while there are
differences in appearance, sound and connotation due to the additional wording and
design elements, we find that because of the ROOT ZONE portion of this mark,
which is identical to the entirety of Registrant’s mark, this similarity outweighs
those differences and creates an overall similar commercial impression to
Registrant’s mark.
Although we view the marks in their entireties, “there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark… .” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). In general, the word portion of a mark dominates over the design
portion inasmuch as the word portion “is the one most likely to indicate the origin of
the goods to which it is affixed.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
200 (Fed. Cir. 1983). “It is the word portion of the marks which is most likely to be
impressed upon a customer’s memory as it is used by prospective purchasers when
asking for applicant’s and registrant’s goods.” In re Dakin’s Miniatures Inc., 59
USPQ2d 1593, 1596 (TTAB 2001), citing In re Appetito Provisions Co., 2 USPQ2d
1553, 1554 (TTAB 1987). We find that to be the case here, where the design portion
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of Applicant’s mark primarily serves to emphasize the common word element ROOT
ZONE through the depiction of roots. The remaining design elements, the oval and
banner shapes, simply frame the wording.
With regard to the literal elements, the additional wording NH3 SERVICE CO.,
FERTILIZERS and SALINAS GREENFIELD HOLLISTER is merely descriptive,
and appropriately disclaimed. Applicant notes that it only disclaimed the wording
in response to the Examining Attorney’s requirement, in order to have the
application proceed to registration. However, we need only look to the plain
meaning of these terms to understand their mere descriptiveness. As concisely
explained by the Examining Attorney, NH3 is a type of fertilizer (see webpages
attached as pages 68-100 of the Office Action dated August 13, 2013); SERVICE CO.
is an entity designation that has no source-indicating capacity, In re Taylor &
Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000); FERTILIZERS is
the generic word for the goods; and SALINAS GREENFIELD and HOLLISTER are
geographically descriptive as they simply name the place of origin of the goods.
Applicant is correct to emphasize that disclaimed matter cannot be ignored;
however, the Examining Attorney did not ignore the disclaimed matter. Rather, the
Examining Attorney properly analyzed the marks by comparing them in their
entireties and recognizing that the most memorable portion of Applicant’s mark and
the portion with the greatest potential impact is the suggestive wording ROOT
ZONE; this term comprises the entirety of Registrant’s mark.
Serial Nos. 85603905; 85604113
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Applicant argues that the Examining Attorney improperly dissected its mark
and did not compare the marks “as to the appearance, sound, connotation, and
commercial impression of the entire literal elements of the two marks.” App. Reply
Br. p. 3. More specifically, Applicant argues that the mark as a whole is suggestive,
not merely descriptive, and thus elements such as the word FERTILIZERS should
not be given less significance. Clearly the other wording in this mark is merely
descriptive, and while ROOT ZONE is suggestive of a feature of the fertilizers, i.e.,
designed for a plant’s root zone,6 it possesses more source-identifying significance
than the remaining wording and the background and banner design elements. We
recognize that the generic word FERTILIZERS is in large type framed by a banner
in a central location, but it simply informs the consumer what this particular ROOT
ZONE product is, and as such does not serve to distinguish the marks. Similarly,
the addition of Applicant’s trade name NH3 SERVICE CO., does not serve to
distinguish the marks. It has often been said that likelihood of confusion will not be
avoided when trade names and house marks are added to otherwise identical terms
but “may actually be an aggravation of the likelihood of confusion as opposed to an
aid in distinguishing the marks so as to avoid source confusion.” In re Christian
Dior, S.A., 225 USPQ 533, 534 (TTAB 1985). Thus, consumers familiar with
Registrant’s mark ROOT ZONE are likely to view Applicant’s mark as a variation of
that mark to which the company name and other descriptive or generic information

6 We note the definition of the phrase “Soil Root Zone” as “the area of the soil around the
plant that comes in contact with the plant root.” University of Kentucky College of
Agriculture, www.ca.uky.edu, attached to the August 13, 2013, Office Action.
Serial Nos. 85603905; 85604113
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has been added. The fact that Applicant seeks to register both ROOT ZONE per se
and the design mark indicates that a trademark owner can and actually has taken
this course. We also point out the likelihood of reverse confusion, where consumers
are likely to assume Registrant’s goods emanate from Applicant.
In sum, we find that the additional wording and minimal design elements in
Applicant’s mark are not sufficient to avoid a likelihood of confusion because
Applicant’s mark incorporates the entirety of Registrant’s mark and the common
element ROOT ZONE is the more distinctive element in Applicant’s mark. Thus,
the similarities outweigh the dissimilarities of the marks, creating a similar overall
commercial impression; in particular, here, where the common element ROOT
ZONE would have the same meaning in relation to the respective goods.
In view of the above, we find that Applicant’s mark ROOT ZONE is identical and
its mark is similar to Registrant’s mark ROOT ZONE, and this factor
weighs in favor of finding a likelihood of confusion.
We turn then to a consideration of the goods, channels of trade and classes of
purchasers. We must make our determinations under these factors based on the
goods as they are identified in the registration and application. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled
Serial Nos. 85603905; 85604113
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that it is not necessary that the respective goods be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be
sufficiently related that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate from, are sponsored or
authorized by, or are otherwise connected to the same source. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In
re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant’s goods, as they are identified, include not only agricultural fertilizers
but also fertilizers for home/non-commercial use inasmuch as “fertilizing
preparations; mixed fertilizers” are not modified by the phrase “agricultural use” in
view of the semi colons separating the terms. In re Midwest Gaming &
Entertainment LLC, 106 USPQ2d 1163, 1066 (TTAB 2013). The bulk of Applicant’s
argument focuses on the difference between the types of goods, fertilizers versus
potting soil, and the trade channels based on the difference between agricultural
use versus noncommercial/residential use.7 For example, Applicant argues that:
Potting soil is a mixture of loam, peat, sand, and
nutrients, used as a growing medium for plants in

7 We note it was unnecessary for Applicant to attach to its brief, the evidence submitted
during prosecution of the application. In re SL&E Training Stable Inc., 88 USPQ2d 1216,
1220 n.9 (TTAB 2008) (attaching exhibits to brief consisting of material already of record
only adds to the bulk of the file, and requires Board to determine whether attachments had
been properly made of record).
Serial Nos. 85603905; 85604113
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containers. … Fertilizer, in contrast is a chemical product
applied on and around plants to provide nutrients to help
the plants to grow. Accordingly, as goods of Registrant
and Applicant are each restricted and not broad in
description, the goods of Applicant and Registrant cannot
be presumed to encompass all goods of the type described.
(App. Br. p. 6) …
Here, the Examining Attorney fails to provide evidence
that shows that Registrant’s goods are otherwise related
or marketed in the same or similar channels of trade as
Applicant’s. In contrast to Applicant’s goods, Potting soil
is generally sold in small bags … As such, potting soil is
typically used in non-commercial residential settings by
homeowners. Applicant’s goods consist of commercial
agricultural large scale farming fertilizer mixes that are
sold in bulk to farmers for producing row crops. (App. Br.
p. 7).
Applicant sells and applies fertilizer mixes in large bulk
quantities for agricultural farmland purposes such as row
crops in the Salinas Valley in Monterey County, adjacent
Santa Cruz County, and adjacent San Benito County. As
Registrant’s goods of ‘potting soil’ are typically sold in
small bags, it is highly unlikely that Registrant’s goods
would be sold in the channels of trade for bulk
agricultural farmland use. Potting soil is typically sold in
the garden section of home improvement stores or other
stores that supply horticultural goods. Applicant’s goods
are sold pursuant to a contract for application services or
bulk products through its home office in Salinas,
California. (App. Reply Br. p. 8).
First, with regard to the argument that the respective goods are restricted to the
extent that Registrant’s goods do not include fertilizers and Applicant’s goods do not
include potting soil, this argument is misplaced inasmuch as the goods need not be
the same to be found related. Rexel Inc., 223 USPQ 830. Because the identifications
are broadly worded, Applicant’s identification must be deemed to include household
fertilizing preparations and mixed fertilizers, including fertilizers used for potted
Serial Nos. 85603905; 85604113
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plants. Based on the identifications as written, the “agricultural use” distinction
does not exist for these goods. As discussed above, it is the identifications, not
Applicant’s actual use, which frames the scope of our analysis. In re La Peregrina
Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (“…it is the identification of goods that
controls, not what extrinsic evidence may show about the specific nature of the
goods. … An applicant may not restrict the scope of the goods covered in the cited
registration by argument or extrinsic evidence.”). See also In re Thor Tech Inc., 90
USPQ2d 1634, 1637 (TTAB 2009); and TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1402.01(a) (April 2004). Because, for example, a home
gardener can use potting soil to repot a plant, and use fertilizer for that same plant,
the goods, as identified, are complementary. Thus, all argument based on such a
difference is not relevant.
Moreover, the record includes evidence to support a finding that even “fertilizers
for agricultural use” are commercially related to “potting soil.” In support of her
position that potting soil and fertilizers are related, the Examining Attorney
submitted several third-party registrations that cover both fertilizers for
agricultural and/or domestic use and potting soil. See, e.g., Reg. No. 2601854 for the
mark MARVIN’S ORGANIC GARDENS for, inter alia, fertilizers for agricultural
use, fertilizers for domestic use, potting soil; Reg. No. 3766319 for the mark
OPTIGREEN for, inter alia, fertilizers for agricultural use, potting soil; Reg. No.
3744380 for the mark NATURE’S GUIDE for, inter alia, fertilizers and potting soil;
Reg. No. 3200304 for the mark SUNNILAND for, inter alia, fertilizers for
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agricultural use, fertilizers for domestic use, potting soil; and Reg. No. 3246931 for
the mark SUN GRO HORTICULTURE for, inter alia, fertilizers for domestic,
horticultural and agricultural use, potting soil for plants.8 The record also includes
Registrant’s Reg. No. 3876725 for the mark HOME GROWN for, inter alia,
fertilizers for agricultural use, fertilizing preparations, fertilizers for domestic use,
fertilizers for soil and potting soil, mixed fertilizers, and potting soil.9 We further
note that Registrant has a registration for organic fertilizers for agricultural use,
organic fertilizer for soil and potting soil (Reg. No. 3918327 for the mark ORGANIC
MEDICINE GARDENS).10 We find these registrations persuasive evidence that the
goods are of a kind that may emanate from a single source under a single mark. In
re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993).
The relatedness of the goods is further demonstrated through print-outs from
third-party websites offering for sale both fertilizers and potting soil under the same
mark. For example, the websites attached to the August 13, 2013 Office Action,
www.foxfarmfertilizer.com, www.scotts.com, and www.kelloggarden.com, offer both
fertilizers and potting soil. While these appear to be for domestic rather than
specifically agricultural use, as discussed above, based on Applicant’s identification
they are relevant. The record also includes examples of potting soil and fertilizer
both sold in bulk form. For example, www.gardenscape.com offers “full truckloads”

8 Final Office Action (March 14, 2013).
9 Denial of Reconsideration (October 10, 2013).
10 Id.
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of potting soil.11 While it is sold in up to 40 lb bags on a pallet that contains 60-120
bags, rather than loose, this is still relevant to counter Applicant’s argument that
its goods are only sold “in bulk” while potting soil is not. App. Reply Br. p. 6.
The record clearly establishes the close relationship of fertilizers and potting
soil, because of their complementary nature to assist in growing plants, and because
the third-party registrations and third-party websites indicate that these goods may
emanate from the same source under the same mark.
As for the du Pont factor of the channels of trade, the ordinary channel of trade
for household fertilizers and potting soil would include the same nurseries and
garden stores. The third-party website printouts also show the respective goods
sold by the same specialty online store, including in larger quantities.
In view thereof, the du Pont factors relating to the similarity of the goods,
channels of trade and classes of customers weigh in favor of likely confusion.
With regard to the conditions of sale, Applicant argues that the purchasers of its
goods are sophisticated. However, Applicant’s restriction of potential purchasers to
“large sophisticated business owners of large scale commercial agricultural
operations” (App. Br. p. 9) is not supported by the identification, which includes
“fertilizing preparations” and “mixed fertilizers” not limited by “agricultural use.”
Therefore, the potential purchasers include the general public. While purchasers of

11 Applicant’s arguments that this website printout along with a handful of others was not
properly introduced, is misplaced. App. Reply Br. p. 6. The full URL (including the specific
character string) and the date of retrieval are clearly highlighted on each of the pages. We
have not considered the www.garick.com printout as Applicant indicated that upon
investigation it was not able to retrieve that specific webpage. Id.
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these types of goods may exercise a certain amount of care to ensure they are
purchasing what they require, and as such these goods are not impulse items, the
conditions of sale do not rise to the level of obviating likely confusion. Thus, we find
this factor to be neutral.
Applicant also asserts that “although Applicant has been using its mark in
connection with sales of agricultural fertilizer in commerce for over 45 years
(citation omitted), no evidence of actual confusion of purchasers has been shown.”
App. Br. p. 10. We first observe that while a showing of actual confusion would be
highly probative, the lack thereof is not. “The lack of evidence of actual confusion
carries little weight, especially in an ex parte context.” Majestic Distilling Co., Inc.,
65 USPQ2d at 1205 (internal citations omitted) (“uncorroborated statements of no
known instances of actual confusion are of little evidentiary value”). See also In re
Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of applicant’s corporate president’s unawareness of instances
of actual confusion was not conclusive that actual confusion did not exist or that
there was no likelihood of confusion). In any event, the record is devoid of probative
evidence relating to the extent of use of Registrants’ mark and, thus, whether there
have been meaningful opportunities for instances of actual confusion to have
occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). More significantly, Applicant’s description of its
actual use in a very specific trade channel supports the possibility that there have
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not been meaningful opportunities for confusion to occur. Accordingly, the du Pont
factor of the length of time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is considered neutral.
Finally, while we acknowledge that Registrant’s mark is weak, and is, in fact,
registered on the Supplemental Register, even marks on the Supplemental Register
are afforded protection, in particular, where the marks are identical (App. Serial
No. 85604113) or very similar (App. Serial No. 85603905) and the goods are closely
related. In re The Clorox Co., 198 USPQ 337 (CCPA 1978). See also King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
On balance, we find that the relevant du Pont factors in this case weigh in favor
of finding a likelihood of confusion.
Decision: The refusals to register Applicant’s marks are affirmed.