TruServ Corp.v.Advanced Impact Marketing Service, LLC

Trademark Trial and Appeal Board

Feb 4, 2005

No. 91124078 (T.T.A.B. Feb. 4, 2005)

Oral Hearing held: Decision mailed:
November 16, 2004 February 4, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

TruServ Corp.
v.
Advanced Impact Marketing Service, LLC
_____

Opposition No. 91124078 to application Serial No. 75886506
filed on January 5, 2000
_____

Christopher J. Schulte and Kristine M. Boylan of Meagher & Geer,
P.L.L.P. for TruServ Corp.

Ernest D. Buff of Ernest D. Buff & Associates, L.L.C. for
Advanced Impact Marketing Service, LLC.
______

Before Hohein, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Advanced Impact Marketing Service, LLC has filed an
application to register the mark "GREEN THUMB CLUB" for services
identified as: "providing on-line chat rooms for transmission of
messages among computer users concerning gardening" in
International Class 38 and "gardening club; providing gardening
information via an on-line electronic communications network" in
International Class 42.1

1 Ser. No. 75886506, filed on January 5, 2000, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
word "CLUB" is disclaimed.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91124078
2
TruServ Corp. has opposed registration on the grounds
that it "is and has been in the business of offering numerous
gardening goods under the mark GREEN THUMB [since] as early as
1949"; that the mark "is used on over 100 gardening goods such as
hoses, pruning saws, pruning shears, tank sprayers, sprinklers,
ant traps, hedge shears, hand trowels, hand cultivators,
broadcast spreaders, insecticide and hose parts"; that, in
particular, opposer is the owner of "five registrations on the
Principal Register for the mark GREEN THUMB" for, inter alia:
(i) "hand operated tools, namely,
cultivators, vegetation cutters, tool
handles, manure and fertilizer drags, stone
drags, lawn and turf edgers, forks, hoes,
rakes, lawn brooms and combs, hooks, pokers,
shovels, spades, seedling setters, scoops,
scrapers, blade-type sidewalk cleaners, sod
lifters, trowels, weeders, grass whips, and
grass hooks" in International Class 8;2

(ii) "liquid wax-like preparation for
application to plant foliage as resistant to
the effect of dust condensation thereon and
contributive to improving general foliage
color and appearance and ... soil testing
reagents to determine soil acidity and
presence of nitrogen, phosphorus, and potash
elements in soil samples" in International
Class 6;3

(iii) "trellises for supporting plants
and vines; [and] kits for growing plants,
consisting of pots, seeds, fertilizer,

2 Reg. No. 581,301, issued on October 20, 1953, which sets forth a date
of first use anywhere and in commerce of April 29, 1949; third
renewal.

3 Reg. No. 590,405, issued on June 1, 1954, which sets forth a date of
first use anywhere and in commerce of August 12, 1952; expired after
second renewal.

Opposition No. 91124078
3
potting soil, [and] instruction book" in
International Class 20;4

(iv) "lawn sprinklers" in International
Class 6;5 and

(v) "nursery products--namely, all types
of shrubs, trees, plants, blooming plants and
berry plants, and products of the nursery--
namely, cut flowers, seeds and bulbs;
charcoal; cork; mosses for decorative
effects, for plant packaging and preserving,
for mixing with soils, and for soil
dressings; [and] soil and mixtures of soils
for general and special plant propagating and
growing" in International Class 31;6

that such mark "has long been used in connection with the goods
on which it appears, has long been the subject of substantial
advertising and promotion, has been used and advertised
throughout the United States, is widely recognized by consumers,

4 Reg. No. 608,452, issued on July 5, 1955, which sets forth a date of
first use anywhere and in commerce of October 24, 1951; second
renewal.

5 Reg. No. 792,083, issued on July 6, 1965, which is actually for the
mark "GREEN THUMB" and design, as reproduced below,

and sets forth a date of first use anywhere and in commerce of
September 28, 1964; first renewal.

6 Reg. No. 587,562, issued on March 30, 1954, which sets forth a date
of first use anywhere and in commerce of May 3, 1943; expired after
second renewal. Although, instead of such registration, opposer
actually pleaded ownership of "federal trademark registration 1457989
which was granted on September 22, 1987 for metal hose couplings, hose
washers, metal cap nuts, metal quick-connectors, two-way y-connectors,
goose neck swivel connectors, metal hose nipples; grass seed; garden
hose; hose nozzles and garden sprinklers; hand-powered compressed air
sprayers, grass shears, pruning shears, hedge shears, tree pruners and
saws," no proof of its ownership thereof was offered at trial. In
view thereof, and inasmuch as proof of opposer's ownership of Reg. No.
587,562 was made of record at trial, the pleadings are hereby deemed
to be amended to conform to such evidence. Fed. R. Civ. P. 15(b).

Opposition No. 91124078
4
is in substantially exclusive use, and is federally registered so
as to make the mark distinctive and famous"; that because
applicant's "mark GREEN THUMB CLUB is confusingly similar to
Opposer's mark GREEN THUMB, ... its ... use by Applicant in
connection with its services is likely to cause confusion,
deception and mistake"; and that applicant's use of its mark
"will dilute the distinctiveness of Opposer's mark."
Applicant, in its answer, has denied the salient
allegations of the opposition.7
The record consists of the pleadings; the file of the
opposed application; and, as opposer's case-in-chief, the
stipulated testimony, with exhibits, of its associate general
counsel, Susan M. Radde, taken on the closing date (October 14,
2002) of its initial testimony period. No evidence, however, was
introduced by applicant in its behalf at trial and opposer, in
view thereof, submitted no evidence in rebuttal. Briefs have

7 While applicant has also pleaded, as a putative affirmative defense,
that "Opposer's mark is descriptive and therefore entitled to a very
narrow scope of protection," such defense constitutes a collateral
attack on the validity of opposer's pleaded registrations. As such,
it is a compulsory counterclaim and will not be heard unless a
counterclaim or separate petition has been filed which seeks the
cancellation of such registrations on the ground of descriptiveness.
See Trademark Rules 2.106(b)(2)(i) and (ii). In view thereof, and
since applicant has neither filed a counterclaim nor a separate
petition to cancel opposer's pleaded registrations, no further
consideration will be given to applicant's putative affirmative
defense of descriptiveness. See TBMP §313.01 (2d ed. rev. 2004) ["The
Board cannot entertain an attack upon the validity of a registration
pleaded by a plaintiff unless the defendant timely files a
counterclaim or a separate petition to cancel the registration"].

Opposition No. 91124078
5
been filed8 and an oral hearing, attended by counsel for each of
the parties, was held.
Turning first to the ground of priority of use and
likelihood of confusion, priority of use is not in issue in this
proceeding with respect to opposer's "GREEN THUMB" marks for the
goods which have been specifically set forth above and which are
the subjects of its three subsisting pleaded registrations since
the evidence of record establishes that those registrations

8 Applicant's agreed motion for an extension of time to file a brief is
granted. In view thereof, both its initial and revised briefs are
timely filed, with the latter differing from the former in that
certain of the confidential documents attached thereto were submitted
under seal. It is noted, however, that in each of its briefs,
applicant asserts in its description of the record that, in addition
to the "Declaration of Susan M. Raddle [sic] dated October 14, 2002
attaching 21 exhibits," the "evidence of record consists of"
applicant's "Response to Opposer's First Set of Interrogatories dated
April 23, 2002" and eight confidential documents allegedly received
from opposer in response to applicant's request for production of
documents. Opposer, in its reply brief, has objected to consideration
of the additional evidence and, contemporaneously therewith, has filed
a motion to strike such evidence, contending that it is "not properly
of record in this matter" because applicant "failed to file any
evidence during the trial phase of this opposition. Although
applicant, in a timely response, argues that "[t]he documents that are
the subject of Opposer's MOTION TO STRIKE should be considered by the
Board because these documents are admissions against interest and
because they contradict statements made in Opposer's Brief," opposer
is correct that the additional evidence should not be considered as
part of the record herein because it was not properly introduced by
applicant during its testimony period. Accordingly, the additional
evidence is hereby stricken and will not be given any further
consideration. See TBMP §539 (2d ed. rev. 2004), which provides in
pertinent part that: "Evidentiary material attached to a brief on the
case can be given no consideration unless it was properly made of
record during the testimony period of the offering party." Moreover,
because, in view thereof, each of applicant's initial and revised
briefs contains numerous factual allegations which have no evidentiary
support in the record for this proceeding, such allegations have been
given no consideration. See TBMP §801.01 (2d ed. rev. 2004), which
states in relevant part that "the facts and arguments presented in the
brief must be based on the evidence offered at trial"; and TBMP
§704.06(b) (2d ed. rev. 2004), which sets forth in pertinent part
that: "Factual statements made in a party's brief on the case can be
given no consideration unless they are supported by evidence properly
introduced at trial."

Opposition No. 91124078
6
(namely, Reg. Nos. 581,301; 608,452; and 792,083)9 are currently
in full force and effect and are owned by opposer. See King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974). In addition, the record establishes that
by October 20, 1983, opposer completed the acquisition by
assignment from Millburn Peat Company, Inc. of all right, title
and interest to the mark "GREEN THUMB" for fertilizer for lawn or
garden soil nutrient use. Opposer thus has priority of use with
respect thereto inasmuch as the earliest date upon which
applicant can rely in this proceeding, since applicant did not
take any testimony or otherwise present any evidence in its
behalf, is the January 5, 2000 filing date of its involved
application for its "GREEN THUMB CLUB" mark. See, e.g., Lone
Star Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ
368, 369 (CCPA 1974); Columbia Steel Tank Co. v. Union Tank &
Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960); Zirco
Corp. v. American Tel. & Tel. Co., 21 USPQ2d 1542, 1544 (TTAB
1991); and Miss Universe, Inc. v. Drost, 189 USPQ 212, 213 (TTAB
1975). The focus of our determination therefore is on the issue
of whether applicant's "GREEN THUMB CLUB" mark, when used in
connection with the services recited in its applications, so
resembles opposer's "GREEN THUMB" marks for the goods set forth
above in its pleaded and subsisting registrations as to be likely
to cause confusion, mistake or deception as to source or
sponsorship.

9 See footnotes 2, 4 and 5, respectively.

Opposition No. 91124078
7
The record reveals among other things that opposer,
which in the late 1970s or early 1980s was known as Cotter & Co.,
"is an international manufacturer and wholesale distributor for a
cooperative of approximately 6,000 retail stores." (Radde dec.
at ¶3.) Opposer uses its "GREEN THUMB" marks "as a source
identifier for gardening and lawn care products sold through its
member True Value stores." (Id.) Opposer "sells its GREEN THUMB
products in both the member stores as well as over the Internet,"
with the latter, depending on the season, "offer[ing] hundreds of
GREEN THUMB products" through opposer's "primary Internet sales
portal www.truevalue.com." (Id. at ¶8.) Opposer "also offers an
'Ask the Expert' service on the truevalue.com site which allows
customers to ask gardening questions of a National Gardening
Association representative." (Id. at ¶9.)
Opposer, as shown by certain of the exhibits it
submitted, uses its "GREEN THUMB" mark on product labels and in
product information, brochures and advertising. Its overall
advertising expenditures, which in recent years have been over
$50 million annually, have included "television and radio
advertisements which include GREEN THUMB products," with
expenditures in 2002 of "approximately $2,800,000.00 on
television air time and $758,000.00 on radio air time promoting
products bearing the mark." (Id. at ¶13.) Opposer "also
advertises its GREEN THUMB products through an internally-
produced circular program" which includes the mailing of such
circulars "to markets in which [retail] members request
coverage." (Id. at ¶14.) The results of such advertising
Opposition No. 91124078
8
expenditures, according to Ms. Radde, have been "massive sales of
products bearing the mark through ... over 6,000 member stores,"
with retail sales for the period between June 1999 and June 2002
of "20,013,920 units bearing the mark which [in turn] accounted
for $156,207,835.40 in total revenue." (Id. at ¶15.)
Neither applicant nor opposer, as previously noted,
properly introduced any evidence into the record concerning
applicant, its "GREEN THUMB CLUB" mark, or any of the services in
connection with which applicant seeks registration of such mark.
Our determination of the issue of likelihood of confusion,
therefore, is based on an analysis of the limited facts properly
offered into evidence by opposer and which are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). See, e.g., Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed.
Cir. 2000). However, as indicated in Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the du Pont factors of the similarity or
dissimilarity of the goods and services at issue and the
similarity or dissimilarity of the respective marks.10
Turning first to consideration of the marks at issue,
we find that when considered in their entireties, applicant's
"GREEN THUMB CLUB" mark is substantially identical to opposer's

10 The court, in particular, pointed out that: "The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [and services] and
differences in the marks."
Opposition No. 91124078
9
"GREEN THUMB" marks in sound, appearance, connotation and
commercial impression due to the shared presence of the term
"GREEN THUMB." In particular, we concur with opposer that, as
properly pointed out in its main brief, the dominant and
distinguishing portion of applicant's "GREEN THUMB CLUB" mark
consists of the term "GREEN THUMB," given the descriptiveness of
the word "CLUB" (as evidenced by applicant's disclaimer thereof)
in connection with applicant's gardening club services and its
related services of providing on-line gardening information as
well as chat rooms for transmission of messages concerning
gardening. See, e.g., In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); and In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
Applicant maintains, however, that the respective marks
are not confusingly similar. In essence, applicant argues that
because "[t]he dictionary meaning for the term green thumb is an
enhanced ability to grow plants," opposer's "GREEN THUMB" marks
are not only highly suggestive of its lawn and gardening
products, and thus are limited to a narrow scope of protection,
but such marks, when used in connection with opposer's goods,
"convey substantially dissimilar connotations" from applicant's
"GREEN THUMB CLUB" mark, when such mark is used in connection
with the services which it intends to render. While it is
generally the case that, where the marks at issue are not
identical, the fact that they are suggestive may lessen the

Opposition No. 91124078
10
likelihood of confusion, it is also the case that, where the
respective marks are the same or, as in this proceeding,
substantially identical, the suggestiveness of the marks has far
less significance. See, e.g., Eastern Industries, Inc. v.
Waterous Co., 289 F.2d 952, 129 USPQ 422, 424 (CCPA 1961). Here,
the respective marks not only identically convey the suggestion
that opposer's products and applicant's services offer customers
thereof an enhanced ability to grow plants, but given that the
marks overall are also, as noted above, substantially identical
both visually and phonetically, their commercial impression is
substantially the same. Thus, if used in connection with the
same or related goods and services, confusion as to the source or
sponsorship thereof would be likely to occur.
As to the respective goods and services, opposer
contends in its main brief that use by applicant of the mark
"GREEN THUMB CLUB" in connection with applicant's services of
variously providing on-line chat rooms for transmission of
messages among computer users concerning gardening, a gardening
club and gardening information via an on-line electronic
communications network "will cause significant confusion as to
affiliation and sponsorship" with opposer's use of its "GREEN
THUMB" marks for its lawn and gardening products because:
Opposer's consumers, conditioned by millions
of dollars of advertising to associate
gardening goods ... with Opposer, may very
well consider Applicant's web site offering
[to be] connected to Opposer. Consumers know
that they can obtain Opposer's GREEN THUMB
products over the Internet and while doing so
obtain gardening information. If such
consumers find Applicant's web site through a
Opposition No. 91124078
11
web search engine, they will likely think
that they have found a strategic partner of
Opposer. This element therefore weighs in
Opposer's favor.

Applicant, on the other hand, asserts that:
Opposer's "Ask the Expert" service is run by
an independent association, The National
Gardening Association (NGA). The service is
not even directly run by Opposer. A user can
access the "Ask the Expert" service without
ever seeing the GREEN THUMB trademark. The
only way a user might come across the GREEN
THUMB trademark is if the NGA expert promotes
one of the GREEN THUMB gardening tools in an
answer. A user coming across Applicant's
GREEN THUMB CLUB web site would likely think
that the site involves gardening but it is
unlikely that the user would think that the
site has anything to do with the [Opposer,]
TruServ Corporation.

We agree with opposer, however, that its goods and
applicant's services are so closely related as to be likely, when
offered under the marks at issue, to cause confusion as to source
or sponsorship thereof. The evidence reveals in particular that
opposer, in its advertising and sale on the Internet of various
seasonal lawn and gardening products marketed under its "GREEN
THUMB" mark, also provides an avenue whereby actual and
prospective customers can request gardening advice. While such
advice has not been offered under opposer's "GREEN THUMB" marks,
the evidence nevertheless is significant inasmuch as it shows
that consumers interested in purchasing lawn and gardening
products could reasonably expect to encounter, as an adjunct
thereto, a web-based information service devoted to chatting
about and providing gardening advice. Such discussions and
advice, as applicant acknowledges, could plainly include the
Opposition No. 91124078
12
recommendation of a specific brand or brands of lawn and
gardening products. Consequently, in the case of opposer's
"GREEN THUMB" lawn and gardening products, consumers familiar or
acquainted therewith could reasonably believe, upon encountering
applicant's "GREEN THUMB CLUB" gardening club services and its
services of providing, under such mark, both on-line chat rooms
for transmission of messages among computer users concerning
gardening as well as gardening information by way of an on-line
electronic communications network, that such closely related
goods and services have a common origin or are sponsored by or
affiliated with the same source.
Among other things, opposer also insists in its main
brief that "fame has attached to Opposer's mark[s]," as evidenced
by its most recent advertising and promotional expenditures and
product sales, and that "[t]his element weighs in Opposer's
favor." While we concur with applicant, however, that the
evidence presented by opposer is insufficient to establish that
"GREEN THUMB" is indeed a famous mark for opposer's lawn and
gardening products,11 it is nonetheless the case that opposer has
shown that such mark has acquired a not insubstantial measure of
consumer recognition or strength and that it therefore cannot be
considered as "not distinctive," as urged by applicant. Instead,
and since there is no evidence that any third party currently is

11 We observe, for instance, that the specifics of opposer's sales
figures and its advertising and promotional expenditures cover a
period of less than four years and there is no evidence as to the size
of the market for lawn and gardening products and opposer's share
thereof. Moreover, many of the samples of advertising introduced by
Opposition No. 91124078
13
using a mark which consists of or contains the term "GREEN THUMB"
in connection with lawn and/or gardening products, opposer's
evidence of consumer recognition of its "GREEN THUMB" mark
bolsters our conclusion that contemporaneous use of the marks at
issue in connection with the respective goods and services of the
parties is likely to cause confusion.
In view of our holding that opposer is entitled to the
relief it seeks on the ground of priority of use and likelihood
of confusion, we need not reach the remaining ground of dilution.
Cf. American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d
2036, 2039 (TTAB 1989), aff'd in op. not for pub., American
Mobilphone Inc. v. American Paging Inc., 17 USPQ2d 1726, 1727
(Fed. Cir. 1990).
Decision: The opposition is sustained on the ground of
priority of use and likelihood of confusion.

opposer appear to be directed to the trade, that is, its retail
members, rather than to the ultimate consumers of its goods.