UltraGreen, LLCv.Ultragreen, LLC

Trademark Trial and Appeal Board

Jan 5, 2021

91246225 (T.T.A.B. Jan. 5, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
UltraGreen, LLC
v.
Ultragreen, LLC
_______
Opposition No. 91246225
_______
Kevin Lemley of Kevin Lemley Law Partners for UltraGreen, LLC.
Tom Woodward (pro se) for Ultragreen, LLC.
_______
Before Bergsman, Shaw, and English, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Ultragreen, LLC (“Applicant”) seeks registration on the Principal Register of the
mark ULTRAGREEN, in standard characters, for services identified as:
Irrigation devices installation and repair, excavation
services, snow and ice removal services, and other outdoor
remodeling services for both commercial and residential
facilities, namely, remodeling of ponds, pools, retaining
walls, and patios, in International Class 37; and
Landscape services, namely grading, seeding, sod
installation, hydroseeding services, mulching, and lawn
Opposition No. 91246225
2
care and maintenance including mowing, fertilizing and
pesticide application, in International Class 44.1
UltraGreen, LLC (“Opposer”) opposes registration of Applicant’s mark on the
ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Opposer alleges prior use of the mark ULTRAGREEN and ownership of an
application to register the mark , for services identified as:
Installation and maintenance of irrigation systems, in
International Class 37; and
Landscape design; Landscape gardening; Lawn care; Lawn
mowing services; Horticultural processes and turf or lawn
care services, namely, providing preparation and
development of turfgrass and/or soil for providing an
environment that encourages improved growth attributes,
in International Class 44.2
Applicant denied Opposer’s priority of use allegation; but admitted that: (1)
“records of the United States Patent and Trademark Office indicate that Opposer is
the owner of a U.S. trademark application assigned Serial No. 87/916392”;3 and (2)
“Applicant’s services are substantially similar to Opposer’s services and the use of

1 Application Serial No. 87811543, filed on February 26, 2018 based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Application Serial No. 87916392, filed on May 10, 2018 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere of January 28, 2012 and a date
of first use in commerce of March, 29, 2013. Opposer’s application matured to registration
after dismissal of the previously consolidated parent proceeding, discussed below. See 9
TTABVUE. Registration No. 6182470 issued on October 27, 2020, after Opposer filed its brief.
3 Notice of Opposition ¶ 10, 1 TTABVUE 4; Answer ¶ 10, 4 TTABVUE 4.
Opposition No. 91246225
3
both marks is likely to cause consumer confusion, as admitted by both parties.”4 The
case has been briefed by Opposer. Applicant did not submit a brief.
I. Procedural History
On January 16, 2019, before the commencement of this proceeding, Applicant filed
Opposition No. 91245888 against Opposer’s application, Serial No. 87916392. We
consolidated the proceedings on April 15, 2019, with this proceeding designated as
the child proceeding, as the parties were the same, albeit in opposite positions, and
the claims were substantially similar.5 Applicant did not file a brief (or evidence) in
Opposition No. 91245888. Therefore, on September 3, 2020, the Board issued an order
allowing Applicant thirty days to show cause as to why Applicant’s failure to file a
brief should not be treated as a concession of the case and judgment enter against
Applicant. Applicant did not file a response. Accordingly, on September 17, 2020,
after Opposer filed its brief in this case, the Board dismissed Opposition No.
91245888, with prejudice under Trademark Rule 2.128(a)(3), 37 C.F.R. § 2.128(a)(3).6
Because we did not dismiss Opposition No. 91245888 until after Opposer filed its brief
in this proceeding, we consider the entire consolidated record in reaching our
decision.

4 Notice of Opposition ¶ 16, 1 TTABVUE 5; Answer ¶ 16, 4 TTABVUE 4.
5 6 TTABVUE.
6 7 and 9 TTABVUE.
Opposition No. 91246225
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II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application, and by virtue of the
consolidated proceedings, the file of Opposer’s application, Serial No. 87916392.7
Additionally, Opposer submitted the following evidence:
1. Opposer’s Notices of Reliance on Government documents and
Internet printouts.8
2. Testimony Declaration of Caleb Ault, Opposer’s President, and
exhibits.9

As noted above, Opposer’s application is of record by virtue of Trademark Rule
2.122(b) as the subject of Opposition No. 91245888. Applicant’s registration, which
issued after Opposer filed its brief, is not of record. See UMG Recordings, Inc. v.
O’Rourke, 92 USPQ2d 1042 (TTAB 2009) (registration issued from pleaded
application after applicant’s trial brief had been filed was not of record even though
a copy of application was of record).
III. Entitlement to Statutory Cause of Action10
Even though Applicant does not contest it, Opposer’s entitlement to a statutory
cause of action, formerly referred to as “standing,” is a threshold issue in every inter

7 See Board’s Order granting Applicant’s motion to consolidate, 6 TTABVUE.
8 12-13 TTABVUE.
9 14 TTABVUE.
10 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain equally applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc.,
2020 USPQ2d 11388, at *2 (TTAB 2020).
Opposition No. 91246225
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partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party
in the position of plaintiff may oppose registration of a mark when such opposition is
within its zone of interests and the plaintiff has a reasonable belief in damage that is
proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978
F.3d 1298, 2020 USPQ2d 11277, at * 6-7 (Fed. Cir. Oct. 27, 2020) (holding that the
test in Lexmark is met by demonstrating a real interest in opposing or cancelling a
registration of a mark, which satisfies the zone-of-interests requirement, and
demonstrating a reasonable belief in damage by the registration of a mark, which
demonstrates damage proximately caused by registration of the mark).
Opposer, as owner of the pleaded application for the stylized mark
ULTRAGREEN for the identified services, formerly the subject of an opposition filed
by Applicant, has established that its opposition to Applicant’s registration is within
Opposer’s zone of interest and Opposer has a reasonable belief in damage proximately
cause by the registration of Applicant’s mark. Therefore, Opposer has proven its
entitlement to a statutory cause of action. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
IV. Priority
To prevail on the ground of likelihood of confusion under Section 2(d) of the
Trademark Act, Opposer must prove both priority and likelihood of confusion by a
preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. A party may
Opposition No. 91246225
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establish its own prior proprietary rights in a trademark through ownership of a
registration, through actual use, or through use analogous to trademark use. T.A.B.
Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating
Pactel Teletrac v. T.A.B. Sys., 32 USPQ2d 1668 (TTAB 1994). Here, because Opposer
has not pleaded or submitted any registrations, it may rely on its asserted common
law rights, which must precede Applicant’s actual or constructive use of its mark.
WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d
1034, 1040-41 (TTAB 2018). In addition, Opposer may rely on the filing date of its
pleaded application as its constructive first use date. See Larami Corp. v. Talk To
Me Programs Inc., 36 USPQ2d 1840, 1845 n.7 (TTAB 1995) (“An opposer may rely
on Section 7(c) to establish priority if it owns a registration for the mark it is
asserting under Section 2(d) or if it has filed an application for registration of that
mark. We might put the matter more simply by saying that in proceedings before
the Board the constructive use provisions of Section 7(c) may be used both
defensively and offensively.”). See also Aktieselskabet af 21. November 2001 v. Fame
Jeans, Inc., 77 USPQ2d 1861, 1864 (TTAB 2006) (“[W]e find no genuine issue that
the earliest date upon which opposer is entitled to rely for purposes of priority in
this opposition proceeding is the December 6, 2004 filing date of its asserted Section
44(e) application.”); Zirco Corp. v. Am. Tel. & Tel. Co., 21 USPQ2d 1542, 1543 (TTAB
1991) (“Section 7(c) was added to the Lanham Act … in order to provide constructive
use, dating from the filing date of an application for registration on the principal
register, for a mark registered on that register.”).
Opposition No. 91246225
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Applicant’s priority date is the February 26, 2018 filing date of its intent to use
application, which is before the May 10, 2018 filing date of Opposer’s application.
See Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c) (“Contingent on the
registration of a mark on the principal register provided by this chapter, the filing
of the application to register such mark shall constitute constructive use of the
mark, conferring a right of priority nationwide in effect, on or in connection with
goods or services specified in the registration, against any other prior except for a
person whose mark has not been abandoned and who, prior to such filing – (1) has
used the mark.”). Because its registration is not of record, Opposer cannot prove
priority of use based on its application’s filing date and must rely on common law
rights.
Caleb Ault, Opposer’s President, testified, “[s]ince at least March 29, 2013,
[Opposer] has extensively used, advertised and promoted the ULTRAGREEN mark
in interstate commerce.”11 We may rely on oral testimony that is clear and
convincing to prove priority. See Bass Pro Trademarks, L.L.C. v. Sportsman’s
Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008); Nat’l Blank Book Co. v.
Leather Crafted Prods., Inc., 218 USPQ 827, 828 (TTAB 1993) (oral testimony may
be sufficient to prove the first use of a party’s mark when it is based on personal
knowledge, it is clear and convincing, and it has not been contradicted); Liqwacon
Corp. v. Browning-Ferris Indus., Inc., 203 USPQ2d 305, 316 (TTAB 1979) (oral
testimony may be sufficient to establish both prior use and continuous use when the

11 Ault Aff. ¶4, 14 TTABVUE 3.
Opposition No. 91246225
8
testimony is proffered by a witness with knowledge of the facts and the testimony
is clear, convincing, consistent, and sufficiently circumstantial to convince the
Board of its probative value); GAF Corp. v. Anatox Analytical Servs., Inc., 192 USPQ
576, 577 (TTAB 1976) (oral testimony may establish prior use when the testimony
is clear, consistent, convincing, and uncontradicted). Moreover, the invoices
attached to Ault’s testimony affidavit show that Applicant renders lawn care
services.12 Opposer’s March 29, 2013 first use date precedes Applicant’s February
26, 2018 filing date. Therefore, Opposer has proven it has priority in the
ULTRAGREEN mark for lawn care services.
Opposer’s testimony and evidence, however, do not show that Opposer is
rendering “installation and maintenance of irrigation systems.” That is, there is no
mention of irrigation systems anywhere in Opposer’s testimony, invoices, or
website.13 Although Applicant admits that its “services are substantially similar to
Opposer’s services,”14 Applicant has not admitted to Opposer’s priority as to
“installation and maintenance of irrigation systems.”
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all the probative
facts in evidence relevant to the factors set forth in In re E. I. du Pont de Nemours &

12 Ex. A to Ault Aff., 14 TTABVUE 6-8.
13 “Specimens in the file of an application for registration, or in the file of a registration, are
not evidence on behalf of the applicant or registrant unless identified and introduced in
evidence as exhibits during the period for the taking of testimony.” Trademark Rule
2.122(b)(2), 37 C.F.R. § 2.122(b)(2).
14 Notice of Opposition ¶ 16 1 TTABVUE 4; Answer ¶ 16, 4 TTABVUE 3.
Opposition No. 91246225
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Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“DuPont”). See also 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 goods
or services and the similarities between the marks. 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 consider each DuPont
factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
1. The similarity or dissimilarity of the services, trade channels, and
purchasers
We first consider the DuPont factors regarding the similarity or dissimilarity of
the parties’ respective services, their channels of trade, and purchasers. It is not
necessary that the services be identical or competitive, or even that they move in the
same channels of trade, to support a finding of likelihood of confusion. Rather, it is
sufficient that they are related in some manner, or that the circumstances
surrounding their marketing are such that they would or could be encountered by the
same persons in situations that would give rise, because of the similarity of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the services. Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In
re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Opposition No. 91246225
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Opposer’s testimony and evidence show use of the ULTRAGREEN mark in
connection with lawn care services.15 Applicant’s applied-for services include
“Landscape services, namely . . . lawn care and maintenance including mowing,
fertilizing and pesticide application” services. The parties’ services in class 44 are
thus, in part, legally identical inasmuch as both identify lawn care services. It is
sufficient for a finding of likelihood of confusion if relatedness is established for any
item encompassed by the identification of goods or services within a particular class
in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981). Opposer’s testimony and evidence, however, do not
show any relation between its lawn care services and any of Applicant’s services in
International Class 37.
Regarding trade channels and classes of purchasers, Applicant’s identification of
services contains no restrictions or limitations. Thus, we must presume that the
services are offered in all normal trade channels and to all normal classes of
purchasers for such services. See Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Accordingly, regarding
lawn care services, we consider Opposer’s and Applicant’s trade channels and classes
of purchasers to be the same. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d
1797, 1801 (Fed. Cir. 2018) (“With respect to similarity of the established trade
channels through which the goods reach customers, the TTAB properly followed our
case law and ‘presume[d] that the identical goods move in the same channels of trade

15 Ault Testimony Aff. Exhibit A (14 TTABVUE 6-8).
Opposition No. 91246225
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and are available to the same classes of customers for such goods. . . .’”) (citing In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Regarding
Applicant’s services in Class 37, Opposer’s testimony and evidence do not show any
relation between its lawn care trade channels and classes of purchasers and
Applicant’s services.
2. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
Next, we consider the DuPont factor relating to the similarity of the marks. In
comparing the marks we must consider their appearance, sound, connotation and
commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity
as to any one of these factors may be sufficient to support a finding that the marks
are confusingly similar. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ
523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or
sound alone is likely to cause confusion.”); In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018) (“Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.”) (quoting In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)).
The testimony of Mr. Ault simply refers to Opposer’s use of “the ULTRAGREEN
mark” but it is unclear whether the Opposer is claiming rights in the term
ULTRAGREEN regardless of stylization, or the stylized version claimed in Opposer’s
Opposition No. 91246225
12
application.16 Because the testimony makes no mention of the stylization, we find the
Opposer’s mark is not limited to any particular stylization or color and is the
equivalent of ULTRAGREEN in standard characters. This makes the marks
identical.
We find that the DuPont factor regarding the similarity of the marks weighs in
favor of a finding that confusion is likely.
3. Conclusion
After considering all of the relevant DuPont factors, we find that the services of
the parties in International Class 44 are in part identical, the trade channels and
classes of purchasers are the same, and the marks are identical. We find Opposer’s
testimony and evidence do not establish the similarity of Opposer’s and Applicant’s
services in International Class 37, their trade channels, or classes of purchasers.
VI. Decision
For the foregoing reasons, we find that Applicant’s mark, as used in connection
with the services identified in International Class 44, so resembles Opposer’s mark
and lawn care services as to be likely to cause confusion or mistake, or to deceive
under Section 2(d) of the Trademark Act. We find further that Applicant’s mark, as
used in connection with the services identified in International Class 37, is not likely
to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act.
Decision: The opposition is sustained as to class 44, and registration is refused
as to this class.

16 Ault Testimony Aff. ¶ 3-6, 10-11, 14 TTABVUE 3.
Opposition No. 91246225
13
The opposition is dismissed as to class 37, and the application will proceed as to
this class only.