Marco Industries, Inc.v.Mark White

Trademark Trial and Appeal Board

May 6, 2019

92065963 (T.T.A.B. May. 6, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Marco Industries, Inc.

v.

Mark White
_____

Cancellation No. 92065963
_____

Christopher J. Day of Day Law Firm for Marco Industries, Inc.

Amy J. Everhart of Everhart Law Firm PLC for Mark White.
_____

Before Wellington, Heasley, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Mark White (“Respondent”) owns Registration No. 4880452 on the Principal
Register of the mark VITABUD GROW in standard characters for “fertilizers,” in
International Class 1.1 Marco Industries, Inc. (“Petitioner”) seeks cancellation of the

1 Respondent’s registration issued on January 5, 2016 from an application filed on May 8,
2015. Respondent has disclaimed the exclusive right to use GROW apart from the mark as
shown. The mark is shown in the registration as Vitabud Grow, but because the mark is a
standard character mark, we will depict it in this opinion as VITABUD GROW. See In re
Calphalon Corp., 122 USPQ2d 1153, 1154 n.1 (TTAB 2017).
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registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that the mark so resembles Petitioner’s claimed common law mark VITA
GROW for plant foods as to be likely, when used in connection with the goods
identified in the registration, to cause confusion, to cause mistake, or to deceive.2
Petitioner and Respondent have filed briefs. We grant the petition to cancel.
I. Evidentiary Record
The record consists of the pleadings,3 the file history of Respondent’s registration,
by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following
evidence made of record by the parties:
A. Petitioner’s Evidence
Petitioner filed a Notice of Reliance on (1) pages from the Trademark Search &
Document Retrieval (“TSDR”) database of the United States Patent and Trademark
Office (“PTO”) regarding Petitioner’s suspended Application Serial No. 87202707 to

2 Petitioner’s Petition to Cancel also contains a claim for relief on the ground that the
registration is void because “Registrant’s VITABUD GROW mark is not in lawful use in
commerce because the goods are primarily intended or designated for use in the producing of
[marijuana,] a controlled substance which is unlawful under the Controlled Substances Act.”
1 TTABVUE 5 (Pet. to Cancel ¶¶ 14-16). Petitioner did not pursue that claim in its brief,
however, and it has thus been waived. Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1906
n.2 (TTAB 2005).
3 Respondent’s Answer to the Petition to Cancel denies the material allegation of the Petition
and avers that “Petitioner’s claims are barred by the doctrines of laches, acquiescence,
waiver, estoppel, and unclean hands.” 5 TTABVUE 4 (Ans. to Petition to Cancel Fifth
Additional Defense). As discussed below, Respondent made of record pages from third-party
websites that Respondent claims show use of Petitioner’s VITA GROW goods to fertilize
marijuana plants, claiming that these pages were relevant to his unclean hands defense. 12
TTABVUE 3, 34-56. Respondent listed these pages in his summary of the record in his brief,
15 TTABVUE 7, but did not otherwise pursue his unclean hands defense, or his other
equitable defenses, and they have thus been waived. Harry Winston, Inc. v. Bruce Winston
Gem Corp., 111 USPQ2d 1419, 1422 (TTAB 2014).
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register VITA GROW in standard characters for “horticultural products, namely,
plant food, plant hormones in the nature of a rooting compound to stimulate root
production, preparations for fortifying plants in the nature of plant sprays to prevent
wilting in plants; and chemical soil conditioners in the nature of pH adjusters,” in
International Class 1, 7 TTABVUE 5-7, an office action issued during prosecution of
the application in which Respondent’s registration is cited as a bar to registration
under Section 2(d), id. at 8-14, and a notice of suspension of further examination of
the application, id. at 24-27; (2) definitions of “plant food” from the MERRIAM-
WEBSTER DICTIONARY (merriam-webster.com), id. at 15-21, “fertilizer” from THE
AMERICAN HERITAGE DICTIONARY (ahdictionary.com), id. at 22-23, and the MERRIAM-
WEBSTER DICTIONARY, id. at 28, and “bud” from the MERRIAM-WEBSTER DICTIONARY
(merriam-webster.com), id. at 52-59; (3) pages from the website at vitagrow.com, id.
at 29-32, and pages from that website and the website at americanag.com archived
on archive.org, id. at 33-35; and (4) a Wikipedia entry regarding fertilizer. Id. at 36-
52.4
B. Respondent’s Evidence
Respondent filed his testimony declaration, 13 TTABVUE 4-6,5 and a Notice of
Reliance on (1) webpages showing the use of third-party marks containing the words

4 Petitioner also filed a testimony declaration, with exhibits, of Gordon Redman, its Vice
President. 6 TTABVUE 4-58. Respondent moved to strike the declaration on the ground that
Petitioner did not disclose Mr. Redman in pretrial disclosures. 9 TTABVUE 2. When
Petitioner did not respond to the motion, the Board granted it as conceded, and struck the
declaration and the attached exhibits from the record. 11 TTABVUE 1. We have given them
no consideration in our decision.
5 Respondent’s declaration is addressed primarily to Petitioner’s waived unlawful use claim,
but we have considered the declaration for whatever probative value it may have on
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VITA, VIDA, or VITAL coupled with the words GROW or GRO, in connection with
fertilizers and plant foods, 12 TTABVUE 6-33; (2) webpages showing what
Respondent claims to be “the use of what appears to be Petitioner’s mark VITA
GROW as a fertilizer for marijuana plants,” id. at 3, 34-56; (3) a copy of the certificate
of registration for Registration No. 2396977 of the mark REVITAGRO for
“horticultural agents for agricultural and domestic use, namely, plant growth
regulators and plant food for the promotion of healthy plant growth and to activate
composting,” in International Class 1, and a copy of a Notice of Acceptance of a Section
8 and 15 filing for the registration, id. at 57-58, and (4) a translation of “vita” as “life”
from THE LATIN DICTIONARY (latindictionary.com), id. at 59; and definitions of “bud”
and “grow” from the OXFORD DICTIONARIES (oxforddictionaries.com). Id. at 60-70.
II. Standing
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Petitioner must show that it possesses a real
interest in the proceeding beyond that of a mere intermeddler, and that it has a
reasonable basis for its belief of damage resulting from the registration, or continued
registration, of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025-26 (Fed. Cir. 1999).

Petitioner’s Section 2(d) claim. We will cite the declaration by paragraph number (i.e., “White
Decl. ¶ 3”).
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As noted above, Petitioner made of record evidence that the PTO has refused
registration of the VITA GROW mark shown in Petitioner’s pending application on
the basis of Respondent’s registration of VITABUD GROW, and Respondent admitted
as much in his Answer to Petitioner’s Petition to Cancel. 5 TTABVUE 2 (Ans. ¶¶ 4-
5). The citation of Respondent’s registration against Petitioner’s application gives
Petitioner standing to petition to cancel the cited registration. See, e.g., Empresa
Cubana, 111 USPQ2d at 1062; WeaponX Performance Prods. v. Weapon X
Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018).6
III. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Petitioner must prove, by a
preponderance of the evidence, that it has priority with respect to its asserted mark
VITA GROW vis-à-vis Respondent’s mark VITABUD GROW, and that Respondent’s
use of his mark in connection with the goods identified in his registration is likely to

6 The portions of Petitioner’s application in the record have little other significance, however,
because the existence of the application “is not evidence that [Petitioner] actually has
proprietary rights in or use of the [VITA GROW] mark.” WeaponX, 126 USPQ2d at 1041
(citing Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007) (pending
applications are evidence only that the applications were filed on a certain date; they are not
evidence of use of the marks)).
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cause confusion, mistake, or deception as to the source or sponsorship of those goods.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000); WeaponX, 126 USPQ2d at 1040.
A. Priority
In a Section 2(d) case, the plaintiff “must show proprietary rights in the mark that
produces a likelihood of confusion.” Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (citing Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981)). “These proprietary
rights may arise from a prior registration, prior trademark or service mark use, prior
use as a trade name, prior use analogous to trademark or service mark use, or any
other use sufficient to establish proprietary rights.” Herbko, 64 USPQ2d at 1378.
Because Petitioner asserts an unregistered VITA GROW mark, it must “establish
proprietary rights in that pleaded common-law mark.” RxD Media, LLC v. IP
Application Dev. LLC, 125 USPQ2d 1801, 1808 (TTAB 2018) (citing Otto Roth, 209 at
43); WeaponX, 126 USPQ2d at 1040-41. Petitioner must show that its claimed
common-law mark “is distinctive of [its] goods, whether inherently or through the
acquisition of secondary meaning or through ‘whatever other type of use may have
developed a trade identity.’” Towers v. Advent Software Inc., 913 F.2d 942, 16
USPQ2d 1039, 1041 (Fed. Cir. 1990) (quoting Otto Roth, 209 USPQ at 43). Petitioner’s
“acquisition of proprietary rights in its purported [VITA GROW] mark must precede
[Respondent’s] actual or constructive use of [his] mark.” RxD Media, 125 USPQ2d at
1808. “In other words, because unregistered marks are not entitled to the
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presumptions established by Sections 7(b)-(c) of the Trademark Act, it is [Petitioner’s]
burden to demonstrate that it owns a trademark that was used prior to
[Respondent’s] first use or constructive use of [his] mark and not abandoned.” Id.
1. Respondent’s Date of First Actual or Constructive Use of His Mark
In the May 8, 2015 application that matured into Respondent’s registration,
Respondent claimed first use “[a]t least as early as April 20, 2015,” but “[t]he
allegation . . . in a registration of a date of use is not evidence on behalf of the . . .
registrant; a date of use of a mark must be established by competent evidence.”
Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2). Respondent testified at trial that
he “began using the Mark in commerce in 2015 in connection with a general plant
fertilizer product I had developed with a friend.” White Decl. ¶ 3. This testimony does
not establish exactly when use began “in 2015,” and we cannot determine the earliest
date of Respondent’s actual use of the registered mark prior to the filing date of his
application. See WeaponX, 126 USPQ2d at 1041.
In the absence of competent evidence of actual use, Respondent “may rely upon
the filing date of the underlying application that matured into [his] involved
registration” for priority purposes. Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601,
1604 (TTAB 2018). Accordingly, Petitioner must show that it acquired proprietary
rights in its common-law VITA GROW mark before Respondent’s May 8, 2015
constructive use filing date. RxD Media, 125 USPQ2d at 1808-09.
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2. The Existence of Proprietary Rights in Petitioner’s Claimed VITA
GROW Mark
The parties dispute only chronological priority of use, 14 TTABVUE 10-11; 15
TTABVUE 12, and neither addresses the issue of whether Petitioner’s claimed
common-law VITA GROW mark was inherently distinctive, or had acquired
distinctiveness, prior to Applicant’s filing date. We find, however, that Respondent
has admitted that the claimed common-law VITA GROW mark exists and that it is,
or has become, distinctive. In his brief, Respondent repeatedly refers to “Petitioner’s
Mark” in arguing, among other things, that “Petitioner’s mark is VITA GROW for
‘Horticultural products, namely, plant food, rooting compound to stimulate root
production, foliar plant spray to prevent wilting in plants, and pH adjusters’ in Class
001,” 15 TTABVUE 5; that “Petitioner’s Mark, VITA GROW, is relatively weak as
used in connection with its applied-for categories of goods,” id. at 12; that “[b]ecause
Petitioner’s Mark is weak, it is entitled to only a narrow scope of protection,” id. at
16; and that “the addition of the term ‘BUD’ further distinguishes Registrant’s mark
from Petitioner’s Mark.” Id. at 17. Because Respondent has admitted the existence
and validity of Petitioner’s claimed common-law VITA GROW mark, we turn now to
the issue of whether Petitioner proved its use prior to Respondent’s May 8, 2015
constructive use filing date.
3. Use of the VITA GROW Mark Prior to May 8, 2015
Petitioner argues that it has priority based on “undisputed evidence of [its] use of
VITA GROW prior to 2015.” 14 TTABVUE 10. Petitioner cites two “archived copies
of websites showing Petitioner’s use of VITA GROW.” Id. We reproduce them below:
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7 TTABVUE 35 (webpage harvested by archive.org on July 16, 2007).
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Id. at 34 (webpage harvested by archive.org on February 9, 2008).
The record also includes pages from the website at vitagrow.com bearing a 2018
copyright notice and showing products bearing a VITA GROW mark, 7 TTABVUE
29-32,7 and an archived page from the website at americanag.com that mentions “Vita
Grow’s Ready to Use Rooting Compound.” We reproduce the latter page below:

7 These pages are not probative of Petitioner’s priority because they do not purport to state
anything about use of Petitioner’s mark prior to Respondent’s May 8, 2015 filing date.
Cancellation No. 92065963
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7 TTABVUE 33 (webpage harvested by archive.org on February 9, 2011). Petitioner
argues that these webpages prove “priority by a preponderance of the evidence.” 14
TTABVUE 11 (citing Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108
(TTAB 2007)).
Respondent’s argument on priority is perfunctory. In the Introduction section of
his brief, Respondent summarizes his argument as follows: “Petitioner has failed to
prove priority over Registrant’s Mark, submitting only what appears to be Internet
archive evidence for certain ‘snapshots’ of use of Petitioner’s Mark in certain past
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years.” 15 TTABVUE 5. In the Argument section of his brief, Respondent claims that
“Petitioner has relied on Internet archive printouts purporting to show use of
Petitioner’s Mark in certain prior years: 2007 and 2008,” but “has failed to prove that
the mark has been used in the periods between snapshots and thus has failed to prove
priority.” Id. at 12.
Although “Internet evidence is only admissible for what it shows on its face, and
because it does not fall within an exception to the hearsay rule, will not be considered
to prove the truth of any matter stated therein,” WeaponX, 126 USPQ2d at 1041
(citing Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
1467 n.30 (TTAB 2014)), and webpages submitted under notice of reliance generally
cannot be used to demonstrate priority without corroborating testimony, id. (citing
Safer, Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1040 (TTAB 2010)), there is an
exception to that rule that “to the extent that a party has accepted as fact any portion
of this Internet evidence submitted by the adverse party, we deem such portions of
the submitted Internet evidence stipulated into the record for the truth of any
matters asserted therein.” Id. at 1038.
We deem Respondent to have accepted as fact that Petitioner used its claimed
VITA GROW mark in connection with plant food in 2007 and 2008 based on the
archived webpages submitted by Petitioner. Respondent does not address, much less
dispute, the admissibility or sufficiency of Petitioner’s archived webpages “purporting
to show use of Petitioner’s Mark in certain prior years: 2007 and 2008,” id.,8 as he

8 In that regard, we note that the archived webpages satisfy the requirements for
admissibility of Internet evidence under Safer because they show the pertinent URLs, as well
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does not cite WeaponX or Safer, or invoke the rule against hearsay that would
preclude the Board from considering the truth of matters asserted in the webpages
in the absence of corroborating testimony. Instead, Respondent’s argument is based
solely on Petitioner’s failure to prove continuity of use. He does not argue, even in
the alternative, that Petitioner proved no prior use of its mark, but only that
Petitioner “has failed to prove that the mark has been used in the periods between
snapshots and thus has failed to prove priority,” id. (emphasis added), an argument
that necessarily accepts as fact that Petitioner’s archived webpages show that it used
its mark “in certain prior years: 2007 and 2008.” Id.
Respondent’s acceptance as fact that Petitioner’s webpages show use of the VITA
GROW mark in 2007 and 2008 in connection with plant foods is sufficient to establish
Petitioner’s priority. Contrary to Respondent’s argument that Petitioner must “prove
that the mark has been used in the periods between snapshots,” id., “continuous use
is not required to establish Petitioner’s priority.” Kemi Organics, 126 USPQ2d at
1607. “Section 2(d) ‘does not speak of ‘continuous use,’ but rather of whether the mark

as the date that they were harvested by archive.org and the date on which they were
downloaded from that website, and that it appears that they could also serve as specimens
of use of the VITA GROW mark for at least some of the goods identified in Petitioner’s
pending application, in the form of an electronic display associated with the goods, because
they show the name of the claimed owner of the mark, contain a picture or textual description
of the goods, show the VITA GROW mark in association with the goods, and provide a means
of ordering them through the “VIEW CART” icon at the top of each page. 7 TTABVUE 34-35.
See generally TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 904.03(i)
(Oct. 2018) and cases cited therein. We further note that Respondent itself filed a Notice of
Reliance on “Internet websites accessed on August 10, 2018, referencing the use of what
appears to be Petitioner’s mark VITA GROW as a fertilizer for marijuana plants.” 15
TTABVUE 7 (citing 12 TTABVUE 34-57). One of the webpages contains a post referring to
“Vita Grow Rooting Compound” that is dated January 18, 2014, a date prior to Respondent’s
constructive use priority filing date. 12 TTABVUE 49.
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or trade name has been ‘previously used in the United States by another and not
abandoned.’” Id. (quoting West Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1665 (Fed. Cir. 1994) (holding that Board erred in finding that the
petitioner had failed to prove priority under Section 2(d) because the petitioner did
not prove use during the period prior to the filing of its petition for cancellation and
thereafter, where the petitioner proved use prior to the filing date of the application
that matured into the subject registration)). Petitioner “is only required to show
‘proprietary rights in its pleaded common law mark that precede [Respondent’s]
actual or constructive use of its involved mark,’” id. (quoting Executive Coach
Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180 (TTAB 2017)), which rights
“were not thereafter abandoned.” Id. “Petitioner bears the burden of proving that its
mark was ‘previously used in the United States’ before Respondent’s constructive use
priority date,” id. at 1605 (citing Executive Coach Builders, 123 USPQ2d at 1180), but
“[w]ith respect to Section 2(d)’s requirement that Petitioner’s mark be ‘not
abandoned,’” id., Respondent bears the burden of proof. Id. (citing West Fla. Seafood,
31 USPQ2d at 1666). Respondent makes no argument and offers no evidence that
Petitioner’s mark was abandoned after its use in 2007 and 2008.
Petitioner has established its priority by virtue of Respondent’s admission of the
existence and validity of the VITA GROW mark and Respondent’s acceptance as fact
that the mark was used by Petitioner in 2007 and 2008 in connection with plant foods.
We turn now to the issue of likelihood of confusion.
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B. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all probative facts in evidence that are relevant to the factors set forth in In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir.
2018) (du Pont “articulated thirteen factors to consider when determining likelihood
of confusion”). “‘Not all of the DuPont factors are relevant to every case, and only
factors of significance to the particular mark need be considered,’” id. (quoting In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)), but all
factors “‘must be considered’ when [they] are of record.” In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (quoting In re Dixie Rests,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal quotation
omitted)). Two key factors in every § 2(d) case are the similarity or dissimilarity of
the marks and goods or services, the first and second du Pont factors, respectively,
because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
Petitioner argues that the “only du Pont factors for which the record contains
probative evidence” are the first and second du Pont factors, and the third du Pont
factor, the similarity of the channels of trade. 14 TTABVUE 11. Respondent focuses
on the first du Pont factor and the sixth du Pont factor, the nature and number of
Cancellation No. 92065963
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similar marks in use on similar goods. 15 TTABVUE 13.9 Because Respondent’s core
argument is that “the weakness of Petitioner’s Mark coupled with differences in the
two marks negates any likelihood of confusion,” id. at 17-18, we turn first to the sixth
du Pont factor on which this argument is based.
1. The Number and Nature of Similar Marks in Use on Similar Goods
The sixth du Pont factor “considers ‘[t]he number and nature of similar marks in
use on similar goods.’” Omaha Steaks Int’l Inc. v. Greater Omaha Packing Co., 908
F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting du Pont, 177 USPQ at
567). “The purpose of introducing evidence of third-party use is ‘to show that
customers have become so conditioned by a plethora of such similar marks that
customers have been educated to distinguish between different [such] marks on the
bases of minute distinctions.’” Id. (quoting Palm Bay Imps., Inc. v. Veuve Cliquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005) (internal quotation omitted)). Respondent argues that if the “evidence
establishes that the consuming public is exposed to third-party use of similar marks
on similar goods and services, this evidence is relevant to show that a mark is
‘relatively weak and entitled to only a narrow scope of protection.’” 15 TTABVUE 13
(quoting Palm Bay Imps., 73 USPQ2d at 1693).10 He relies on webpages, a third-party

9 Respondent never addresses the second du Pont factor, the similarity or dissimilarity of the
goods, but as discussed below, he has conceded that the goods identified in his registration
are at least related to the goods with which he acknowledges Petitioner uses its mark.
10 Petitioner does not address the sixth du Pont factor, or Respondent’s cited evidence.
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registration, and dictionary definitions of the Latin word “vita” as “life,”11 and the
word “grow” as “(of a plant) germinate and develop.”12 Id. at 14-17.
We turn first to Respondent’s registration evidence. Respondent submitted a plain
copy of the certificate of registration of Registration No. 2396977 of the mark
REVITAGRO for “horticultural agents for agricultural and domestic use, namely,
plant growth regulators and plant food for the promotion of healthy plant growth and
to activate composting,” in International Class 1, which issued in October 2000, and
a copy of the PTO’s notice of renewal of the registration in November 2010.13 This
was sufficient to make the registration of record, Rocket Trademarks Pty Ltd. v.
Phard S.p.A., 98 USPQ2d 1066, 1070 n.11 (TTAB 2011), but this single registration,
which contains the RE-prefix before variants of the words in Petitioner’s mark, has
little, if any, probative value regarding the conceptual weakness of Petitioner’s VITA
GROW mark. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018); Tao
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058-59 (TTAB 2017).
Respondent’s third-party use evidence consists of pages from seven websites, 12
TTABVUE 6-33, which display plant foods and fertilizers in connection with what
Respondent describes as the marks VITAGROW, VITAGROW H, VITA-GRO,
VITAGRO (two), PURA VIDA GROW, and VITALGROPRODUCTS. 15 TTABVUE 9-

11 12 TTABVUE 59 (THE LATIN DICTIONARY).
12 Id. at 65 (OXFORD DICTIONARIES).
13 Id. at 57-58.
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10. A review of these webpages reveals that there are five pertinent third-party
marks.
On the website displaying the putative PURA VIDA GROW mark, the company
offering the product for sale displays the words PURA VIDA as a mark and the word
GROW as a descriptor of one of its products. The website’s text states that the
company offers two different products, “Pura Vida™ Grow & Bloom,” and that
“Pure Vida™ Grow specifically targets the vegetative growth phase rapidly
creating lush green foliage, while Pura Vida™ Bloom is formulated to promote and
maximize the flowering and fruiting performance of plants during the reproductive
stage.”14 The website display a bottle of the “Grow” product that displays PURA VIDA
as a mark and GROW as a product descriptor:
15
We do not consider this use of PURA VIDA (or even use of the putative PURA VIDA
GROW mark) to be probative of the weakness of Petitioner’s VITA GROW mark. Inn
at St. John’s, 126 USPQ2d at 1746; In re FabFitFun, Inc., 127 USPQ2d 1670, 1673-

14 Id. at 27.
15 Id. at 26.
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74 (TTAB 2018) (discussing probative value of “third-party uses of SMOKIN’ HOT
formatives” on weakness of cited mark SMOKIN’ HOT SHOW TIME).
With respect to the putative VITALGROPRODUCTS mark, it is unclear whether
and to what extent the words are used a mark as opposed to a domain name, 12
TTABVUE 30-33, but even if VITALGROPRODUCTS (or VITAL GRO alone) is used
as a mark, this third-party mark, like the registered mark REVITAGRO and the
putative mark PURA VIDA GROW, contains different elements, VITAL and
PRODUCTS, that reduce its probative value regarding the weakness of Petitioner’s
VITA GROW mark. Inn at St. John’s, 126 USPQ2d at 1746. Accordingly, we find that
Respondent showed the use of five third-party marks that are probative of the
weakness of VITA GROW. We reproduce below the relevant portions of the five
websites:
16

16 Id. at 6.
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17
18

17 Id. at 7-8. “Plant Hormones Canada” appears to be the name of a Canadian company. The
website on which the product is displayed, however, is that of a company located in Florida.
The company’s domain name is sunshinegardenfl.com, and it has a phone number in the 941
area code, which we judicially notice is a Florida area code.
18 Id. at 12.
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19
20

19 Id. at 17.
20 Id. at 22.
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“‘Evidence of third-party use of similar marks on similar goods is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection.’”
FabFitFun, 127 USPQ2d at 1674 (quoting Palm Bay Imps., 73 USPQ2d at 1693).
“Internet printouts, such as those offered by [Respondent], ‘on their face, show that
the public may have been exposed to those internet websites and therefore may be
aware of the advertisements contained therein.’” Id. (quoting Rocket Trademarks, 98
USPQ2d at 1072). “In determining the degree of weakness, if any, of the shared terms
[VITA and GROW], we must ‘adequately account for the apparent force of [third-party
use and registration] evidence,’ regardless of whether ‘specifics’ pertaining to the
extent and impact of such use have been proven.” Inn at St. John’s, 126 USPQ2d at
1746 (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674-5). As the Federal Circuit has explained, “extensive evidence of third-
party registration and use is ‘powerful on its face,’ even where the specific extent and
impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, 115 USPQ2d at 1674).
The third-party use evidence here reflects a far “more modest amount of evidence
than that found convincing in Jack Wolfskin and Juice Generation wherein ‘a
considerable number of third parties’ use [of] similar marks was shown.’” FabFitFun,
127 USPQ2d at 1674 (quoting Juice Generation, 115 USPQ2d at 1674).21 Indeed,

21 In Jack Wolfskin, there were at least 14 third-party registrations and uses, 116 USPQ2d
at 1136 n.2, and in Juice Generation, there were at least 26. 115 USPQ2d at 1673 n.1.
Respondent never mentions these seminal Federal Circuit cases. He relies instead on a
Fourth Circuit case, Care First of Md., Inc. v. First Care PC, 434 F.3d 263, 77 USPQ2d 1577
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there are only half as many relevant third-party marks here as in FabFitFun, where
10 such marks led the Board to find that the shared phrase in the involved marks
was only “somewhat weak.” 127 USPQ2d at 1675. Five third-party uses are too few
in number to be evidence of weakness that is “powerful on its face,” Jack Wolfskin,
116 USPQ2d at 1136, and they are unaccompanied by any evidence regarding their
duration or extent of exposure that might enhance their probative value.
Respondent’s dictionary definitions showing that the word VITA is suggestive and
the word GROW is quite weak, if not altogether unprotectable, with respect to the
involved goods, suggest that Petitioner’s VITA GROW mark is somewhat weak
conceptually, but Respondent’s use evidence is insufficient to show that the mark is
so weak either commercially or conceptually that it is “entitled to only a narrow scope
of protection.” 15 TTABVUE 13. The sixth du Pont factor thus weighs only very
slightly in favor of a finding of no likelihood of confusion.

(4th Cir. 2006), for the proposition that the third-party uses here “illustrate[ ] the lack of
conceptual strength of Petitioner’s Mark.” 15 TTABVUE 15. We are not bound by the Care
First decision, but in that case the court found that the plaintiff’s CARE FIRST mark was
both commercially and conceptually weak on the basis of the sort of “extensive evidence” of
third-party use that our primary reviewing court considered in Jack Wolfskin and Juice
Generation. The Care First court held that “the record undeniably reveals substantial third-
party use of the words ‘Care,’ ‘CareFirst,’ ‘First,’ and “First Care’ in the health care industry”
because the plaintiff’s own trademark search reports “state[d] that many health-care-related
businesses across the country use these marks” and the defendant “submitted dozens of web
page print-outs from health-care-related businesses named CareFirst or First Care, as well
as an investigator’s report confirming that many businesses with these names are currently
active.” Care First, 77 USPQ2d at 1582. There is no comparable quantity of evidence in the
record here.
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2. The Similarity or Dissimilarity of the Marks
The first du Pont factor is “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps., 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988)). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
“The proper perspective on which the analysis must focus is on the recollection of the
average customer, who retains a general rather than specific impression of marks.”
In re i.am.symbolic, 127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
The marks must be considered in their entireties, but “‘in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051
(Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985)).
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Petitioner argues that Respondent’s VITABUD GROW mark “contains
Petitioner’s entire VITA GROW mark—Registrant has merely added the descriptive
word ‘BUD’ to the middle of Petitioner’s mark VITA GROW.” 14 TTABVUE 12.
Petitioner claims variously (and inconsistently) that “[b]ecause the word BUD is
placed in the center of Petitioner’s two-word mark, the dominant portion of the
VITABUD GROW mark is still the beginning of the first word, or ‘VITA’ and the
second word ‘GROW,’ which is identical to Petitioner’s VITA GROW mark,” id.; that
“VITA and VITABUD [are] the dominant portion of the marks,” id. at 13; and that
“the dominant portions of the marks—VITA—are identical in sight, sound and
meaning. Id.
Respondent does not dispute that his mark contains Petitioner’s entire mark, but
argues that he “includes the term ‘BUD’ in its [sic] mark—VITABUD GROW—
distinguishing it from Petitioner’s Mark, VITA GROW.” 15 TTABVUE 17.22
According to Respondent, in view of the third-party uses discussed above, “the
addition of the term ‘BUD’ further distinguishes Registrant’s mark from Petitioner’s
Mark,” id., because “the determination that a mark is weak means that consumer
confusion has been found unlikely because the mark’s components are so widely used
that ‘the public can easily distinguish slight differences in the marks, even if the

22 Throughout his brief, Respondent treats Petitioner’s mark as a standard character mark,
and we will do so as well.
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goods are related.’” Id. (emphasis supplied by Respondent) (quoting Gen. Mills, Inc.
v. Kellogg, 824 F.2d 622, 3 USPQ2d 1442, 1445 (8th Cir. 1987)).23
As Petitioner notes, its entire mark is subsumed within Respondent’s mark, and
“[l]ikelihood of confusion often has been found where the entirety of one mark is
incorporated within another.” Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651,
1660 (TTAB 2014) (finding PRECISION and PRECISION DISTRIBUTION
CONTROL to be confusingly similar); see also Stone Lion Capital Partners, LP v. Lion
Capital LLC, 746 F.3d 1317, 110 USPQ2d 1157, 1160-61 (Fed. Cir. 2014) (affirming
Board’s finding that STONE LION CAPITAL was confusingly similar to LION
CAPITAL AND LION). The two-word VITA GROW and VITABUD GROW marks
both begin with VITA and end with GROW, rendering them quite similar to the eye
and ear, particularly taking into account that the “‘marks must be considered . . . in
light of the fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In
re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting
San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196
USPQ 1, 2 (CCPA 1977)).

23 The Gen. Mills court found that the trial court was correct in finding, on the basis of
“evidence of third-party use and of the mark’s descriptive nature,” that the plaintiff’s APPLE
RAISIN CRISP mark was “likely a relatively weak mark.” 3 USPQ2d at 1445. We are not
bound by the Eighth Circuit’s decision, but the Federal Circuit has adopted the same general
analysis with respect to the impact, in the analysis of similarity, of a showing that a mark is
weak. See, e.g., Omaha Steaks, 128 USPQ2d at 1693. As discussed above, however,
Respondent’s third-party use evidence does not show that the elements of Petitioner’s mark
are “so widely used” that ‘the public can easily distinguish slight differences in the marks’”
when they are used on similar goods. 15 TTABVUE 17 (quoting Gen. Mills, 3 USPQ2d at
1445).
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The marks are also similar in meaning when considered in their entireties.
Petitioner correctly notes that consumers are likely to “focus on the first word or
portion in a trademark.” 14 TTABVUE 13 (citing Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) and Palm Bay Imps., 73 USPQ2d at
1692). That general principle applies here because while GROW, the second word in
each mark, gives each mark the same connotation—that the goods sold under each
mark will enable plants to thrive—the word has little or no source-identifying
significance, and has been disclaimed in Respondent’s registration and in Petitioner’s
pending application. 7 TTABVUE 5. The dominant first words VITA and VITABUD
in the marks do not differ enough to give the marks different meanings when they
are viewed in their entireties.
The addition of the word BUD to the word VITA in Respondent’s mark does not
create a significantly different connotation and commercial impression from VITA
alone.24 Like the word GROW, the word BUD is descriptive and non-source
identifying because it “means ‘[a] compact growth on a plant that develops into a leaf,
flower, or shoot.’” 15 TTABVUE 17 (MERRIAM-WEBSTER DICTIONARY). As Respondent
explains, such a “growth on a plant” is the desired end result of the use of

24 Respondent argues that when VITA is used “in connection with plant fertilizers, plant food,
and related products,” it connotes “vitality.” 15 TTABVUE 15 (citing a translation of the Latin
word “vita” as “life” (12 TTABVUE 59)). He claims that Petitioner’s mark VITA GROW
“describe[s] plant food and related products [used] to enhance the growth and vitality of
plaints . . . .” 15 TTABVUE 16. At the same time, however, he appears to attribute a different
meaning to VITA when it appears in his mark, as he testified that he “chose the mark
VITABUD GROW for the product because it describes the use for the different growing
phrases of the plants, vitamin-enriched fertilizer to help plants grow and then to bloom.”
White Decl. ¶ 4. The record does not support a finding that VITA means one thing when it
appears in Respondent’s mark and another thing when it appears in Petitioner’s mark.
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Respondent’s fertilizer, which are used “to help plants grow and then to bloom.” White
Decl. ¶ 4. If consumers notice and recall the difference between VITA and VITABUD
in the marks, Respondent’s VITABUD GROW mark could easily be understood by
consumers familiar with Petitioner’s VITA GROW mark to be a variant of that mark
identifying a particular type of fertilizer of the sort described by Respondent.
The VITA GROW and VITABUD GROW marks as a whole are quite similar in all
means of comparison. Cf. FabFitFun, 127 USPQ2d at 1677 (marks I’M SMOKING
HOT and SMOKIN’ HOT SHOW TIME for cosmetics found to be “more dissimilar
than similar” in appearance, sound, and meaning). The first du Pont factor supports
a finding of a likelihood of confusion.
3. The Similarity or Dissimilarity of the Goods
The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.’” Detroit
Athletic, 128 USPQ2d at 1051 (quoting du Pont, 177 USPQ at 567). The goods
identified in Respondent’s registration are “fertilizers.” Because Petitioner relies on
common-law use rather than a registration, it must prove use of the mark on the
goods on which it alleges that it “has used the mark VITA GROW and related marks,”
1 TTABVUE 5 (Pet. to Cancel ¶ 11),25 as a prerequisite to our determination of their
similarity to the “fertilizers” identified in Respondent’s registration. Cf. WeaponX,
126 USPQ2d at 1042 (noting that because “Opposer has not presented any evidence
that it has sold any of its pleaded goods or rendered any of the pleaded services in its

25 These goods track the goods identified in Petitioner’s pending application. 7 TTABVUE 5.
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notice of opposition under its pleaded mark,” the Board “cannot weigh the
relationship of the parties’ respective goods and services as well as other du Pont
factors”).
Petitioner argues that the goods are identical because the “fertilizers” identified
in Respondent’s registration “subsume and are identical to Petitioner’s plant foods,”
14 TTABVUE 14,26 but the only proof of Petitioner’s use of its mark with plant foods
takes the form of Respondent’s acceptance as fact that Petitioner used the mark in
2007 and 2008 for those goods, discussed above in connection with priority, and
possibly evidence made of record by Respondent that he claims “referenc[es] the use
of what appears to be Petitioner’s mark VITA GROW as a fertilizer for marijuana
plants.”27
In his brief, Respondent does not address the second du Pont factor or Petitioner’s
argument that the goods are legally identical, but Respondent effectively concedes
that Petitioner uses its mark in connection with goods that are at least related to the
fertilizers identified in Respondent’s registration. Respondent’s brief describes
Petitioner’s goods as “[h]orticultural products, namely, plant food, rooting compound
to stimulate root production, foliar plant spray to prevent wilting in plants, and pH

26 Petitioner made of record a definition of “fertilizer” as “[a]ny of a large number of natural
and synthetic materials, including manure and nitrogen, phosphorous, and potassium
compounds, spread on or worked into soil to increase its capacity to support plant growth.” 7
TTABVUE 23 (AMERICAN HERITAGE DICTIONARY). On its face, this definition appears to
encompass plant foods, and Respondent does not contend otherwise.
27 As noted above, this evidence bears on Respondent’s acceptance of Petitioner’s priority, but
its primary significance involves Respondent’s statement that Petitioner’s plant foods are, or
can be used as, fertilizers.
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adjusters,” 15 TTABVUE 5; characterizes those goods as “plant food and related
products,” id.; states that the elements of Petitioner’s VITA GROW mark “describe
the goals of the plant food and related products for which Petitioner’s Mark is used,”
id. at 12, and that “Petitioner’s own categories of goods describe these goals: ‘plant
food, rooting compound to stimulate root production, foliar plant spray to prevent
wilting in plants, and pH adjusters,” id. at 16 (emphasis supplied by Respondent);
describes uses of third-party marks with plant food, plant hormones, fertilizers, and
related goods as uses “on similar goods,” id. at 15; claims that Petitioner uses its mark
“as a fertilizer for marijuana plants,” id. at 7; and argues that the parties’ marks are
sufficiently differ for confusion to be unlikely “even if the goods are related.” Id. at
17 (emphasis supplied by Respondent) (quoting Gen. Mills, 3 USPQ2d at 1445). In
view of Respondent’s multiple statements regarding the nature of the goods with
which Petitioner uses its mark, we find that Respondent has admitted that those
goods are at least related to, if not identical to, the fertilizers identified in
Respondent’s registration. Cf. DC Comics v. Pan Am. Grain Mfg. Co., 77 USPQ2d
1220, 1224 n.8 (TTAB 2005) (statements in briefs can operate as admissions that
authenticate documents and make them of record). The second du Pont factor thus
supports a finding of a likelihood of confusion.28

28 The third du Pont factor “considers ‘[t]he similarity or dissimilarity of established, likely-
to-continue trade channels.” Detroit Athletic, 128 USPQ2d at 1052 (quoting du Pont, 177
USPQ at 567). Petitioner argues that the channels of trade and classes of purchasers for the
parties’ goods are identical because there are no restrictions or limitations on the trade
channels or purchasers in Respondent’s registration, that “the Board must presume that
Registrant’s goods are marketed in all normal channels of the identified goods and to all
normal classes of purchasers of them,” 14 TTABVUE 14, and that “[t]hese trade channels
and classes of purchasers would therefore be identical to the trade channels in which
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4. Balancing the du Pont Factors
The VITA GROW and VITABUD GROW marks are quite similar and Respondent
has admitted that the goods are at least related if not identical. Although Petitioner’s
mark is somewhat weak conceptually and there is modest third-party use of its
constituent elements, the record does not show that Petitioner’s mark is so weak that
consumers are able to distinguish the marks, when they are used with similar goods,
based on the slight differences between them. On the basis of the record as a whole,
including Respondent’s admissions regarding the existence and prior use of
Petitioner’s mark, and the similarity of the parties’ goods, we find that Petitioner
proved, by a preponderance of the evidence, that consumers familiar with Petitioner’s
VITA GROW mark for plant food are likely to believe mistakenly that fertilizers sold
under Respondent’s VITABUD GROW mark originate with, or are sponsored or
authorized by, the owner of the VITA GROW mark for plant foods.
Decision: The petition to cancel is granted and Registration No. 4880452 will be
cancelled in due course.
*****
Wellington, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority’s decision. Specifically, I disagree with the
majority’s finding that Respondent has “accepted as fact that Petitioner used its

Petitioner markets its plant foods and Registrant’s customers are also therefore identical to
the customers to which Petitioner’s markets its goods.” Id. There is no record evidence
regarding the trade channels and customers for Petitioner’s goods, however, and no
admissions by Respondent to establish them. Accordingly, we find that the third du Pont
factor is neutral.
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claimed VITA GROW mark in connection with plant food in 2007 and 2008 based on
the archived webpages submitted by Petitioner.”
In his Answer, Respondent clearly denied each of Petitioner’s allegations involving
priority.29 Thus, Petitioner was on notice that it must prove priority by a
preponderance of the evidence.
Petitioner failed in meeting this burden inasmuch as it relies entirely on the
archived webpages without any corroborating testimony of record. The Board’s
precedential WeaponX decision is directly on point -- internet evidence by itself, such
as the archived webpages submitted by Petitioner, can only be used to demonstrate
what it shows on its face and thus is not acceptable for purposes of demonstrating
priority.30
Although Respondent referred to the archived webpages and made a misguided
argument regarding the necessity of “continuous use” proof, I would not construe this
argument or Respondent’s treatment of the archived webpages as “accepting as fact”
Petitioner’s priority of use. Indeed, Respondent carefully characterized the archived
webpages as “only what appears to be Internet archive evidence” or as only
“purporting to show use …” Such equivocation, especially when considered in

29 5 TTABVUE 2-3 (Answer ¶¶ 2, 11).
30 The majority points out (in Note 8) that the archived webpages satisfy the Safer
requirements and that they may be used as specimens of use in an uninvolved application;
however, these two points are irrelevant to the question of Petitioner carrying its burden of
proving priority of use in this case. Likewise, the other internet evidence referenced in the
same note (consisting of printouts submitted by Respondent “referencing the use of what
appears to be Petitioner’s mark”) also fail for purposes of establishing Petitioner’s priority of
use.
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conjunction with Respondent’s clear denials of priority in his Answer, should not be
treated an admission that the archived webpages establish Petitioner’s priority.
Because I do not believe that Petitioner has proven priority nor do I find that
Respondent “accepted as fact” Petitioner’s priority, I would ultimately conclude that
Petitioner could not prevail on the likelihood of confusion claim.