Mt. Eden Organics, Inc.v.Native Nutrients

Trademark Trial and Appeal Board

Jun 5, 2015

No. 91208923 (T.T.A.B. Jun. 5, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mt. Eden Organics, Inc.
v.
Native Nutrients
_____

Opposition No. 91208923
_____

Matthew H. Swyers of The Trademark Company PLLC
for Mt. Eden Organics, Inc.

Paulo A. de Almeida and Alex D. Patel of Patel & Almeida
for Native Nutrients.
_____

Before Quinn, Kuczma, and Greenbaum,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Native Nutrients (“Applicant”) filed an application to register on the Principal
Register the mark NATIVE NUTRIENTS (in standard characters) (NUTRIENTS
disclaimed) for “fertilizers for agricultural use; marine fertilizer; organic fertilizers;
plant growth nutrients” in International Class 1.1

1 Application Serial No. 85631038, filed May 21, 2012 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging first use anywhere on November 8, 2011 and first use in
commerce on February 6, 2012.
Opposition No. 91208923

2

Mt. Eden Organics, Inc. (“Opposer”) opposed registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
used in connection with Applicants goods, so resembles Opposer’s previously used
mark NATIVE NUTRIENTS for compost, growing media for plants, natural
fertilizers, organic fertilizers and plant growth nutrients as to be likely to cause
confusion.
Applicant, in its answer, denied the salient allegations in the notice of
opposition, and affirmatively asserts that its first use predates Opposer’s first use
and, thus, Applicant has priority and Opposer’s Section 2(d) claim must fail.
THE RECORD/EVIDENTIARY OBJECTIONS
Before turning to the merits of this proceeding, we first focus our attention on
the parties’ respective evidentiary objections raised in their briefs. Opposer has
objected to certain trial evidence introduced by Applicant, contending that
Applicant is precluded from claiming any date of first use prior to December 2010
because that is the earliest date for which Applicant provided evidence during
discovery. (19 TTABVUE 6).2 Inasmuch as Applicant claims December 12, 2010 as
its date of first use, Opposer’s objection is deemed moot.
Applicant objected to Opposer’s attempt to rely on use analogous to trademark
use because Opposer failed to plead this issue, and to Opposer’s attempt to
introduce various invoices which, according to Applicant, constitute inadmissible

2 Citations to the record or briefs in this opinion refer to the TTABVUE docket entry
number, and the electronic page number where the document or argument appears.
TTABVUE is the Board’s electronic docketing system.
Opposition No. 91208923

3

hearsay and are not subject to the business records exception. (23 TTABVUE 29-
31).
For purposes of this proceeding, the pleading of priority in the notice of
opposition is presumed to include use analogous to trademark use.
As for the invoices, we consider them to be admissible as business records (just
as in the case of Applicant’s invoices) and, thus, of record for our consideration. Fed.
R. Evid. 803(6). The Board is able to appropriately weigh this evidence, and we will
give the invoices whatever probative weight they merit.
Accordingly, Applicant’s objections are overruled.
The record consists of the pleadings; the file of the involved application; trial
testimony, with related exhibits, taken by each party; and Opposer’s responses to
Applicant’s interrogatories, and official records retrieved from third-party websites,
all introduced by way of Applicant’s notice of reliance. Both parties filed briefs on
the case (with certain portions of the briefs and record designated as “confidential”).
STANDING
Opposer established its standing to oppose registration of the applied-for mark
by virtue of its use of the mark NATIVE NUTRIENTS in connection with compost.
(see discussion, infra, regarding Opposer’s use of its mark). Further, Applicant does
not dispute Opposer’s standing. Thus, Opposer has shown that it is not a mere
intermeddler.3 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842

3 Opposer also pleaded ownership of Application Serial No. 85760914, filed October 23,
2012, alleging first use anywhere and first use in commerce on March 21, 2011. Although
Opposer did not technically make the registration of record, the parties have referred to the
application. Indeed, Applicant acknowledged in its brief the filing and status of Opposer’s
Opposition No. 91208923

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(Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
LIKELIHOOD OF CONFUSION
With respect to likelihood of confusion, the parties’ marks are identical, namely
NATIVE NUTRIENTS. Further, Opposer’s goods are fertilizers and compost, and
Applicant’s goods are fertilizers. Thus, the goods are legally identical or otherwise
highly related. The goods are presumed to travel in the same trade channels to the
same classes of purchasers.
Accordingly, contemporaneous use of the parties’ marks is likely to cause
confusion among purchasers in the marketplace.
To this point, Applicant states, in its brief, that the only issue for decision is
priority of use:
Applicant does not dispute that the marks are identical
and likely to cause confusion; however, Applicant, not
Opposer, has priority of use of the mark. Thus, the sole
issue in this case to be determined is whether Opposer
can show, by a preponderance of the evidence, that it has
priority of use of NATIVE NUTRIENTS for its plant
fertilizers. (emphasis in original)
(23 TTABVUE 5).

application. (23 TTABVUE 9-10). Accordingly, we deem Opposer’s application to be
stipulated into the record. Opposer’s pending application is to register the mark NATIVE
NUTRIENTS for “compost, growing media for plants, natural fertilizers, organic fertilizers
and plant growth nutrients”; Applicant has acknowledged that the application currently is
suspended on the basis of Applicant’s prior-filed pending application involved herein which,
according to the Examining Attorney, “may present a bar to registration of Applicant’s
mark” under Section 2(d) of the Trademark Act. Id.
Opposition No. 91208923

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Applicant reiterates this point when it states “the only issue in this case is which
party used the mark first.” (23 TTABVUE 10). Opposer confirms this point in its
reply brief: “The issue before the Board has effectively been narrowed to one issue:
Which party retains priority of use of its respective NATIVE NUTRIENTS
trademark?” (24 TTABVUE 4).
We agree with the parties’ assessment of the issue before us and conclude that
there is a likelihood of confusion between the parties’ marks for their goods. We
thus turn to the issue of priority.
PRIORITY OF USE
Opposer in the notice of opposition alleges that it has used its mark in
connection with its goods “since as early as March 2011.” As also shown by its
pending application Opposer alleges first use anywhere and first use in commerce of
its mark “at least as early as March 21, 2011.” In its answer, Applicant alleges as
an affirmative defense that it has priority of use. However, Applicant’s application
sets forth a date of first use anywhere “at least as early as November 8, 2011” and a
date of first use in commerce “at least as early as February 6, 2012.”
In the present proceeding, each party now claims dates of first use that are
earlier than the dates alleged in the respective applications. Rather than March
2011 as its date of first use as set forth in its application, Opposer is now claiming
use dating back to 2008, but no later than December 1, 2010. Insofar as Applicant is
concerned, Applicant’s alleged first use date as set forth in its application is
November 8, 2011; Applicant is now claiming first use on December 12, 2010. Thus,
Opposition No. 91208923

6

the new purported first use dates in 2010 are remarkably close in time. Applicant
points out that Opposer changed its date of first use to an earlier date after it
received Applicant’s discovery responses. We would add that Applicant’s discovery
responses likewise indicated a date of first use earlier than alleged in its
application.
Inasmuch as each party is now claiming an earlier first use date, each party is
under the same burden to show the earlier date by clear and convincing evidence. In
saying this, we frankly add that neither party’s “clear and convincing” evidence is
any better or worse than the other party’s. Priority contests generally are fact
intensive, and this case is no exception. The priority determination in this case is
complicated by the fact that both parties are small businesses which, especially in
their early days, lacked sophisticated business record keeping. The parties’ initial
sales, involving hand-written invoices and hand-written labels, bear this out;
however, even later sales continued to display a lack of business sophistication.
In proving priority, a party is not limited to the date of first use set forth in its
application. However, if a party seeks to prove a date earlier than that set forth in
its application, it faces a heavier evidentiary burden than the usual preponderance
of the evidence. Rather, the party must prove the earlier date by “clear and
convincing” evidence. Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470,
1 USPQ2d 1772, 1773 (Fed. Cir. 1987); Threshold.TV Inc. v. Metronome Enterprises
Inc., 96 USPQ2d 1031, 1036 (TTAB 2010). The reason for the increased evidentiary
burden is that the date asserted in the application is considered to be an admission
Opposition No. 91208923

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against interest at the time the application was filed. A change of this position later
“requires enhanced substantiation.” Id. at 1773-74. See Brooks v. Creative Arts by
Calloway LLC, 93 USPQ2d 1823, 1832-33 (TTAB 2009), aff’d on other grounds,
Creative Arts by Calloway, LLC v. Brooks, 09-cv-10488 (S.D.N.Y. December 27,
2012), dismissed, No. 13-147 (unpublished) (2d Cir. March 7, 2013).
To meet this heightened burden, the evidence supporting the earlier date must
be specific, firm and consistent. Whenever possible, oral testimony should be
supported by corroborative documentary evidence. Efforts to prove an earlier date of
first use have been rejected where the evidence is characterized by contradictions,
inconsistencies or indefiniteness. See Bass Pro Trademarks LLC v. Sportsman’s
Warehouse Inc., 89 USPQ2d 1844, 1855-56 (TTAB 2008). Because the parties are
claiming first use dates earlier than as alleged in their applications, we consider the
alleged earlier dates in the context of “clear and convincing evidence.”
Applicant claims its first sale of its fertilizer under the mark NATIVE
NUTRIENTS occurred on December 12, 2010. Tasha Sparks, one of Applicant’s
partners, personally sold one 2.5 gallon container of liquid kelp fertilizer to a
customer located in Bethel Island, California for a total of $30, and a receipt
memorializes the sale. (Sparks dep., 20 TTABVUE 20-24; Ex. 11, 20 TTABVUE 14).
The container bore a hand-written label with the mark NATIVE NUTRIENTS.
(Sparks dep., 20 TTABVUE 20). According to Matthew Mattz, another of
Applicant’s partners, a second sale to a different customer took place four days later
on December 16, 2010 in the amount of $400. (Mattz dep., 21 TTABVUE 19-20; Ex.
Opposition No. 91208923

8

No. 1). Although Applicant suggests, through the testimony of Mr. Mattz, that it
had prior sales, it has no documentation for them. Consequently, Applicant
contends, for purposes of this proceeding, that its priority date is December 12,
2010. (Brief, 23 TTABVUE 6, 16, 27).4 Applicant states that it filed its application
without the assistance of an attorney, and that it mistakenly relied upon a later
date for its date of first use based upon the date when the California Department of
Food and Agriculture issued a fertilizing material license to Applicant. (Brief, 23
TTABVUE 9).
Although there is no further testimony explaining the discrepancy in first use
dates, Ms. Sparks’ testimony, coupled with the documented receipt, is firm and
consistent, and is not contradicted by any other testimony or evidence of record.
Thus, we find that Applicant has established a date of first use of December 12,
2010 by clear and convincing evidence.5 Accordingly, Opposer must prove that its
use is prior to December 12, 2010.6
Opposer bases its earliest date of first use on sales in 2008. Lee McPherson,
Opposer’s founder, testified that he created the mark NATIVE NUTRIENTS in

4 Opposer asserts that this first sale constitutes unlawful use because no sales tax is shown
on the receipt. However, as pointed out by Applicant, the state of California provides a sales
tax exemption for fertilizer.
5 Opposer appears to concede as much: “Even if we look to intrastate use to establish
priority…the earliest intrastate sale by Applicant [was] in December of 2010.” (Reply Brief,
25 TTABVUE 6).
6 Opposer originally challenged this use on the basis that the use was intrastate with no
effect on interstate commerce, but this challenge is ill-founded and was subsequently
dropped. Priority may be established through intrastate use. First Niagara Insurance
Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378
(Fed. Cir. 2007); Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1909
(TTAB 2006) (“Priority may be based on intrastate use of a mark.”).
Opposition No. 91208923

9

2008. (15 TTABVUE 20). More specifically, Mr. McPherson testified that he made
his first sale of NATIVE NUTRIENTS mushroom compost to his father’s (Jeff
McPherson) garden center, McPherson Farm & Garden, located in Zenia, California
in “early 2008.” (15 TTABVUE 21-22). Mr. McPherson states that Opposer received
payment for the compost. The goods apparently were delivered by bulk in the back
of a truck. (15 TTABVUE 105). A hand-written receipt dated June 3, 2008 indicates
that “Jeff” purchased “Native Nutrients” compost. (15 TTABVUE 32; Ex. No. 17).
Mr. McPherson indicated that he was “not sure” if the compost sold in the garden
center was branded, either by a label or a sign, when customers encountered the
product: “I’m not sure how sales happened at McPherson Farm & Garden.” (15
TTABVUE 109). The record includes two receipts issued by McPherson Farm &
Garden: one dated June 11, 2008 to “Roger” in Alderpoint, California showing a sale
of $200 worth of “Native Nutrients” compost, and a second dated June 19, 2008 to
“Sunshine” in Garberville, California showing a sale of $190 worth of “Native
Nutrients” compost. (15 TTABVUE 30-31; Ex. No. 16).
We find that the record falls short of establishing first use in 2008 by clear and
convincing evidence. More specifically, Mr. McPherson lacks personal knowledge of
the conditions of sale at his father’s garden center.
As Opposer readily concedes, and as confirmed by Mr. McPherson, Opposer “did
not make another sale until December of 2010.” (Brief, 19 TTABVUE 7-8). We thus
turn to examine the next business activity undertaken by Opposer in connection
with its mark NATIVE NUTRIENTS in late 2010. Opposer, in October 2010, leased
Opposition No. 91208923

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barn space in Moss Landing, California to store, bag and ship its NATIVE
NUTRIENTS product. (15 TTABVUE 15-16; Ex. No. 2).7 Opposer then obtained a
commercial insurance policy as a condition of the lease on November 30, 2010. (15
TTABVUE 19; Ex. No. 4). Opposer ordered, on December 1, 2010, packaging for use
in shipping its product under the involved mark. (15 TTABVUE 40-41; Ex. No. 23).
On December 3, 2010, Opposer initiated the process to get its labels registered with
the California Department of Fertilizer and Agriculture. (15 TTABVUE 17; Ex. No.
3).8 As shown by two invoices dated December 3, 2010, Opposer took delivery of
shipments of mushroom compost that Opposer intended to resell; the invoices from
a third-party trucking company, Gabilan AG, are for the transport of the compost to
Opposer. (15 TTABVUE 25-22; Ex Nos. 6, 7). The invoices do not show any
reference to the NATIVE NUTRIENTS mark.
According to Mr. McPherson, the second sale of Opposer’s mushroom compost
under the mark occurred on December 1, 2010. The sale was to McPherson Farm &

7 Also in October 2010, according to Mr. McPherson, Opposer launched its website under
the domain name , and “Native Nutrients” compost was featured on this
website at that time. (15 TTABVUE 42-43). We have discounted Mr. McPherson’s testimony
on this point, given Opposer’s contradictory interrogatory responses (Nos. 1, 9; 13
TTABVUE 8-9) which indicate the launch occurred on March 13, 2012. In any event, there
is no documentary evidence showing the existence of a website in 2010, and there is nothing
in the record to show that there were any visitors to the website, let alone any sales of
“Native Nutrients” compost through the website.
8 To the extent that Opposer contends that these preparatory activities constitute use
analogous to trademark use, suffice it to say that the activities fall short of establishing
such use. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378
(Fed. Cir. 2002); T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1373, 37 USPQ2d 1879, 1881-83
(Fed. Cir. 1996). See also Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043
(Fed. Cir. 2015); Aycock Engineering Inc. v. Airflite Inc., 560 F.3d 1350 90 USPQ2d 1301,
1308-09 (Fed. Cir. 2009). The record simply is devoid of evidence to show that Opposer’s use
rose to a level that it could reasonably be expected to have a substantial impact on the
purchasing public.
Opposition No. 91208923

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Garden, still owned by Jeff McPherson, Mr. McPherson’s father. Opposer sold one
cubic yard directly to the father, but Mr. McPherson does not recall the details of
how the product was delivered. While Opposer’s price for end users was set at $25,
Opposer was paid $10 for this sale. (15 TTABVUE 89-93). Mr. McPherson “did not
recall” whether the products sold to the father’s garden center were labeled with the
mark, but he “did not think so.” (15 TTABVUE 102-104). Further, Mr. McPherson
has no idea whether the mark appeared at the garden center when the compost was
sold there. (15 TTABVUE 108).
As with Opposer’s purported earlier sale to the elder McPherson in 2008, we find
that this purported sale on December 1, 2010, for the purpose of proving priority, is
not established by clear and convincing evidence, especially given that the products
apparently did not bear Opposer’s mark.
Mr. McPherson further testified that Opposer made a sale to an individual
named “Brendon L” on December 5, 2010.9 Brendon L “was a friend of a friend.” (15
TTABVUE 111). The bags containing the compost carried labels with the mark
NATIVE NUTRIENTS. (15 TTABVUE 106, 109). Opposer sold 2 cubic yards and
was paid $50 in cash. (15 TTABVUE 98, 111). The sale is memorialized in an
invoice that has been marked confidential. (15 TTABVUE 98-99; Ex. No. 10). The
invoice indicates that it is Invoice #3, and it is dated December 5, 2010; it is
stamped “PAID 12/16/2010.” Opposer followed up with a second sale to Brendon L

9 As indicated earlier, certain portions of the record and briefs were designated as
“confidential.” Although the parties have designated this customer’s name as confidential,
Opposer did not identify the individual by his last name, and no other information about
this customer is in the record. Thus, we see no reason not to refer to him as done by Mr.
McPherson.
Opposition No. 91208923

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on December 16, 2010 (15 TTABVUE 28; Ex. No. 11). This invoice is #4 (also
confidential), is dated December 16, 2010, and is shown as “PAID 12/16/2010.” The
invoices were generated through the accounting program QuickBooks utilized by
Opposer. (15 TTABVUE 99). According to Mr. McPherson, “we process everything
through QuickBooks.” (15 TTABVUE 130).
With respect to these sales to “Brendon L,” Applicant raises questions about the
credibility of this evidence to establish Opposer’s priority:
When pressed for details, Lee McPherson testified that
“Brendon L.” requested the fertilizer verbally in person;
that he and Brendon negotiated the purchase price in
person after Brendon arrived in his vehicle; that Brenden
paid cash for the products; and that Brendon picked up
the products in person on the day of the sale, by loading
the bags of compost into his van. Thus, according to Lee
McPherson, the sale occurred when the cash was
exchanged for the products in person. By the stamp
appearing on both invoices showing “PAID 12/16/2010”,
it is clear that Brendon paid cash for the products on
December 16, 2010 -- the same day he requested the
products, negotiated the sale, and picked up the products
in his vehicle. Thus, the alleged sales to Brendon L.
could only have occurred on December 16, 2010,
four days after Applicant's priority of use date of
December 12, 2010.

Opposer may argue that there were two sales, one
occurring on “12/5/10”, an unexplained date appearing in
the upper right corner of one of the invoices. However, Lee
McPherson’s testimony does not support a sale on
December 5, 2010. For example, Lee McPherson
confirmed that he did not furnish the invoice to Brendon
by remote means, such as by email or fax. He could not
have mailed the invoice because he does not have
Brendon’s mailing address; nor does the mailing address
appear on the invoice. Rather, he believes he may have
“handed” the invoice to Brendon sometime “after the
sale”, but cannot recall for sure. Because we know
Opposition No. 91208923

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Brendon paid cash on December 16, 2010 by the “PAID
12/16/2010” stamp on the invoice, and Lee McPherson did
not furnish the invoice to Brendon prior to the sale, the
sale could not have occurred prior to December 16, 2010.
At best, Lee McPherson may have created the invoice
using his computer on December 5, 2010, but the “PAID”
stamp shows the actual sale was transacted (and
cash received) on December 16, 2010. Accordingly, the
alleged sale to “Brendon L.” could only have occurred on
December 16, 2010, four days after Applicant’s first sale
on December 12, 2010. (Brief, 23 TTABVUE 20-21;
citations to the record omitted) (emphasis in original).

With regard to the claim of an earlier first use date, Mr. McPherson originally
believed March 21, 2011 was the date of Opposer’s first sale, further indicating that
“you know, it’s not my area of expertise to navigate trademark law.” (15 TTABVUE
72). When asked to explain why Opposer changed its first use to a date nearly three
years earlier, Mr. McPherson testified that there was a “lot of confusion”
surrounding his first use date:
Q. Why did you indicate that your first sale of Native
Nutrients products was March 21st, 2011, in your
trademark application?

A. Well, I suppose, as you can see, there’s a lot of
confusion as to figuring out that exact date. I’m not as
well versed in terms of the logistic side of deciding that
date. I try to just offer up whatever I have and keep
everybody informed as I sort of figure it out as well.

(15 TTABVUE 70). Mr. McPherson reiterated, “Like I said before, there’s just a
matter of confusion in navigating the trademark laws that I didn’t understand.” (15
TTABVUE 74); “So it comes down to not understanding the trademark laws.” (15
TTABVUE 79). Mr. McPherson further explained the discrepancy in Opposer’s first
use dates: “During the discovery period, the discovery of more invoices, a better
Opposition No. 91208923

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understanding of the terms in the trademark forms….I just hadn’t looked back as
far as I thought I had.” (15 TTABVUE 82-83). Further, “I guess I don’t quite
understand the difference between interstate and within the state, intrastate.” (15
TTABVUE 88).
Applicant sums up its position as follows:
Overall, the evidence shows that Opposer may have been
preparing to sell NATIVE NUTRIENTS products in
“December 2010”, but it did not make any actual sales
until 2011 or later. This is consistent with Opposer’s
pleaded first use of “March 2011”, the “first use” date
appearing in its own complaint, its trademark
application, and the vast majority of its evidentiary
materials, which generally show sales from 2011 onward.
At best, a highly questionable cash sale to an individual
vaguely identified “Brendon L.” may have occurred on
December 16, 2010, but this was four days after
Applicant’s first sale on December 12, 2010. Whether the
sale even occurred at all is highly doubtful given
Opposer’s vague and inconsistent testimony. Last, none of
the sales of loose, unlabeled compost by Lee McPherson
directly to his own father were “bona fide sales in the
ordinary course of trade”. These were mere token sales
between father and son which could hardly qualify as a
legitimate, arms-length transaction with a consuming
member of the public. Accordingly, Opposer has failed to
show priority of use. (emphasis in original).
(Brief, 23 TTABVUE 26-27)

We concur with Applicant that portions of Opposer’s testimony are confusing
and are, at least, superficially inconsistent on collateral issues. For example, we
note Mr. McPherson’s mistake on the amount of Opposer’s sales in 2010, and the
inclusion of the sales of other unrelated products in this amount. However, these
infirmities have little bearing on the central issue of priority in this case. Much of
the confusion stems from Mr. McPherson’s lack of understanding the difference
Opposition No. 91208923

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between intrastate and interstate commerce. There is documentary evidence
showing a sale one week prior to Applicant’s first sale. Although Applicant
questions that sale, Opposer’s testimony about the December 5, 2010 sale, based on
personal knowledge, coupled with an invoice bearing that date, is clear and
convincing. The fact that the invoice is marked “PAID” eleven days later does not
negate the sale date and first use of the mark NATIVE NUTRIENTS for compost on
December 5, 2010, as confirmed by Mr. McPherson and the invoice.
In reaching our decision, we have taken into consideration the Federal Circuit’s
admonition when we are determining dates of use for priority purposes:
The TTAB concluded that each piece of evidence
individually failed to establish prior use. However,
whether a particular piece of evidence by itself establishes
prior use is not necessarily dispositive as to whether a
party has established prior use by a preponderance.
Rather, one should look at the evidence as a whole, as if
each piece of evidence were part of a puzzle which, when
fitted together, establishes prior use. The TTAB failed to
appreciate this. Instead, the TTAB dissected the evidence
to the point that it refused to recognize, or at least it
overlooked, the clear interrelationships existing between
the several pieces of evidence submitted. When each piece
of evidence is considered in light of the rest of the
evidence, rather than individually, the evidence as a
whole establishes by a preponderance that West used the
“FAST EDDIE’S” mark prior to Jet’s admitted first use of
the mark.

West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660,
1663 (Fed. Cir. 1994).
Similarly, we have considered all the pieces of the puzzle relating to Opposer’s
first use of the mark NATIVE NUTRIENTS in connection with compost. The record
Opposition No. 91208923

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shows that Opposer was gearing up for actual sales with its preparatory work in
October-December 2010. This preparatory work included leasing warehouse space,
getting insurance for the space, ordering packaging for the goods, and beginning the
label registration process with the state of California. On December 3, 2010,
Opposer took delivery of product that it intended to resell. Then, two days later on
December 5, 2010, a sale occurred. We find that, in the words of the Federal Circuit,
these pieces of evidence have an “interrelationship”; that is, “when each piece of
evidence is considered in light of the rest of the evidence, rather than individually,
the evidence as a whole” establishes that Opposer used the mark NATIVE
NUTRIENTS prior to Applicant’s first use. We conclude that Opposer’s sale on
December 5, 2010, closely following Opposer’s preparatory activities in October-
December 2010, establish Opposer’s priority of use. Mr. McPherson’s testimony is
based on his own personal knowledge, is credible and is buttressed by corroborating
evidence. Thus, Opposer has satisfied its burden of proof to show, by clear and
convincing evidence, that it has first use prior to what it previously alleged. In sum,
we have allowed Opposer to claim a first use date that is 3.5 months earlier than
previously alleged, and Applicant to claim a first use date that is 11 months earlier
than previously alleged. Opposer’s first use on December 5, 2010 ultimately is prior
to Applicant’s first use on December 12, 2010.
In view of the foregoing, Opposer has proved its priority for a mark that is
confusingly similar to Applicant’s mark for overlapping goods.
Opposition No. 91208923

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Decision: The notice of opposition is sustained, and registration to Applicant is
refused.