Nutri-Ject Systems, Inc.

Trademark Trial and Appeal Board

Sep 6, 2001

No. 75712360 (T.T.A.B. Sep. 6, 2001)

9/6/01 Paper No. 9
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nutri-Ject Systems, Inc.
________

Serial No. 75/712,360
_______

James C. Nemmers, Esq. and Douglas J. Stilwell, Esq. for Nutri-
Ject Systems, Inc.

Brett M. Tolpin, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______

Before Seeherman, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Nutri-Ject Systems, Inc. has filed an application to
register the mark "NUTRI JECT" and design, as shown below,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/712,360
2
for "environmental remediation services, namely, soil, waste
and/or water treatment services."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its services, so
resembles the mark "NUTRI-JECT," which is registered for "liquid
nutrients for trees sold as a component of a hand-operated
injection device,"2 as to be likely to cause confusion, mistake
or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We reverse the refusal to
register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of

1 Ser. No. 75/712,360, filed on June 24, 1999, which alleges dates of
first use anywhere and in commerce of April 1985.

2 Reg. No. 1,773,328, issued on May 25, 1993, which sets forth a date
of first use of May 1, 1992 and a date of first use in commerce of May
29, 1992; combined affidavit §§8 and 15.

Ser. No. 75/712,360
3
confusion analysis, two key considerations are the similarity of
the goods and/or services and the similarity of the marks.3
Turning first to consideration of the respective
marks, we concur with the Examining Attorney that the literal
portions thereof, "NUTRI JECT" and "NUTRI-JECT," are identical
in sound and, given the fact that registrant's mark is in typed
form and, thus, the display thereof could include the same
stylized lettering as utilized by applicant in its mark, are
substantially identical in appearance. See Phillips Petroleum
Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971) [a mark registered in typed format is not limited to the
depiction thereof in any special form]. Nevertheless, as
applicant contends, due to the presence of the corn plant design
in its mark and the nature of the environmental remediation
services with which such mark is used, the connotation suggested
by the "NUTRI JECT" portion of its mark is neither the same as
nor substantially similar to that of registrant's "NUTRI-JECT"
mark, which as used in connection with "liquid nutrients for
trees sold as a component of a hand-operated injection device,"
plainly suggests nutrient injection. As a consequence thereof,

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks."

Ser. No. 75/712,360
4
there is a difference in the respective marks in their overall
commercial impressions.
Turning the focus of our inquiry to the similarities
and dissimilarities in the respective services and goods, it is
applicant's position that such services and goods "are distinct
in character, in market, and in scale" and that "all of these
distinctions are inherent in the identifications" of the
services and goods. Registrant's goods, applicant insists, are
narrowly identified as "liquid nutrients for trees sold as a
component of a hand-operated injection device," whereas the
services rendered by applicant are specifically recited as
"environmental remediation services, namely, soil, waste and/or
water treatment services." According to applicant (italics in
original):
Environmental remediation services are
provided by scientists, engineers,
technicians, laborers, and equipment
operators. The term environmental
remediation is applied to services that are
provided to remediate (clean, restore,
improve) specific sites or samples from the
environment. .... Municipal and industrial
treatment facilities exist to remediate or
clean wastewater for release into the
environment or to remediate or clean other
sources for human use and consumption.
These remediation processes all produce end
products (cleaned soil and water) and by-
products (useful organic matter, harmful
toxins, liquids, gasses, and solids). It is
common in the commercial world to refer to
the direct provision of these services and
the support of these services (treatment
Ser. No. 75/712,360
5
plant sludge handling, soil disposal, waste
steam management) as remediation services.
It is not common usage in the commercial
world to refer to mowing your yard, tilling
your garden, watering your plants, raking
your leaves, filtering your drinking water,
flushing your toilet, or hand applying
nutrients to trees as "environmental
remediation."

Therefore, it is submitted that
Applicant's remediation services and the
registrant's tree nutrients for hand
application are wholly diverse. In light of
the dissimilarities described herein, and in
light of the fact that the prior
registration contains a very narrow
description of goods not entitled to an
expansive reading, it is submitted that the
diverse goods and services at issue ... are
directed to diverse consumers, not likely to
[be] encountered by the same consumers, not
likely to be offered through the same
channels of trade, and certainly not likely
to be confused with one another as to
sources.

Applicant's advertising literature and the excerpt
from its website, which are of record, confirm the distinct
contrasts in its services as compared to registrant's goods.
Such promotional matter indicates among other things that
applicant "is the largest biosolids contracting firm in the
upper Midwest"; that applicant "specialize[s] in removal and
land application of solids from wastewater and water treatment
facilities"; that applicant "encourages the recycling of
biosolids because of it's [sic] rich nutrient value on
agricultural land"; that applicant "provide[s] ... clients in
Ser. No. 75/712,360
6
the best methods available for managing biosolids and cost-
effective strategies for the use of biosolids"; that applicant's
services under its subject mark include dredging, digester
cleaning, land application of biosolids and water plant residual
sludges (including "[s]ubsurface injection, surface application,
umbilical cord application, and dry cake spreading of biosolids
/ sludges / residuals"), and transportation with semi-tanker
trailer units of liquid biosolids; that applicant has
"applicators capable of applying up to 500,000 gallons of liquid
biosolids per day or 300-500 wet tons of dry biosolids per day"
and that applicant's "applicators are mounted on track vehicles
and floater type vehicles."
According to applicant, the sole "similarity
identified and relied upon by the examining attorney is that, at
a most broad level of generality, the registrant's goods and
Applicant's services are both used to provide nutrients to
plants. Applicant contends, however, that merely because the
goods and services at issue find use in the same broad field is
not sufficient to demonstrate that a likelihood of confusion
exists. Instead, applicant asserts that "[b]road groupings and
generalized categories fail to give proper recognition to the
different levels of consumer sophistication within such broad
categories."
Ser. No. 75/712,360
7
The Examining Attorney, however, urges that the record
contains "evidence that effectively illustrates that
registrant's goods and applicant's services are very closely
related" and that confusion as to their origin or affiliation
consequently is likely. In particular, the Examining Attorney
relies upon various excerpts from a search of the "NEXIS"
database, the most relevant of which are the following (emphasis
added):
"Fueling the opposition in Milford was
a recent plan by Republican Senator David K.
Wheeler, who lives there, to spread paper
mill and sewage sludge on his 14-acre
Christmas tree farm.
....
[P]ressure has been building for months
on the agency to better regulate sludge. It
is normally landfilled or burned, but since
it contains organic nutrients there has been
an interest nationwide in using sludge as
fertilizer.
....
[S]hort paper fibers have been used
successfully in other states and is [sic]
the same sort of sludge that Wheeler wants
to spread on his Milford Christmas tree
farm. ...." -- Boston Globe, March 22,
1998;

"Sewage sludge is the de-watered muck
remaining after wastewater has been
separated, treated to Clean Water Act
standards, and discharged. .... At King
County's Biosolids Program, using sludge for
fertilizer is the peak of environmental
correctness. Officials tout the benefits,
and the popularity, of recycling the sewage
stream's minerals and nutrients to enhance
soil structure and boost plant and tree
growth. 'Farmers are beating on our doors
Ser. No. 75/712,360
8
for it,' says Biosolids Program manager
Peter Machno. 'The demand is much greater
than the supply.'
....
Machno says King County gegan [sic]
fertilizing forests with sludge in 1972, and
started supplying Eastern Washington farms
with it in the late 1980s." -- Seattle
Weekly, August 27, 1997; and

"Most sludge is used for livestock feed
crops, turf, seed crops, tree farms and
landscaping. The EPA requires that
biosolids be applied at a rate that matches
plant uptake, so that nitrogen and metals do
not build up in the soil." -- Sacramento
Bee, September 11, 1995.

Such evidence, the Examining Attorney argues,
"establishes that it is common practice for farmers and tree
harvesters to use sludge or biosolids instead of commercial
fertilizer to lower the cost of promoting crop and tree growth."
Because "[b]oth biosolids, a product from sludge, as well as
commercial fertilizer, are nutrient additives to soil" and thus,
among other things, "are used to promote tree growth for tree
harvesting," the Examining Attorney urges that applicant's
services and registrant's goods are closely related in a
commercially significant sense. Furthermore, the Examining
Attorney insists that "[t]he record strongly supports that, in
many facets of the services rendered, the applicant and the
registrant are either competitors or operating within the
natural zone of business expansion of the other" inasmuch as
"[i]t is reasonable to presume that a registrant that sells
Ser. No. 75/712,360
9
liquid nutrients for trees as a component of a hand-operated
injection device could very easily expand into the business of
applying those liquid nutrients for customers." Thus, according
to the Examining Attorney, "[i]n either case consumer confusion
as to the origin of the applicants [sic] services or registrants
[sic] goods is likely."
With respect to applicant's assertion that customers
for the respective services and goods "would not use a provider
of environmental remediation services to hand apply nutrients to
trees," the Examining Attorney "suggests that the applicant is
capitalizing on the goodwill accumulated by registrant" in that
"[t]echnological progress has enabled the applicant to use
machines to do what has historically been, and in many parts of
the country still is[,] done manually." The Examining Attorney
consequently insists that:
It's simply a question of scale. Nothing in
the registrant's identification of goods
states that the liquid nutrient sold is not
used for commercial or large scale use.
Farmers, tree harvesters, cities, counties
and other consumers of applicants [sic]
services and registrant's goods may choose
manual or mechanical means of enriching
soil. Furthermore, whether mechanically or
manually operated, the consumer ultimately
wants liquid nutrients to treat soil in
order to produce better trees, crops and
plants.

Finally, as to applicant's contention that customers
for its environmental remediation services are careful and
Ser. No. 75/712,360
10
sophisticated purchasers, the Examining Attorney indicates that
he "agrees that some of applicant's customers should be
sophisticated, because of the potential health, safety and
environmental liability associated with exceeding certain metal
levels or other hazardous waste within the sludge." However,
the Examining Attorney observes that "[n]either the applicant or
registrant has limited the scope of who purchases their
[services or] products within their identification[s]" and that
"[t]he same entities that the applicant alleges purchases [sic]
its services can, and likely do, purchase registrants [sic]
goods." Moreover, the Examining Attorney points out that even
though purchasers may be knowledgeable or sophisticated in a
particular field does not necessarily mean that they are
knowledgeable or discriminating in the field of trademarks or
immune from source confusion.
We concur with applicant, however, that on this record
confusion as to the source or sponsorship of the respective
services and goods has not been shown to be likely to occur. In
particular, we agree with applicant that, inherent in the
respective identifications of services and goods, applicant's
"environmental remediation services, namely, soil, waste and/or
water treatment services" are distinctly different in character,
scale and marketing from registrant's "liquid nutrients for
trees sold as a component of a hand-operated injection device."
Ser. No. 75/712,360
11
By their very nature, applicant's services involve, inter alia,
large-scale collection, transport and application of treated
environmental waste products, such as liquefied sludge, to
extensive acreage of agricultural land and forest preserves
through the use of heavy duty machinery, including semi-tanker
trailer units and track-mounted applicator vehicles, while
registrant's goods, being liquid tree nutrients sold as a
component of a hand-operated injection device, necessarily are
utilized for smaller scale individualized applications typically
involving, for instance, nurseries, landscaping companies or
even homeowners. Admittedly, both applicant's services and
registrant's goods provide nutrients for tree growing and thus,
for example, could be sold to commercial Christmas tree growers
and managers of forests. However, it seems unlikely that a user
needing the enormous volume of nutrients supplied by applicant's
services would also have a significant need for the liquid
nutrients supplied by registrant through the sale of its hand-
operated injection device and vice versa.
Equally important, there simply is no evidence to
support the Examining Attorney's speculation that facets of the
respective services and goods are so similar that applicant and
registrant "are either competitors or operating within the
natural zone of business expansion of the other." Applicant's
environmental remediation services are not just fertilization
Ser. No. 75/712,360
12
services or the supplying of nutrients to farmers and tree
growers. Instead, given the sheer volume of waste materials
involved and the need to contract for sources of nutrients from
producers of treated biosolids, such as municipal sewage plants,
and to arrange for the disposal of those products in an
environmentally acceptable manner, it appears unreasonable to
assume, as argued by the Examining Attorney, "that a registrant
that sells liquid nutrients for trees as a component of a hand-
operated injection device could very easily expand into the
business of applying those liquid nutrients for customers,"
especially on the large scale necessarily rendered in the
provision of environmental remediation services.
As a final consideration, it is unquestionably the
case that, given the nature of environmental remediation
services, purchasers thereof are highly knowledgeable and
sophisticated, and would exercise considerable care and
discrimination in their selection of nutrient suppliers.
"Contracting for the operation of heavy machinery for the
removal of biosolids, or for the large scale application of
biosolids and the transportation of same along with analytical
reports, evaluation and design of storage facilities, and other
services" which constitute its environmental remediation
services, "necessarily demands contact," as applicant stresses
in its brief, "with trained professionals and does not involve
Ser. No. 75/712,360
13
the purchase of items from a catalog or off a shelf." Thus,
unlike registrant's liquid tree nutrients sold as a component of
a hand-operated injection device, environmental remediation
services such as those provided by applicant are likely, as
applicant persuasively argues, to be "provided on a contract
basis under terms and conditions defined by the particular
application at hand." The result thereof, as applicant
emphasizes, is that "customers who procure the provision of such
services do so through a technique that clearly communicates the
source of goods and services to the consumer." Although some
overlap nonetheless could occur among customers, such as
Christmas tree farmers, for applicant's services and
registrant's goods, our principal reviewing court has cautioned
that:
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations but
with the practicalities of the commercial
world, with which the trademark laws deal.

Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting from Witco Chemical Co., Inc. v. Whitfield Chemical Co.,
Inc., 418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969).
Accordingly, we conclude on this record that, in light
of the difference in the commercial impression of the respective
marks, the differences in the character, scale and marketing of
Ser. No. 75/712,360
14
the services and goods at issue, and the sophistication of the
purchasers and potential customers therefor, confusion as to
origin or affiliation is not likely to occur from the
contemporaneous use of the mark "NUTRI JECT" and design by
applicant for "environmental remediation services, namely, soil,
waste and/or water treatment services" and the mark "NUTRI-JECT"
by registrant for "liquid nutrients for trees sold as a
component of a hand-operated injection device."
Decision: The refusal under Section 2(d) is reversed.