Solid Waste Management Coordinating Boardv.Greener Pastures Development Corporation

Trademark Trial and Appeal Board

Jun 17, 2008

No. 91174062 (T.T.A.B. Jun. 17, 2008)

Mailed: June 17, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Solid Waste Management Coordinating Board
v.
Greener Pastures Development Corporation
_____

Opposition No. 91174062
to application Serial No. 78758826
filed on November 21, 2005
_____

Garrett M. Weber of Lindquist & Vennum, PLLP for Solid Waste
Management Coordinating Board.

Jeffrey D. Shewchuk for Greener Pastures Development
Corporation.
______

Before Seeherman, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Greener Pastures Development Corporation,
seeks registration of the mark THE GREEN GUARDIAN (in
standard character form) for services ultimately identified
in the application as “lawn and landscape maintenance
services including weed management, fertilizing, seeding,
aeration, fungus and lawn and garden pest control services,
and mold and salt damage repair; lawn and landscape
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91174062
2
information services, namely, providing, online,
telephonically or in-person, advice and consultation on
proper weed management procedures, proper fertilizing
procedures, proper seeding procedures, proper aeration
procedures, proper fungus and pest control procedures,
proper mold and salt damage repair procedures, proper mowing
procedures, proper watering procedures, and proper lawn and
garden waste disposal procedures” in International Class
44.1
Opposer, Solid Waste Management Coordinating Board,
opposed registration of applicant’s mark on the grounds
that, as applied to applicant’s services, the mark so
resembles opposer’s previously used mark GREEN GUARDIAN for
its services “for helping citizens understand the urgent
need to make environmentally-responsible purchasing and
disposal decisions in their daily lives and for promoting
public awareness regarding the importance of managing waste
and recycling” as to be likely to cause confusion, to cause
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d). In addition, opposer alleges fraud based
on the allegations that applicant was not using the mark THE
GREEN GUARDIAN in connection with the information services

1 Serial No. 78758826, filed November 21, 2005. The application
is based on an allegation of first use and use in commerce in
2000 under Trademark Act Section 1(a), 15 U.S.C. §1051(a).
Opposition No. 91174062
3
relating to “proper lawn and garden waste disposal
procedures” at the time it filed its use-based application.2
Applicant filed an answer by which it admitted the
allegations that opposer “openly advertised and promoted
using the mark GREEN GUARDIAN prior to applicant’s filing
date” and that “the services identified in [applicant’s]
application are substantially related to environmental
information and education services including information
services relating to proper lawn and garden waste disposal
procedures.”
Applicant otherwise denied the salient allegations of
the notice of opposition, including the allegations
“concerning the continuous nature of [opposer’s] use,
concerning any usage by [opposer] of the mark GREEN GUARDIAN
as a trademark, concerning any usage by opposer of the term
GREEN GUARDIAN as a tradename, and concerning what services
are or have been provided by opposer under the GREEN
GUARDIAN mark.”
The evidence of record consists of the pleadings
herein; the file of the opposed application; the testimony

2 Opposer also pleaded fraud based on the allegations that
applicant “had detailed knowledge of [opposer’s] use and rights
in the substantially identical mark GREEN GUARDIAN for
confusingly similar services prior to [applicant’s] November 21,
2005 filing of the declaration” in its application attesting that
“no other person, firm, corporation, or association has the right
to use the mark in commerce...” However, opposer did not address
these allegations in its brief and we consider the fraud claim
based on these allegations to be waived.

Opposition No. 91174062
4
depositions (with exhibits) taken by opposer of Victoria A.
Reinhardt, a Commissioner on the Ramsey County Board and
member of opposer, taken on September 5, 2007, and Linda
Gondringer, senior associate at Richardson, Richter &
Associates, a consulting firm, taken on September 13, 2007;
the testimony depositions (with exhibits) taken by applicant
of Mark R. Miles, applicant’s owner, James A. Vandergriend,
applicant’s independent CPA, and Paul Overson, an employee
of Independent Delivery Service which prints and delivers
advertising flyers for applicant. In addition, opposer
submitted a notice of reliance upon applicant’s responses to
opposer’s first set of interrogatories and requests for
admission, and the discovery deposition of applicant’s owner
Mr. Mark R. Miles.
THE PARTIES
Opposer is “a joint powers board made up of six
counties in the Minneapolis-St. Paul, Minnesota metropolitan
area.” Br. p. 2; Gondringer Test. p. 7. Opposer and its
members provide information to the public on recycling and
waste disposal.
Applicant provides “organic lawn care services, lawn
consulting services, weed remediation, fertilizer products,
organic protein extracts, insect repellants, geese
repellants.” Miles Test. p. 5. Applicant has operated
Opposition No. 91174062
5
under the name Greener Pastures Development Corporation
since approximately 1988-1989. Miles Test. p. 8.
STANDING
As discussed below, opposer has shown that it and its
members use the mark GREEN GUARDIAN in connection with
“helping citizens understand the urgent need to make
environmentally-responsible purchasing and disposal
decisions in their daily lives and for promoting public
awareness regarding the importance of managing waste and
recycling” services and has demonstrated a real interest in
preventing registration of the proposed mark. See Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Thus, opposer has established its standing.
PRIORITY
Turning first to the issue of priority, because opposer
has not pleaded any registrations, opposer must rely on its
common law use to prove its priority. The evidence of
record establishes opposer’s first use of the mark GREEN
GUARDIAN in connection with its public service of providing
information on recycling and waste disposal by one of its
members on December 17, 2002. See e.g., Gondringer Test. p.
11; Reinhardt Test. pp. 23-24. On this date, the mark was
Opposition No. 91174062
6
used in a display at the visitors center in the Hennepin
County Environmental Services Building. Id. The display
provided information on proper waste management.3 Id.
Thereafter, the “Green Guardian campaign was officially or
publicly launched to the media in June of 2003.” Gondringer
p. 10. The mark is used by opposer and its member counties
and municipalities. In addition, one of its members, Dakota
County, on behalf of opposer, obtained a Minnesota state
trademark registration for GREENGUARDIAN.COM “KNOW WHAT TO
THROW.”4 Gondringer Test. p. 49. Opposer provides its
services through a variety of media but the website is the
“centerpiece of its campaign.” Gondringer Test. p. 13.
Opposer also disseminates information through brochures
handed out at events, including the Living Green Expo. Id.
p. 14.
Applicant asserts it first used the mark THE GREEN
GUARDIAN in connection with its services in the year 2000
and continuously thereafter. Applicant provided, inter

3 Although applicant did not object to exhibit one, the
photograph of the display, or Ms. Gondringer’s testimony
regarding this exhibit, applicant’s counsel did cross examine the
witness about this exhibit. Applicant objected for the first
time in its brief to the presumed date appearing in the photo as
inadmissible hearsay. Applicant’s objection is untimely.
However, we have considered applicant’s arguments to the extent
they challenge the probative value of the photograph. We find
the combined testimony of the two witnesses sufficient to
conclude that this display was used on that date. The extent of
public exposure on that date is, however, not known.

4 Although filed “on behalf of” opposer the registration is in
the name of Dakota County.
Opposition No. 91174062
7
alia, the following testimony and documentary evidence in
support of its assertion of prior use. Applicant submitted
an advertising flyer dating from 2000 that includes the
excerpt shown below.

Applicant testified as follows:
Q. ...Can you identify that document of record?

A. Yes. That’s one of our Greener Pastures’
spring flyers.

Q. How was that document used?

A. That we put out usually hundreds of thousands
of them to a million each spring using different
delivery services.

Q. Do you recall what delivery service you used
for this particular flyer?

A. Many of them. IDS was one of them.

Q. IDS refers to who?

A. Independent Delivery Service. The other ones
are companies that are no longer in business. I
Opposition No. 91174062
8
don’t remember their names. But then we had
others that were going through local newspapers,
like a city newspaper. We’ve had them inserted
into the paper.

Q. What year was this particular flyer used?

A. This was the year 2000.

Q. And what does it describe the Green Guardian
mark as being associated with?

A. That was our first foray into trying to get
people to understand what they had to do to avoid
using chemicals. So we had set up a plan, a weed
management plan that went through and detailed
exactly what they had to do for their part, what
we had to do for our part kind of on how we are
going to work together to avoid using chemicals.

Q. How did the Green Guardian mark tie into that?

A. We called it the Green Guardian Protection
Plan.

Miles Test. pp. 12-13

Applicant also submitted an invoice from 2001 that
includes an entry for an “Organic Weed Control Plan” which
is a service provided under THE GREEN GUARDIAN mark and an
information sheet that includes the mark THE GREEN GUARDIAN.
The following testimony relates to these exhibits.
Q. Does this reflect the providing of goods or
services under the Green Guardian mark?

A. Yes.

Q. Where does it do so?

A. Well, the organic weed control plan was what
we implement and then attach to their first order
of service for the season.

Q. What’s the date on this invoice?

Opposition No. 91174062
9
A. The order date is October 23rd of 2000. It’s
one of our invoice numbers 133. It’s just when we
began to write this computer software.

Q. When were the services, to your knowledge, or
goods provided?

A. On the schedule or ship date, that’s when we
anticipate delivering that service. So on the
first one would have been on May 7 roughly in
2001....

Q. And how do you know that this included the
Green Guardian Protection Plan?

A. Because we had two sheets that we would
include with the program so that we would make
sure that our customers weren’t going to be
becoming hostile towards us when they didn’t get
what they expected with Chemlawn.

Q. What was the content of those two sheets?

A. The general gist was here’s what you have to
do to take care of your lawn, here’s what we do.
Just an educational piece on kind of setting
expectations to achieve desired results.

Q. I’m handing you what has been marked as
Greener Pastures Development Corporation Exhibit
Number 10. It was also produced at GPD 148. Can
you identify that document for the record?

A. Yes. This is the Green Guardian Protection
Plan also referenced under the organic weed
control program.

Q. Is that the type of document that you were
referring to earlier that made up some of these
advertising expenses reflected in your corporate
income tax returns and was provided with the
invoice represented on Exhibit 9?

A. Yeah, this would be one of the things that we
printed and distributed to our existing customers.

Miles Test. pp. 26-28.
Opposition No. 91174062
10
Applicant also testified as to sales and advertising
under THE GREEN GUARDIAN mark.
Q. To your knowledge, starting with the year
2000, approximately what portion of the sales
dollars amounts would be involved with the Green
Guardian trademark?

A. Under the lawn program, intro programs,
product delivery, commercial services and
commercial products. That would be 100 percent.

Q. So tell me what those dollar amounts are?

A. Well, for the lawn program in 2000, [redacted]
The intro program, [redacted] Product delivery,
[redacted] Commercial services, [redacted] And
then commercial products is [redacted].5

Q. And for the that roughly [redacted] and change
of sales how was the Green Guardian mark used?

A. That was used in the protection plan on trying
to educate our clients that are buying the
products on how they need to represent it to their
customers so that they don’t have angry or
disappointed customers when things aren’t going to
work exactly as they were used to using chemicals.

Miles Test. pp.17-18.

In addition, applicant submitted a label for fertilizer
used in 2002 that includes the following statement in the
directions for use:
Before applying it is recommended that you measure
an area of 100 meter square. Then apply 4 liters
of water to this area to get a feel for the
correct application rate. Please read the ‘Green
Guardian Protection Plan” at http:/www.greenerpast
.com/lib/ggpp.doc and follow the program steps to
achieve a successful program.

5 These figures were filed under seal in conformance with the
parties’ protective order. Suffice it so say they are not
insubstantial.
Opposition No. 91174062
11
Over the years applicant’s use of THE GREEN GUARDIAN
expanded to other media including its website in 2002.
Miles Test. p. 52.
Applicant also took the testimony of Paul Overson, a
sales representative of Independent Delivery Service that
delivered and printed applicant’s advertising flyers, who
testified as follows:
Q. What has Independent Delivery Service done for
Greener Pastures Development Corporation?

A. Well primarily just delivering and printing
flyers advertising flyers.

A. To your knowledge, have any of those flyers
included the trademark GREEN GUARDIAN or The Green
Guardian.

A. Yes.

Q. When, to your knowledge, did that begin, the
delivery of flyers by Independent Delivery Service
of flyers that contained the mark The Green
Guardian?

A. I don’t recall a specific date. I do recall
the building that Mark was in Oakdale Minnesota
and using the little logo on the flyers and me
commenting to my operations guys that we put the
name Greener Pastures on it because that’s the
corporate name that they were previously using.
And I remember telling the guys, okay, this is a
Green Guardian flyer but it’s still Greener
Pastures. I don’t have a date again, but it was
in the building in Oakdale, Minnesota.

Overson Test. p. 5.

Applicant was located in the Oakdale, Minnesota office
from September 11, 2001 through fall 2004. Miles Test. pp.
11-12.
Opposition No. 91174062
12
With regard to the 2000 flyer, opposer asserts that
“Applicant can provide no documentary evidence whatsoever
that this flyer was ever actually distributed to anyone
prior to Opposer’s established date of first use in 2002,”
noting that “every single record relating to the use of this
flyer in advertising or being delivered – which Miles claims
to have maintained – were mysteriously stolen during a
purported robbery while Applicant was being audited by the
IRS.” Rebuttal Br. pp. 4-5. See generally Miles Disc. Dep.
Further, with regard to the “leave behind” flyer referencing
THE GREEN GUARDIAN protection plan, opposer argues that
“they are undated and therefore have no relevance to
priority of use.” Rebuttal Br. pp. 5-6. Opposer also
argues that the documents do not “constitute evidence of
protectable service mark use” in that the provision of
“general information or instruction as to the purpose and
uses of applicant’s goods is merely incidental to the sale
of goods and is not a separate informational service.”
Rebuttal Br. 6.
While there may not be additional documentary evidence
to support the assertion of use of the flyer in 2000, the
flyer itself bears the date of 2000, which is documentary
evidence in itself. Moreover, the testimony of a witness,
even without documentary evidence, can be sufficient to
prove priority. See 3 J. Thomas McCarthy: McCarthy on
Opposition No. 91174062
13
Trademarks and Unfair Competition § 16.06(2) (4th ed.
updated 2008). The testimony submitted by applicant makes
clear that applicant used the mark THE GREEN GUARDIAN in
connection with its lawn care services prior to opposer’s
claimed first use date of December 17, 2002. We find that
Mr. Miles’ testimony is not characterized by contradictions
or inconsistencies. Further, although the testimony from
Mr. Overson is somewhat general as to the timeframe in which
Independent Delivery Service distributed applicant’s flyers,
it serves to bolster applicant’s testimony and evidence that
such flyers were printed and distributed. We also find that
the flyer and leave behind documents evidence service mark
use in that the mark is associated with the services.
Opposer also argues that applicant’s actions “do not
comport with its claim that it owns THE GREEN GUARDIAN or
that it used it prior to [opposer’s] undisputed use in 2002”
in that after learning of opposer’s use of the mark
applicant’s owner testified that he “was not concerned ‘in
the least’ ... and requested permission from opposer to use
the mark ‘GREEN GUARDIAN’ and logo and to ‘connect up’ with
opposer to promote his environmentally-conscious lawn care
company.” Br. p. 6. In support of this contention, opposer
points to the testimony of Mr. Miles and Ms. Gondringer,
regarding the conversations they had after Mr. Miles had
encountered opposer at a trade expo.
Opposition No. 91174062
14
We first note that, reading the testimony, it is not
clear whether or not Ms. Gondringer believed Mr. Miles was
asking to use the words GREEN GUARDIAN or the Spartan design
referred to as GREEN GUARDIAN; however, it is clear from Mr.
Miles’ testimony that he was asking to use only opposer’s
design of a Spartan and to somehow combine their efforts to
further promote to the public environmentally-sound
practices.6 Moreover, this is consistent with the rest of
the evidence supporting Mr. Miles’ assertion of trademark
rights in the word mark THE GREEN GUARDIAN. Taken as a
whole, we do not find in the testimony any implication that
applicant did not believe it had trademark rights in THE
GREEN GUARDIAN mark.
Viewing the record as a whole, we find that applicant
used the mark for its services prior to opposer’s asserted
December 17, 2002 date of first use, therefore, opposer has
not established its priority with respect to its common law
rights in the mark GREEN GUARDIAN.
In view thereof, we need not address the issue of
likelihood of confusion.
FRAUD
Opposer claims applicant committed fraud inasmuch as
applicant, in signing the use-based application, claimed use

6 The question of rights in a logo design is not in issue in this
case.
Opposition No. 91174062
15
in connection with “proper lawn and garden waste disposal
procedures” when it had not in fact made such use.
In order for opposer to prevail on a claim of fraud,
opposer must prove that applicant knowingly made “false,
material representations of fact in connection
with” the application, filed November 21, 2005. Torres v.
Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484
(Fed. Cir. 1986). See also Mister Leonard Inc. v. Jacques
Leonard Couture Inc., 23 USPQ2d 1064, 1065 (TTAB 1992);
Hachette Filipacchi Presse v. Elle Belle, LLC, 85 USPQ2d
1090 (TTAB 2007) (statements regarding the use of the mark
on goods and services are material to issuance and
maintenance of a registration covering such goods and
services). That is, to constitute fraud on the United
States Patent and Trademark Office (USPTO), a statement must
be (1) false, (2) made knowingly, and (3) a material
representation. Moreover, the charge of fraud upon the
USPTO must be established by clear and convincing evidence.
See Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ
955 (TTAB 1986). See also Smith International Inc. v. Olin
Corp., 209 USPQ 1033, 1044 (TTAB 1981) (“It thus appears
that the very nature of the charge of fraud requires that it
be proven ‘to the hilt’ with clear and convincing evidence.
There is no room for speculation, inference or surmise and,
obviously, any doubt must be resolved against the charging
Opposition No. 91174062
16
party”). Fraud will not lie if it is proven that the
statement, though false, was made with a reasonable and
honest belief that it was true. See Woodstock’s Enterprises
Inc. (California) v. Woodstock’s Enterprises Inc. (Oregon),
43 USPQ2d 1440, 1444 (TTAB 1997) (defendant “held, at the
time she signed the application oath, an honest, good faith
belief that her corporation ... as the senior user of the
registered mark, was the owner of the mark”). “[P]roof of
specific intent to commit fraud is not required, rather,
fraud occurs when an applicant or registrant makes a false
material representation that the applicant or registrant
knew or should have known was false.” General Car and Truck
Leasing Systems, Inc. v. General Rent-A-Car Inc., 17 USPQ2d
1398, 1400 (S.D. Fla. 1990). See also Torres, supra, and
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003).
In support of this claim opposer relies entirely on Mr.
Miles’ following testimony:
Q. How do you – what type of advice do you give
to people on proper lawn and garden waste disposal
procedures, if any?

A. I don’t.

Q. You don’t?

A. Are you talking as in composting or something
of that nature?

Q. I’m asking what services you provided as of
November 2005 about proper lawn and garden waste
disposal procedures, if any?

A. I would say zero.
Opposition No. 91174062
17
However, Mr. Miles immediately clarifies this statement:
Q. How were those services provided, the lawn and
landscape information services?

A. Well, that’s provided in a number of ways, but
commonly it’s verbal and then, also, whatever
documents we have we – if they request them then
we’ll mail them.

Q. How do you – what type of advice do you give
to people on proper lawn and garden waste disposal
procedures, if any?

A. I don’t.

Q. You don’t?

A. Are you talking as in composting or something
of that nature?

Q. I’m asking what services you provided as of
November 2005 about proper lawn and garden waste
disposal procedures, if any?

A. I would say zero.

Q. Have you gotten any –

A. I may have one exception to that last one,
though.

Q. What?

A. When we’re talking about waste disposal of
organic material, we don’t like them hauling it
away. We want them to mulch it into the grass.
You know, don’t collect your clippings, that’s
valuable organic matter and will help retain
moisture and soften the soil for better root
development and a healthier lawn.

Miles Disc. Dep. pp. 55-57.

We find this sufficient to support the identification
“proper lawn and garden waste disposal services” which is
part of a broad array of information and advice services
Opposition No. 91174062
18
regarding lawn care as identified in the application. The
information regarding the retention and mulching of
clippings falls within the parameter of information on
“proper lawn and garden waste disposal procedures.” Opposer
argues further that this statement only goes to the present
and cannot support use prior to the signing of the
application. We do not find the statement to be limited to
the present but rather encompasses applicant’s services
since it began offering lawn care services in 2000. In view
thereof, we find applicant has not committed fraud.
Decision: The opposition is dismissed on all claims.