The Sweetwater Co., Inc.v.Meynard Designs, Inc.

Trademark Trial and Appeal Board

Feb 25, 2010

No. 91178968 (T.T.A.B. Feb. 25, 2010)

Mailed: February 25, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Sweetwater Company, Inc.
v.
Meynard Designs, Inc.
_____

Opposition No. 91178968
to application Serial No. 78968731
filed on September 7, 2006
_____

Harry M. Hanna, Darin D. Honn, and Jeff D. Brecht of Sussman
Shank LLP for The Sweetwater Company, Inc.

David Wolf and Lisa W. Martin of Wolf, Greenfield & Sacks,
P.C. for Meynard Designs, Inc.
______

Before Quinn, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Meynard Designs, Inc. (“applicant”) filed a use-based
application on the Principal Register for the mark
EARTH and design (Serial No. 78968731), shown below, for
“water, namely potable water; spring water,” in Class 32.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91178968
2

Applicant claimed ownership of the following registrations
for the mark EARTH:
1. Registration No. 1371439 for footwear;
2. Registration No. 2199118 for clothing, namely,
jeans, pants, belts, shirts, sweaters, jackets and coats;
and
3. Registration No. 2249826 for clothing, namely,
socks, t-shirts, caps, hats, and sweatshirts.
The Sweetwater Company, Inc. (“opposer”) filed a notice
of opposition against the registration of applicant’s mark
on the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d). Opposer alleged ownership of Registration
No. 2150974 for the mark EARTH2O and design, shown below,
1

and Registration No. 2248664 for the mark EARTH2O, shown
below,2

1 Issued April 14, 1998; renewed.
2 Issued June 1, 1999; renewed.
Opposition No. 91178968
3

both for “bottled water,” and that applicant’s mark EARTH
and design so resembles opposer’s registered marks as to be
likely to cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b),
37 CFR §2.122(b).3 In addition, the parties introduced the
following testimony and evidence:
A. Opposer’s evidence.
1. A notice of reliance including the following
items:
a. Applicant’s responses to opposer’s first set
of interrogatories;
b. Applicant’s supplemental responses to
opposer’s first set of interrogatories;

3 Because the application file and pleadings are automatically
part of the record, it was unnecessary for opposer to introduce
them through a notice of reliance. Also, when testimony or
evidence is introduced by one party, it may be referred to by the
other party for any purpose permitted by the Federal Rules of
Evidence. See for example Trademark Rule 2.120(j)(7); TBMP
§704.09 (2nd ed. rev. 2004). Accordingly, it was not necessary
for the parties to file notices of reliance on testimony and
evidence previously made of record by the other party.
Opposition No. 91178968
4
c. Applicant’s responses to opposer’s first
request for admissions; and
d. The discovery deposition of Philippe D.
Meynard, applicant’s President, with attached
exhibits.
2. The testimony deposition of Steven Emery,
opposer’s President and CEO, with attached exhibits.
3. The testimony deposition of Jeff Zuppan, President
of Zuppan’s Markets, a customer of opposer, with attached
exhibits.
B. Applicant’s evidence.
1. Notice of reliance including the following items:
a. Copies of ten registrations prepared by the
U.S. Patent and Trademark Office showing the
current status and title of the registrations
owned by applicant for the mark EARTH or
EARTH and design (as sought to be registered
by applicant) for a variety of different
products;
b. Copies of 15 third-party registrations for
marks consisting in part of the word EARTH
for water;
c. Applicant’s first request for admissions to
which opposer failed to serve responses; and
Opposition No. 91178968
5
d. A copy of opposer’s application file for the
mark EARTH2O and design (Serial No. 75298907
which issued as Registration No. 2150974).
2. The testimony deposition of Philippe D. Meynard
with attached exhibits.
Standing
“Any person who believes that he would be damaged by
the registration of a mark upon the principal register . . .
may, file an opposition . . . stating the grounds therefor.”
Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063(a).
Thus, a party has standing to oppose the registration of an
application if it can demonstrate a real interest in the
proceeding. Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). “The purpose
in requiring standing is to prevent litigation where there
is no real controversy between the parties, where a
plaintiff is no more than an intermeddler.” Id. To
establish a reasonable basis for a belief that one is
damaged by the mark sought to be registered, a plaintiff may
assert a likelihood of confusion which is not wholly without
merit. Id.
Steven Emery, President and CEO of opposer, testified
that opposer has used the mark EARTH2O continuously since
October 1995 to identify bottled water.4 This testimony is

4 Emery Dep., pp. 15-16, 21-22, 36.
Opposition No. 91178968
6
sufficient to demonstrate that opposer has a real interest
in this proceeding and, therefore, has standing. Id.

Priority

A. Opposer’s individual pleaded registrations.
If an opposer introduces into evidence its pleaded
registrations, Section 2(d) priority is not an issue in such
a case. King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Trademark Rule
2.122(d) provides the following methods for opposer to
introduce its pleaded registrations into evidence:
1. Opposer may attach to the notice of opposition
copies of the registrations prepared and issued by the
United States Patent and Trademark Office (“USPTO”) showing
both the current status and current title to the
registrations, or a current printout of information from the
electronic database records for the USPTO showing the
current status and title of the registrations.5
2. During its testimony period, opposer may file a
notice of reliance on copies of the registrations prepared
by the USPTO showing both the current status and current
title to the registrations;6 or a notice of reliance on a

5 Trademark Rule 2.122(d)(1).
6 Trademark Rule 2.122(d)(2).
Opposition No. 91178968
7
current printout of information from the electronic database
records for the USPTO showing the current status and title
of the registrations.7
3. During its testimony period, opposer may introduce
registrations through the testimony of a witness by
appropriate identification.8 The witness must testify that
the registrations are still subsisting, and are owned by the
opposer. Cadence Industries Corp. v. Kerr, 225 USPQ 331,
332 n.2 (TTAB 1985) (no probative value where testimony
established opposer’s ownership of the registration, but not
the current status); Sheller-Globe Corp. V. Scott Paper Co.,
204 USPQ 329, 331 n.2 (TTAB 1979) (registration may be
introduced as an exhibit to the testimony of a witness shown
to have knowledge of the status and title of the
registration).
Opposer introduced its pleaded registrations into
evidence through the testimony of Steven Emery. However,
Mr. Emery did not expressly testify that the registrations
are currently subsisting. Accordingly, opposer did not
properly introduce its pleaded registrations.
B. Opposer’s evidence of prior use.

7 Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926,
1928 (TTAB 2009). Providing a copy of the registration printed
from the electronic records of the USPTO is applicable for
proceedings filed on or after August 31, 2007. It is not
available in this proceeding because this proceeding was filed on
August 1, 2007.
8 Trademark Rule 2.122(d)(2).
Opposition No. 91178968
8
In the absence of ownership of valid and subsisting
registrations, in order for opposer to prevail on its
Section 2(d) claim, it must prove that it has a proprietary
interest in the mark EARTH2O that was obtained prior to
either the filing date of applicant’s application for
registration or applicant’s proven date of first use,
whichever is earlier. Herbko International Inc. v. Kappa
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir.
2002); Otto Roth & Co., Inc. v. Universal Corp.,
640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Miller Brewing
Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711, 1714
(TTAB 1993).
Applicant filed its application for registration on
September 7, 2006; however, Philippe Meynard, applicant’s
President, testified that applicant began using the mark
EARTH to identify bottled water in February 2001.9
Accordingly, for purposes of determining priority of use,
applicant’s date of first use of the mark EARTH is February
2001. As indicated above, Steven Emery testified that
opposer has used the mark EARTH2O continuously since 1995 to
identify bottled water.10
In view of the foregoing, we find that opposer first
used the mark EARTH2O in 1995; that applicant first used the

9 Meynard Dep., pp. 35-36, 51.
10 Emery Dep., pp. 15-16, 21-22, 36.
Opposition No. 91178968
9
mark EARTH in 2001; and that, therefore, opposer has prior
use.
Opposition No. 91178968
10
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks”).
A. The similarity or dissimilarity and nature of opposer’s
gods and the good described in the application.

Applicant is seeking to register its mark for “water,
namely potable water; spring water.” Steven Emery testified
the opposer uses the mark EARTH2O to identify bottled water,
specifically spring water.11 The goods are identical.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

With respect to the channels of trade, an opposer
relying on common law rights, as in this case, must prove

15 Emery Dep., pp. 4, 9, 16 and 22.
Opposition No. 91178968
11
that the goods are sold in the same or similar type of
distribution channel as encompassed by applicant’s
description of goods. Opposer sells bottled water to
retailers such as grocery chains for distribution to their
customers as well as providing water to school districts and
distributing bottled water for home and office use.12 It has
also provided bottled water to FEMA for disaster relief.13
Finally, opposer distributes its water as promotional items
at trade shows as part of its marketing efforts. For
example, opposer has distributed its water at the trade
shows for the Regional Association of Nutritional Services
for Schools, Northwest Grocers Association and Oregon
Association of Food Processors.14
Applicant also has distributed its EARTH water at trade
shows, primarily footwear trade shows.15 In addition,
applicant has provided its water to retailers for further
distribution and there have been some internet sales.16
While Mr. Meynard’s testimony is not entirely clear, it
appears that applicant intends to sell or distribute its
EARTH water in connection with or as part of its EARTH brand
line of products.17 In this regard, applicant argued that

12 Emery Dep., pp. 4-5, 23.
13 Emery Dep., p. 5.
14 Emery Dep., pp. 22-23.
15 Meynard Dep., pp. 19-20.
16 Meynard Dep., pp. 19-20, 33.
17 Meynard Dep., pp. 34-35.
Opposition No. 91178968
12
its primary product line is footwear and that the
distribution of EARTH water is “to further promote its
[EARTH mark] used for footwear and apparel.”18
Because there are no restrictions as to channels of
trade or classes of consumers in applicant’s description of
goods, we must assume that applicant’s water is sold in all
of the normal channels of trade to all of the normal
purchasers for such goods, including opposer’s channels of
trade and purchasers. Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987); Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB
1983). Thus, applicant’s argument that the trade shows
opposer attends are for the grocery trade, while the trade
shows that applicant attends are for the footwear industry,
is not relevant.
Furthermore, given that applicant is seeking a
geographically unrestricted registration, applicant’s
argument that opposer’s “sales are geographically
significantly limited, since over 80% of [opposer’s] sales
are in Oregon, Washington and California” is unavailing.19
The geographically unrestricted registration applicant seeks
carries the presumption under Section 7(b) of the Trademark

18 Applicant’s Brief, p. 6.
19 Applicant’s Brief, p. 8.
Opposition No. 91178968
13
Act that applicant has the exclusive right to use its mark
throughout the United States in connection with water.
Thus, we may not limit our consideration of likelihood of
confusion to the geographic areas in which the parties
actually use their marks. Board proceedings are determined
independent of the actual geographic scope of use. Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 393 (Fed. Cir. 1983); Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 77 (TTAB 1981).
In view of the foregoing, we find that the water sold
and distributed by the parties moves in the same channels of
trade and are sold to the same classes of consumers,
including ordinary consumers who are likely to use nothing
more than ordinary care in making their purchases of bottled
water.
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
Opposition No. 91178968
14
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are identical,
the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a
recognizable disparity between the goods. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007).
We also note that the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
Opposition No. 91178968
15
(TTAB 1975). Since the goods at issue are water, we must
consider the ordinary consumer.
While marks must be compared in their entireties, it is
not improper to accord more or less weight to a particular
feature of a mark. In re National Data Corp.,
753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). In the
case of marks consisting of words and a design, the words
are normally given greater weight because they would be used
by consumers to request the products. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999);
In re Appetito Provisions Co., 2 USPQ2d 1553, 1554
(TTAB 1987). Thus, the word EARTH is the dominant portion
of applicant’s mark and the term EARTH2O is the dominant
portion of opposer’s EARTH2O and design mark.
With respect to the term EARTH2O, we find that the word
“Earth” is the dominant feature of that term because it is a
familiar word that consumers will immediately recognize. In
addition, the word “Earth” has a greater impact than the
subscript 2 and the letter “O” because it appears first in
the mark. See Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”); see also Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most
Opposition No. 91178968
16
prominent part of the mark VEUVE CLICQUOT because “veuve” is
the first word in the mark and the first word to appear on
the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers must first notice
the identical lead word).
Furthermore, the use of the subscript 2 and the letter
“O” as displayed in opposer’s mark EARTH2O further
emphasizes the word “Earth” as the dominant part of
opposer’s marks because they call to mind the chemical
formula for water, H2O, thus, creating the commercial
impression EARTH H2O or EARTH WATER used to identify water.
In this regard, Mike Zupan, one of opposer’s customers,
testified that the employees at his grocery store refer to
opposer’s products as EARTH2O or EARTH WATER.
20
Finally, in comparing opposer’s marks and applicant’s
mark, we note that opposer’s EARTH2O marks incorporate the
entire word portion of applicant’s mark. Likelihood of
confusion is often found where the entirety of one mark is
incorporated within another. The Wella Corp, v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design for men’s cologne,
hair spray, conditioner and shampoo is likely to cause

20 Zupan Dep., pp. 8-9. Steven Emery also testified that
customers refer to his company’s bottled water as EARTH WATER.
(Emery Dep., pp. 6 and 31).
Opposition No. 91178968
17
confusion with the mark CONCEPT for cold permanent wave
lotion and neutralizer); Coca-Cola Bottling Co. v. Seagram &
Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975)
(BENGAL LANCER and soldier design for club soda, quinine
water and ginger ale is likely to cause confusion with
BENGAL LANCER for gin); In re West Point-Pepperell, Inc.,
468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL
and griffin design for fabrics is likely to cause confusion
with WEST POINT for woolen piece goods). As indicated
above, because the subscript 2 and letter “O” in opposer’s
marks emphasize the word “Earth” as the dominant part of
opposer’s marks, the marks of the parties are similar.
Applicant argued that “[t]he fact that the word EARTH
is also common to both marks is essentially irrelevant
because the word EARTH is common to scores of marks used in
connection with the sale of water.”21 In this regard,
applicant introduced copies of 15 third-party registrations
for marks consisting in part of the word EARTH for water and
excerpts from third-party websites promoting the sale of
bottled water incorporating the word “Earth” as part of the
mark. In essence, applicant is arguing that the word
“Earth” when used in connection with water is so weak and
diluted that consumers can distinguish the differences
between the marks.

21 Applicant’s Brief, p. 13.
Opposition No. 91178968
18
There are a number of problems with applicant’s
argument. The third-party registrations that applicant made
of record fail to demonstrate that the third-party
registered marks are actually being used, much less that the
extent of such third-party use is so great that consumers
have become accustomed to seeing various EARTH marks and,
therefore, have learned to distinguish between them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not
aware of registrations reposing in the U.S. Patent and
Trademark Office); AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Likewise, without more information regarding how often the
websites are accessed and by how many different people, the
mere introduction of third-party websites does not show that
consumers are so used to seeking “Earth” marks for water
that they would look to other elements of the marks to
distinguish them.
Nevertheless, we can conclude from the third-party
registrations and websites that the word “Earth” has a
suggestive meaning when used in connection with water.
However, even suggestive or weak marks are entitled to
protection from the use of a similar mark for identical
goods. See In re Chica Inc., 84 USPQ2d 1845, 1850
Opposition No. 91178968
19
(TTAB 2007), quoting In re Colonial Stores, 216 USPQ 793,
795 (TTAB 1982):
if the word CORAZON, and its English
translation, was considered to be highly
suggestive of jewelry, it nonetheless is
entitled to protection from the use of a
very similar mark on jewelry products.
“[E]ven weak marks are entitled to
protection against registration of
similar marks, especially identical
ones, for related goods and services.”

Simply put, the third-party evidence is insufficient for us
to find that consumers are so used to seeing marks
containing the word “Earth” for water that when a design
element or additional term is added to the word “Earth”
consumers will look to the other elements to distinguish the
marks.
We find that opposer’s marks and applicant’s mark are
similar in terms of appearance, sound, meaning and
commercial impression.
D. Balancing the factors.
We have reviewed all of the evidence of record and
considered all of applicant’s arguments, including any
arguments not specifically discussed in the opinion,
regarding the du Pont likelihood of confusion factors. In
view of the similarity of the marks and the identity of the
goods, channels of trade and classes of consumers, we find
that applicant’s mark EARTH and design for “water, namely
Opposition No. 91178968
20
potable water; spring water,” is likely to cause confusion
with opposer’s EARTH2O marks for bottled spring water.
Decision: The opposition is sustained and registration
to applicant is refused.