Crowded Field & Weak Mark Defeat Similar Goods in TTAB Opposition

Overview

This case involves a consolidated opposition proceeding where the Opposer sought to prevent registration of the marks BLUE EARTH and CLEAR EARTH for laundry detergents and fabric softeners. The central conflict centered on whether Applicant’s marks so resembled Opposer’s TRU EARTH mark as to cause a likelihood of confusion under Section 2(d) of the Trademark Act.

The Board ultimately concluded that the shared term "EARTH" is highly suggestive and weak within the household cleaning sector, thereby narrowing the scope of protection afforded to the senior user.

Background

The Applicant filed two applications in International Class 3 to register BLUE EARTH for "laundry detergents" and CLEAR EARTH for "fabric softeners; laundry detergents."

The Opposer opposed both applications on the grounds of priority and likelihood of confusion with its TRU EARTH marks, in standard characters and stylized form for laundry strips and related cleaning goods.

Analysis

The Board began by addressing significant evidentiary issues, particularly regarding the Opposer’s pleaded registrations. The Opposer initially pleaded ownership of two registrations and several pending applications, submitting undated plain copies of certificates for these registrations.

The Board noted that these copies were problematic because they were not reasonably contemporaneous with the filing, failed to show current status or title, and identified a third party as the owner. Because the Opposer did not provide any evidence of an assignment or updated TSDR printouts reflecting its ownership, these registrations were not properly made of record.

Nevertheless, Registration No. 7,715,528 (the "’528 Registration") for TRU EARTH had since matured to registration and was found to be properly of record because it was issued and submitted via a Notice of Reliance during the trial period. That registration became the center of the Board's analysis.

Entitlement

To establish entitlement to a statutory cause of action, a party must demonstrate an interest falling within the zone of interests protected by the statute and a reasonable belief of damage proximately caused by the registration. The Board found that the Opposer established entitlement through its ownership of the ’528 Registration and its claimed use of the TRU EARTH mark for laundry strips in the United States since 2019. Consequently, the Board held that the Opposer showed a plausible Section 2(d) likelihood of confusion claim as to both of the Applicant’s marks.

Claim of Priority

Because the Opposer successfully made its ’528 Registration of record and the Applicant did not file a counterclaim for cancellation, the Board ruled that the Opposer’s priority was not at issue for the mark and goods identified in that registration.

DuPont #2 and #3: Similarity of Goods, Trade Channels, and Classes of Consumers

The Board analyzed the similarity of the goods and their respective trade channels. The ’528 Registration covers "detergent soap," while the Applicant’s marks cover "laundry detergents" and "fabric softeners." The Board determined that "detergent soap" is a broad term that necessarily encompasses the narrower category of "laundry detergents." Consequently, the goods were found to be legally identical in part.

Because the identifications in the registration and applications contained no limitations as to trade channels or consumer classes, the Board presumed that the goods travel through the same channels to the same purchasers. The Applicant conceded this overlap. Therefore, these factors weighed strongly in favor of a likelihood of confusion.

DuPont #5: Commercial Strength of Opposer's Mark

The Opposer submitted evidence of confidential annual revenue, unit sales, and social media presence, including 101,000 Instagram followers and a YouTube video with over 127,000 views.

However, the Board found this evidence lacking in context. The Board noted that the Opposer failed to provide market share data or total advertising expenditures, making it impossible to "gauge the significance of these numbers... in the detergent industry." Additionally, the Board pointed out that some of the high-viewership influencer content featured dishcloths rather than the laundry detergent at issue.

Thus, the evidence is insufficient to conclude that Opposer’s TRU EARTH mark is entitled to expanded protection as a commercially strong mark under the fifth DuPont factor.

DuPont #6: Conceptual Strength or Weakness of Opposer's Mark

Regarding conceptual strength, the Applicant provided extensive evidence of a "crowded field" of marks using the term "EARTH" for cleaning products. This included 24 use-based third-party registrations and at least ten third parties offering laundry detergent goods for sale under "EARTH"-formative marks.

In response to the Applicant’s argument that the shared term "EARTH" is weak, the Opposer argued that most of the third-party registrations are irrelevant or have limited probative value for various reasons. First, the Opposer noted that some of the registrations are dead or cancelled, are based on foreign registrations, or are owned by the Opposer. The Opposer also argued that twelve of the third-party registrations were filed after Applicant’s filing date and did not exist on the USPTO register, meaning they could not have influenced Applicant’s perception or the state of the register when Applicant filed its applications.

While the Board agreed that cancelled registrations were not probative, it found that the coexistence of these marks, regardless of filing date, supported the Applicant’s argument of a crowded field.

The Opposer also argued that many of the third-party registration should be cast aside because they have other elements making them more dissimilar from the Opposer’s Marks than the Applicant’s Marks, citing cases, such as Specialty Brands, Inc. v. Coffee Bean Distribs. for support.

However, the Board found the case law distinguishable and the argument unavailing. Instead, the Board focused on the extensive evidence of third-party registration and use, concluding that such evidence shows the word "EARTH" (when included in marks for detergent soap, laundry detergent, and similar goods) is desirable to convey an earth-friendly or environmentally conscious message.

Therefore, the Board concluded that "EARTH" is a weak segment of the mark and that consumers are "conditioned to look for differences" in the remaining portions of such marks to distinguish source. This factor weighed strongly against a likelihood of confusion.

DuPont #1: Similarity or Dissimilarity of the Marks

In comparing TRU EARTH to BLUE EARTH, the Board noted that while both shared the weak term "EARTH," the first words were distinct. The sound of "TRU" and "BLUE" shared a long "U" vowel, but were visually different and carried different connotations. BLUE EARTH suggests "keeping our Earth blue" (a healthy sky and water), while TRU EARTH suggests being "genuinely natural" and "true to earth."

In comparing TRU EARTH to CLEAR EARTH, the Board found even greater phonetic and visual differences, as "CLEAR" ends in a consonant and lacks the "U" sound. While both marks might convey a general sense of "authenticity" or "transparency," the Board found that these visual and phonetic distinctions render the marks dissimilar, particularly given the inherent weakness of the shared word "EARTH."

The Board noted that although the degree of similarity necessary to support a likelihood of confusion declines when goods are identical, the differences in the marks here were sufficient to prevent confusion even under this lowered standard.

DuPont Factor #4: Purchase Conditions and Consumer Sophistication

The Opposer argued that laundry detergent is a low-priced, frequently replenished item subject to impulse purchases by unsophisticated consumers. The Applicant argued that environmentally conscious consumers exercise more care.

However, because the applications and registrations were not limited to "environmentally friendly" goods, the Board was required to base its analysis on the least sophisticated potential purchasers. The Board found that because these are ordinary, frequently replenished consumer goods, they are subject to a lesser standard of purchasing care, which weighed slightly in favor of the Opposer.

Board’s Decision

The TTAB dismissed the oppositions against BLUE EARTH and CLEAR EARTH. In balancing the DuPont factors, the Board concluded that the conceptual and commercial weakness of the "EARTH" portion of the marks, combined with the visual and phonetic differences in the prefixes "BLUE," "CLEAR," and "TRU," outweighed the identity of the goods and the overlap in trade channels. The Board held that the marks were not sufficiently similar in their commercial impressions to cause a likelihood of confusion among consumers.