throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1118874
`03/08/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Gardens Alive, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`03/10/2021
`
`230 MARY AVENUE
`GREENDALE, IN 47025
`UNITED STATES
`
`ZICK RUBIN
`ARCHSTONE LAW GROUP P.C.
`57 WELLS AVENUE
`SUITE ONE
`NEWTON, MA 02459
`UNITED STATES
`Primary Email: zrubin@archstonelaw.com
`Secondary Email(s): bulrich@archstonelaw.com, lyee@archstonelaw.com
`781-314-0117
`
`Applicant Information
`
`Application No.
`
`88883208
`
`Publication date
`
`11/10/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`03/08/2021
`
`Opposition Peri-
`od Ends
`
`03/10/2021
`
`SP & RA PTY LTD
`74 RIVERSTONE BLVD
`CLYDE NORTH, VIC, 3978
`AUSTRALIA
`
`Goods/Services Affected by Opposition
`
`Class 021. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: herb storage containers for household use
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4056161
`
`Registration Date
`
`11/15/2011
`
`Application Date
`
`04/08/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GARDENS ALIVE!
`
`NONE
`
`Class 035. First use: First Use: 1988/12/19 First Use In Commerce: 1988/12/19
`Retail store services, online retail store services, mail order services and, tele-
`phone ordering services all featuringlive plants, plant bulbs, seeds, gardensup-
`plies and gardening-related products, pet care supplies, kitchen tools, foodstor-
`age containers, indoor insect traps, indoor and outdoor household cleaning
`products, and pond treatment products
`
`U.S. Registration
`No.
`
`2474693
`
`Registration Date
`
`08/07/2001
`
`Application Date
`
`07/17/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`GARDENS ALIVE!
`
`NONE
`
`Class 001. First use: First Use: 1995/12/04 First Use In Commerce: 1995/12/04
`organic plant foods
`
`U.S. Registration
`No.
`
`1976225
`
`Registration Date
`
`05/28/1996
`
`Application Date
`
`03/14/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`FRUIT TREES ALIVE!
`
`NONE
`
`Class 001. First use: First Use: 1993/10/00 First Use In Commerce: 1993/10/00
`organic plant food and nutrients for fruit trees
`
`U.S. Registration
`No.
`
`1972632
`
`Registration Date
`
`05/07/1996
`
`Application Date
`
`03/14/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`COMPOST ALIVE!
`
`NONE
`
`Class 001. First use: First Use: 1986/03/00 First Use In Commerce: 1986/03/00
`materials useful in the production of gardening mulch, namely compost
`
`U.S. Registration
`No.
`
`1971149
`
`Registration Date
`
`04/30/1996
`
`Word Mark
`
`Design Mark
`
`BULBS ALIVE!
`
`Application Date
`
`03/14/1995
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 001. First use: First Use: 1991/01/00 First Use In Commerce: 1991/01/00
`organic plant food and nutrients for bulbs
`
`U.S. Registration
`No.
`
`1680890
`
`Registration Date
`
`03/31/1992
`
`Application Date
`
`04/23/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TOMATOES ALIVE!
`
`NONE
`
`Class 001. First use: First Use: 1985/01/10 First Use In Commerce: 1985/01/10
`organic plant foods for tomatoes
`
`U.S. Registration
`No.
`
`1673129
`
`Registration Date
`
`01/28/1992
`
`Application Date
`
`04/23/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VEGETABLES ALIVE!
`
`NONE
`
`Class 001. First use: First Use: 1985/01/10 First Use In Commerce: 1985/01/10
`organic plant foods for vegetables
`
`U.S. Registration
`No.
`
`1672719
`
`Registration Date
`
`01/21/1992
`
`Application Date
`
`04/23/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`TURF ALIVE!
`
`NONE
`
`Class 031. First use: First Use: 1988/01/10 First Use In Commerce: 1988/01/10
`grass seed
`
`U.S. Registration
`No.
`
`1669965
`
`Registration Date
`
`12/31/1991
`
`Application Date
`
`04/23/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`HOUSEPLANTS ALIVE!
`
`NONE
`
`Class 001. First use: First Use: 1985/01/10 First Use In Commerce: 1985/01/10
`organic plant foods and nutrients for houseplants
`
`

`

`Attachments
`
`Notice of Opposition.pdf(137308 bytes )
`
`Signature
`
`Name
`
`Date
`
`/zickrubin/
`
`ZICK RUBIN
`
`03/08/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`GARDENS ALIVE, INC.,
`
`
`Opposer,
`
`
`
`v.
`
`
`SP & RA PTY LTD,
`
`
`Applicant.
`
`
`
`
`
`
`Opposition No.:
`
`
`Application Serial No. 88883208
`Mark: PLANTSALIVE and Design
`
`
`
`
`
`
`
`
`Notice of Opposition
`
`Opposer Gardens Alive, Inc. (“Opposer”), a Delaware corporation, located at 230 Mary
`
`Avenue, Greendale, Indiana 47025, believes that it will be damaged by U.S. Application Serial
`
`No. 88883208, filed with the United States Patent and Trademark Office on April 22, 2020 by
`
`Applicant SP & RA PTY LTD (“Applicant”), an Australian private limited company located at
`
`74 Riverstone Boulevard, Clyde North, VIC Australia 3978, for the trademark PLANTSALIVE
`
`and Design. Opposer hereby opposes Applicant’s application to register PLANTSALIVE and
`
`Design and, as grounds for the Opposition, alleges:
`
`Opposer’s Goods and “Gardens Alive!” Family of Marks
`
`1.
`
`Opposer is a national lawn, plant, and garden supply company that sells its
`
`products under a family of “______ ALIVE!” including the federally registered marks
`
`GARDENS ALIVE!, HOUSEPLANTS ALIVE!, VEGETABLES ALIVE!, TURF ALIVE!,
`
`TOMATOES ALIVE!, COMPOST ALIVE!, BULBS ALIVE!, and FRUIT TREES ALIVE!.
`
`Opposer has continuously marketed and sold since at least as early as 2011, in connection with
`
`

`

`
`
`
`the GARDENS ALIVE! mark, a variety of containers for growing and storing plants, vegetables,
`
`and herbs, including dehydrators, microgreen growing kits, and garden containers for vegetables
`
`and herbs.
`
`2.
`
`In addition to long-standing common-law rights, Opposer owns the following
`
`registrations for GARDENS ALIVE!, HOUSEPLANTS ALIVE!, and other “_______ ALIVE!”
`
`marks:
`
`
`
`MARK
`
`REG. NO. REG. DATE CLASS
`
`GOODS
`
`GARDENS ALIVE!
`
`4056161
`
`11/15/2011
`
`35
`
`Retail store services,
`online retail store
`services, mail order
`services and,
`telephone ordering
`services all featuring
`live plants, plant
`bulbs, seeds, garden
`supplies and
`gardening-related
`products, pet care
`supplies, kitchen
`tools, food storage
`containers, indoor
`insect traps, indoor
`and outdoor
`household cleaning
`products, and pond
`treatment products.
`
`GARDENS ALIVE! and
`lady bug design
`
`2474693
`
`8/7/2001
`
`1
`
`Organic plant foods.
`
`
`
`
`
`
`
`
`
`FRUIT TREES ALIVE!
`
`1976225
`
`5/28/1996
`
`1
`
`Organic plant food
`and nutrients for
`fruit trees.
`
`
`
`2
`
`

`

`
`
`
`
`
`MARK
`
`REG. NO. REG. DATE CLASS
`
`GOODS
`
`COMPOST ALIVE!
`
`1972632
`
`5/7/1996
`
`BULBS ALIVE!
`
`1971149
`
`4/30/1996
`
`TOMATOES ALIVE!
`
`1680890
`
`3/31/1992
`
`VEGETABLES ALIVE!
`
`1673129
`
`1/28/1992
`
`TURF ALIVE!
`
`1672719
`
`1/21/1992
`
`HOUSEPLANTS
`ALIVE!
`
`1669965
`
`12/31/1991
`
`1
`
`1
`
`1
`
`1
`
`31
`
`1
`
`Materials useful in
`the production of
`gardening mulch,
`namely compost.
`
`Organic plant food
`and nutrients for
`bulbs.
`
`Organic plant foods
`for tomatoes.
`
`Organic plant foods
`for vegetables.
`
`Grass seed.
`
`Organic plant foods
`and nutrients for
`houseplants.
`
`Each of the above registrations is currently valid, subsisting, and incontestable under 15 U.S.C. § 1065.
`
`3.
`
`Opposer has continuously and exclusively used the “______ ALIVE!” marks in
`
`interstate commerce for its lawn, plant, and garden products since as early as 1988.
`
`4.
`
`Opposer has continuously marketed and sold since at least as early as 2011, in
`
`connection with the GARDENS ALIVE! mark, a variety of containers for growing and storing
`
`plants, vegetables, and herbs, including dehydrators, microgreen growing kits, and garden
`
`containers for vegetables and herbs.
`
`5.
`
`Opposer has invested a significant amount of time and expense in promoting its
`
`“______ ALIVE!” marks for lawn, plant, and garden products, including containers for growing
`
`and storing plants, and has thereby gained significant consumer recognition and goodwill for its
`
`“______ ALIVE!” marks.
`
`
`
`
`
`
`
`3
`
`

`

`
`
`
`The Opposed Mark
`
`6.
`
`On April 22, 2020, Applicant applied to register PLANTSALIVE and Design for
`
`“herb storage containers for household use” (Serial No. 88883208).
`
`7.
`
`8.
`
`The application is on an Intent to Use basis, without any claim of actual use.
`
`Applicant’s application to register PLANTSALIVE and Design was published for
`
`opposition in the Official Gazette on November 10, 2020.
`
`9.
`
`On December 1, 2020, Opposer timely requested, and the Board granted, a 90-day
`
`extension of time to oppose Applicant’s application.
`
`Likelihood of Confusion
`
`10.
`
`Opposer began using the “_____ ALIVE!” marks for lawn, plant, and garden
`
`products at least as early as 1988 and has continuously used the marks since then. Opposer
`
`began using the HOUSPLANTS ALIVE! mark for organic plant foods and nutrients for
`
`houseplants at least as early as 1988 and has used the mark continuously since that time.
`
`11.
`
`Opposer has been selling containers for growing and storing plants, in connection
`
`with the GARDENS ALIVE! mark, since at least as early as 2011.
`
`12.
`
`Applicant’s PLANTSALIVE and Design mark is likely to cause confusion with
`
`Opposer’s “_____ ALIVE!” marks.
`
`13.
`
`Applicant’s PLANTSALIVE and Design Mark is closely related to Opposer’s
`
`“________ ALIVE!” marks in terms of sight, sound, meaning, and commercial impression.
`
`14.
`
`Applicant’s PLANTSALIVE and Design Mark is very similar to Opposer’s
`
`HOUSEPLANTS ALIVE! mark in terms of sight, sound, meaning, and commercial impression.
`
`Indeed, the word portion of Applicant’s PLANTSALIVE and Design mark completely overlaps
`
`Opposer’s HOUSEPLANTS ALIVE! mark.
`
`
`
`4
`
`

`

`
`
`
`15.
`
`The goods that Applicant intends to offer under the PLANTSALIVE and Design
`
`mark are closely related to the goods that Opposer has offered for many years under the “______
`
`ALIVE!” marks. Both Applicants intended goods and Opposer’s goods, as well as Opposer’s
`
`sales services, include garden supply and plant supply products. Moreover, Opposer has sold for
`
`at least the past decade, in connection with the GARDENS ALIVE! mark, a variety of containers
`
`for growing and storing plants, vegetables, and herbs, including dehydrators, microgreen
`
`growing kits, and garden containers for vegetables and herbs. These containers are closely
`
`related to the “herb storage containers for household use” that Applicant intends to sell in
`
`connection with the PLANTSALIVE & Design mark.
`
`16.
`
`Applicant’s and Opposer’s goods are normally marketed within the same or
`
`similar channels of trade and to the same types of consumers. If successful, Applicant’s attempt
`
`to register a nearly identical mark to one used by Opposer will create a dangerous legal
`
`presumption in Applicant’s favor harming Opposer’s ability to fairly compete in the
`
`marketplace.
`
`17.
`
`Consumers are likely to be confused as to the origin and/or sponsorship of
`
`Applicant’s PLANTSALIVE-branded goods and to be misled into believing such goods are
`
`marketed by, or are in some way directly or indirectly associated with Opposer when they are
`
`not, thereby resulting in damage to Opposer, causing it to lose control of its reputation and
`
`goodwill in the “_______ ALIVE!” marks.
`
`18.
`
`Therefore, registration of Applicant’s PLANTSALIVE and Design mark should
`
`be refused under Section 2(d) of the Lanham Act as being inconsistent with Opposer’s
`
`established trademark rights under the aforementioned registrations and the common law.
`
`
`
`
`
`5
`
`

`

`
`
`
`
`
`WHEREFORE, Opposer prays that its opposition be sustained and registration be denied
`
`Prayer
`
`and refused for Applicant’s PLANTSALIVE and Design mark.
`
`
`
`Opposer hereby appoints as its attorneys in this proceeding: Zick Rubin and Brenda M.
`
`Ulrich, who are each members of the Bar of the Commonwealth of Massachusetts and of the
`
`firm Archstone Law Group P.C., 57 Wells Avenue, Suite One, Newton, Massachusetts 02459.
`
`
`
`Dated: March 8, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ARCHSTONE LAW GROUP P.C.
`
`By:
`
` /Zick Rubin/
`
`
`
`
`
`
`
`
`
`
`
`
`Zick Rubin
`Brenda M. Ulrich
`
`Attorneys for Opposer
`Gardens Alive, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`

`
`
`
`
`
`Certificate of Transmission
`
`I hereby certify that a true and correct copy of the attached Notice of Opposition (Serial
`
`No 88883208) is being electronically transmitted to the Trademark Trial and Appeal Board on
`
`March 8, 2021.
`
`
`
`
`
`
`
` /Zick Rubin /
`
` Zick Rubin
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`

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