91291336•Spring Meadow Nursery, Inc. v. The Conard-Pyle Company
Full text
THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: January 12, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Spring Meadow Nursery, Inc. v. The Conard-Pyle Company _____ Opposition No. 91291336 _____ Brian D. Wassom of Warner Norcross + Judd LLP, for Spring Meadow Nursery, Inc. Keith A. Jones of Panitch Schwarze Belisario & Nadel LLP, for The Conard-Pyle Company. _____ Before Lebow, Elgin, and Brock, Administrative Trademark Judges. Opinion by Elgin, Administrative Trademark Judge: In this modern-day War of the Roses, The Conard-Pyle Company (“Applicant”) seeks a registration of the standard character mark EASY BEE-ZY KNOCK OUT on the Principal Register in connection with “live plants” in International Class 31.1 1 Application Serial No. 97912429 was filed on April 28, 2023 based upon Applicant’s claim of first use anywhere since at least as early as January 2023 and first use in commerce since at least as early as March 2023 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Opposition No. 91291336 - 2 - Spring Meadow Nursery, Inc. (“Opposer”) filed a Notice of Opposition against registration of Applicant’s mark based on likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).2 In support of its claim, Opposer pleaded ownership of eight prior-used and registered EASY-formative marks.3 Applicant denied the salient allegations of the Notice of Opposition in its Answer.4 As discussed below, the parties agreed to conduct this proceeding via Accelerated Case Resolution (“ACR”). We have considered the evidence of record and arguments made by the parties. For the reasons set forth below, we dismiss the opposition. I. ACR Stipulation and Motion to Strike Reply Brief As noted, the parties agreed to conduct this proceeding via the streamlined ACR process. On March 13, 2025, the parties submitted to the Board a Joint Stipulation to Proceed Via Accelerated Case Resolution (the “Stipulation”).5 In the Stipulation, the parties stated that they “seek to avoid a formal trial altogether by stipulating that summary judgment style briefs and accompanying declarations and evidence be treated as the final record and briefs in the case.”6 The parties stipulated that they 2 Opposer also selected the claims of dilution by blurring and dilution by tarnishment on the ESTTA cover sheet, see 1 TTABVUE 1. There were no allegations in the notice of opposition directed to the dilution claims, and Opposer did not assert the claims at trial. Accordingly, the claims are both insufficiently pleaded and impliedly waived. Citations in this opinion to the briefs and other materials in the case docket refer to TTABVUE, the Board’s online docketing system. See New Era Cap Co. v. Pro Era, LLC, No. 91216455, 2020 TTAB LEXIS 199, at *1-5 n.1. 3 1 TTABVUE 7. 4 See 4 TTABVUE. 5 8 TTABVUE. 6 Id. at 2.
Opposition No. 91291336 - 3 - would forgo trial, and “the … briefs, and all accompanying declarations and evidence, be treated as the final record and briefs in the case…” with briefs due on dates specified in Paragraph 1 of the stipulation.7 Further, they agreed that: • “[T]he final record should include only the briefs listed in Paragraph 1 and any declarations and evidence submitted therewith.” • “[T]he declarations and evidence submitted with the briefs [will] be treated as properly of record for purposes of final decision.” • “The parties consent to the Board’s resolution of any and all disputed issues of material fact and to the Board’s rendering of a final decision based on the briefs and evidence presented.” Id. The Board granted the Stipulation as requested.8 The parties thereafter filed briefs and evidence in accordance with agreed-upon revised schedules, with Opposer’s reply brief filed on August 13, 2025.9 On August 25, 2025, Applicant moved to strike Opposer’s reply ACR brief as overlength.10 Applicant argues that summary judgment-style ACR reply briefs may not exceed ten pages, yet Opposer’s ACR reply brief is sixteen pages, including a table 7 Id. at 2-3. 8 9 TTABVUE. 9 Opposer’s ACR brief and evidence are at 12, 13, 14 (confidential), and 15 TTABVUE. Opposer did not file confidential and public versions of its brief, instead choosing to omit any confidential information from its single filing. Applicant’s ACR brief and evidence are at 18 (confidential brief), 19 TTABVUE (public brief and exhibits), and 20 TTABVUE (confidential exhibit) TTABVUE. Opposer’s reply ACR brief and evidence are at 21 TTABVUE. 10 22 TTABVUE.
Opposition No. 91291336 - 4 - of contents and index of cases.11 See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a) (maximum page counts include table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary). Although parties may stipulate to variations of trial rules in ACR proceedings, such as briefing page limits, they did not do so here. In response, Opposer does not contest the assertion that its ACR reply brief is overlength. Instead, it argues that: the rule regarding striking of rebuttal briefs at trial does not apply; it should be allowed to file a conforming substitute ACR reply brief; and regardless, the Board should consider the evidence attached to the reply brief.12 Although not titled as such, we construe Opposer’s request to file conforming brief as a cross-motion to file a substitute reply brief.13 In reply (and in opposition to Opposer’s argument that it should be allowed to file an amended reply brief), Applicant maintains that the Board should strike the overlength brief and not grant leave to refile. However, “Applicant notes that it does not object to the Board considering the evidence submitted with Opposer’s reply brief.”14 11 Id. at 3. 12 23 TTABVUE. 13 In general, all motions should be filed separately, or at least be captioned separately, to ensure they receive attention. A party should not embed a motion in another filing that is not routinely reviewed by the Board upon submission. See Melwani v. Allegiance Corp., No. 91190682, 2010 TTAB LEXIS 443, at *13 n.15; see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 502.02 (2025). 14 24 TTABVUE 3 n.1.
Opposition No. 91291336 - 5 - In Rasa Vineyards, LLC v. Rasavada, LLC, No. 91268532, 2022 TTAB LEXIS 296, the Board found that “[w]here the parties have stipulated to the submission of briefs in summary judgment format, that is, the form of a summary judgment motion, Trademark Rule 2.127(a) provides a page limitation, briefs in support and briefs in response … are limited to 25 pages and a reply brief shall not exceed 10 pages in length.”15 Id. at *3-4; see also TBMP § 528.05(a)(2) (“The page limitation for briefs under the summary judgment model of ACR is the same limitation as briefs on any motion, including summary judgment.”). In Rasa Vineyards, as here, “[t]he parties clearly stipulated to submission of their briefs in summary judgment format and the page limits of a motion for summary judgment apply.” Id. at *4. The Board struck the opposer’s 41-page main ACR brief, but allowed the party to resubmit a brief limited to 25 pages. Opposer does not dispute that its rebuttal ACR brief is overlength. In this case, even if we could, we would not exercise our discretion to consider the overlength brief. If we removed the three pages for the optional table of contents, and index of cases, the reply brief would still exceed ten pages. Accordingly, we grant Applicant’s motion to strike the reply brief and it has received no consideration.16 Saint-Gobain, 2003 TTAB LEXIS 90, at *6. 15 Trademark Rule 2.127(a) does not require a table of contents or index of cases in a summary judgment brief. Saint-Gobain Corp. v. Minn. Mining and Mfg. Co, No. 91119166, 2003 TTAB LEXIS 90, at *5. But, if a party elects to include these items, as Opposer did here, the additional pages are considered in the page count. Id. We do not count the ESTTA cover sheet or the separate certificate of service toward the page limit. 16 Although we have not considered Opposer’s reply brief, we confirm that it would not have mattered in this case, as we would have reached the same result with or without the brief.
Opposition No. 91291336 - 6 - Turning to Opposer’s construed cross-motion to file a conforming brief, unlike Rasa Vineyards which concerned an overlength main ACR brief, the present motion concerns a reply brief. Trademark Rule 2.127 provides that the time for filing a reply brief (including on a summary judgment motion) will not be reopened or extended. Accordingly, we deny Opposer’s cross-motion for leave to refile a reply brief which conforms to the page limitation in Trademark Rule 2.127(a). However, the Board has discretion to consider evidence submitted with a timely- filed but overlength brief. Mattel, Inc. v. Brainy Baby Co., LLC, No. 92052047, 2011 TTAB LEXIS 400, at *3. Applicant concedes the point. Accordingly, we have considered the evidence submitted with Opposer’s reply brief. II. The Record The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed application. Opposer made of record the following evidence with its main ACR brief: • Certificates of Registration for nine marks “on which Opposer relies,” accompanied by partial Trademark Status & Document Retrieval (TSDR) records (Exhibit A);17 • Declaration of Jeremy Deppe, Opposer’s General Manager and President of Great Garden Plants, Inc. (a plant nursery in Grand Haven, Michigan), and exhibits (Exhibit B);18 17 13 TTABVUE 26-61. 18 Id. at 62-91 (Exh. B, B-1, B-3, B-5); 14 TTABVUE (Exhs. B-2 and B-4, confidential); 15 TTABVUE (Exh. B-6); and 12 TTABVUE 2-71 (Exh. B-6 (cont’d) and B-7). Certain pages in 15 TTABVUE display the warning: “No image available for this record.” 15 TTABVUE 4, 6, 8, 9, 11, 12. It is the responsibility of the party making submissions to the Board via the electronic database to ensure that the testimony or evidence has, in fact, been properly made of record. See, e.g., Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., No. 92050879, 2013
Opposition No. 91291336 - 7 - • Declaration of Dale Deppe, Opposer’s President (Exhibit C);19 • Declaration of Tim Wood, Opposer’s Product Development and Marketing Manager (Exhibit D);20 • Applicant’s Responses and Objections to Discovery Requests (Exhibit E);21 • Excerpts from Applicant’s advertising and social media pages (Exhibit F)22 and website (Exhibit G);23 • Excerpts from third-party retail websites and articles advertising both parties’ goods (Exhibit H)24 and • An advertisement mentioning Applicant’s products (Exh. I).25 Applicant made of record the following evidence with its main ACR brief: • Declaration of David Watkins, Director of Compliance and Administration for Star Roses and Plants (the name under which Applicant does business) and Applicant’s Secretary and Treasurer;26 • Declaration of Keith A. Jones, Applicant’s counsel, and exhibits (including evidence relating to third-party marks; Applicant’s supplemental responses to Opposer’s interrogatories; and excerpts from the parties’ websites).27 TTAB LEXIS 347, at *25 n.16 (“the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board”). 19 12 TTABVUE 87-90. 20 Id. at 91-94. 21 Id. at 95-123. 22 Id. at 124-41. 23 Id. at 142-45. 24 Id. at 146-71. 25 Id. at 172-73 26 19 TTABVUE 30-33. 27 Id. at 34-122 (public); 20 TTABVUE (confidential). See note 90, infra, regarding the interrogatory responses.
Opposition No. 91291336 - 8 - With its reply brief, Opposer made of record TSDR records for nine OSO EASY and EASY formative marks (Exhibit J), identified as “a revised version of Exhibit A that is updated for clarity.”28 This is evidence that should have been made of record with Opposer’s case-in-chief, but as noted above, we consider it because Applicant conceded as such.29 We recognize one significant issue with Opposer’s evidence: Opposer pleaded ownership of eight prior-used and registered EASY-formative marks, all in standard characters: OSO EASY PEASY for “Live plants excluding barley and peas in any form”; OSO EASY for “Live plants”; OSO EASY ITALIAN ICE for “Live plants excluding barley and melon in any form”; OSO EASY LEMON ZEST for “Live plants, namely, woody ornamental plants”; OSO EASY DOUBLE RED for “Live plants, namely, roses”; OSO EASY ICE BAY for “Live plants”; BIG EASY for “Live plants”; and LET’S DANCE BIG EASY for “Live plants.” At trial, Opposer made of record the registrations for all of these except BIG EASY. Opposer also made of record two registrations for unpleaded marks: OSO EASY EN FUEGO for “Live plants” and OSO EASY RED STRIPE for “Live plants, namely, roses.” We may consider claims based on the unpleaded registrations only if we deem them to be tried by implied consent. “The question of whether an issue was tried by implied consent is basically one of fairness.” Morgan Creek Prods. v. Foria Int’l Inc, No. 91173806, 2009 TTAB LEXIS 445, at *16. Accordingly, consent to the trial of an 28 21 TTABVUE 20-29. 29 See text accompanying note 14, supra (“Applicant notes that it does not object to the Board considering the evidence submitted with Opposer’s reply brief.”).
Opposition No. 91291336 - 9 - unpleaded issue can be found only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue. Id. at *11. Here, Applicant objected: “Two of [the nine registrations] (OSO EASY EN FUEGO and OSO EASY RED STRIPE) were not listed in the Notice of Opposition and should not be considered.”30 Accordingly, we have not considered these registrations. Nor have we considered the pleaded registration for BIG EASY, which was not made of record or relied upon by Opposer at trial. This leaves the following seven registrations of record: OSO EASY PEASY; OSO EASY; OSO EASY ITALIAN ICE; OSO EASY LEMON ZEST; OSO EASY DOUBLE RED; OSO EASY ICE BAY; and LET’S DANCE BIG EASY. There are other significant issues with the evidence of record, but we are capable of weighing its strength or weakness, including any inherent limitations. We accord the evidence whatever probative value it merits, and, as necessary and appropriate, point out any limitations applied to the evidence or otherwise note that the evidence cannot be relied upon in the manner sought. Cf. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., No. 92050879, 2013 TTAB LEXIS 347, at *11, aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014); Krause v. Krause Publ’ns Inc., No. 92041171, 2005 TTAB LEXIS 487, at *10 (“Where we have relied on testimony to which respondent objected, it should be apparent to the parties that we have deemed the material both admissible and probative to the extent indicated in the opinion.”). 30 19 TTABVUE 11 n.3.
Opposition No. 91291336 - 10 - III. Entitlement to a Statutory Cause of Action To establish statutory entitlement to oppose under Trademark Act Section 13, 15 U.S.C. § 1063, Opposer must demonstrate a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1372 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1275 (Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012). Opposer made of record printouts from the TSDR electronic database demonstrating that it owns the seven active registrations for EASY and OSO EASY formative marks for live plants discussed above for the live plants identified in each registration. In addition, Opposer’s witness Jeremy Deppe testified that Opposer has used the OSO EASY mark in U.S. commerce “consistently since 2006” on a line of rose bushes and confirmed that the dates of first use identified in the registrations for each of Opposer’s marks are accurate.31 This evidence supports Opposer’s plausible likelihood of confusion claim against the involved application, showing its real interest in this proceeding and a reasonable basis for its belief of damage. Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 TTAB LEXIS 228, at *19 (pleaded registrations demonstrate entitlement to bring Section 2(d) claim). Moreover, Applicant conceded Opposer’s entitlement to a statutory cause of action.32 31 See J. Deppe Decl. ¶¶ 8-10 (13 TTABVUE 64-65). 32 See 19 TTABVUE 9 n.1 (“Conard-Pyle does not contest Spring Meadow’s right to a statutory cause of action or the priority of its marks.”).
Opposition No. 91291336 - 11 - We find that Opposer has established its entitlement to assert the claim in this proceeding by a preponderance of the evidence. IV. Priority In the absence of evidence establishing earlier use of its marks, Opposer may rely for priority purposes on the constructive use filing dates of the underlying applications for its seven registrations, which range from November 6, 2008 (OSO EASY) to September 19, 2018 (LET’S DANCE BIG EASY). Trademark Act Section 7(c), 15 U.S.C. § 1057(c); see also Brewski Beer Co. v. Brewski Bros. Inc., No. 92021735, 1998 TTAB LEXIS 116, at *10, cited in Tao Licensing, LLC v. Bender Consulting Ltd., No. 92057132, 2017 TTAB LEXIS 437, at *11. Because all of these dates are prior to the filing date of Applicant’s application (April 28, 2023) and because Applicant does not contest priority,33 we find that Opposer has proven by a preponderance of the evidence that Opposer has priority in the marks OSO EASY PEASY; OSO EASY; OSO EASY ITALIAN ICE; OSO EASY LEMON ZEST; OSO EASY DOUBLE RED; OSO EASY ICE BAY; and LET’S DANCE BIG EASY for the goods listed in those registrations. V. Likelihood of Confusion Factors Section 2(d) of the Trademark Act prohibits registration of a mark that is “likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive” with the opposer’s prior-used mark. Our 33 See supra note 32. Thus, we need not address the evidence of earlier use of Opposer’s marks as set forth in the Jeremy Deppe declaration.
Opposition No. 91291336 - 12 - determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). Opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 951 (Fed. Cir. 2000). We consider the likelihood of confusion factors for which there is evidence and argument, see In re Guild Mortg. Co., 912 F.3d 1376, 1380 (Fed. Cir. 2019), but “[n]ot all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns, Inc., 955 F.3d 994, 999 (Fed. Cir. 2020) (citing In re Dixie Rests., 105 F.3d 1405, 1407 (Fed. Cir. 1997)). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services under the first and second DuPont factors. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (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.”). We focus our inquiry on two of Opposer’s standard-character marks: OSO EASY for “live plants” and OSO EASY PEASY for “live plants excluding barley and peas in any form,” because these marks and the associated goods are most similar to Applicant’s mark and goods. If we find a likelihood of confusion as to either of these
Opposition No. 91291336 - 13 - marks and the associated goods, we need not find it as to Opposer’s other marks. Conversely, if we do not find a likelihood of confusion as to either of these marks, we would not find it as to Opposer’s other marks. See Sock It to Me v. Fan, No. 91230554, 2020 TTAB LEXIS 201, at *20-21 (confining likelihood of confusion analysis to most similar pleaded mark); In re Max Cap. Grp. Ltd., No. 77186166, 2010 TTAB LEXIS 1, at *5 (same). A. Fifth and Sixth Factors: Strength or Weakness of Opposer’s Marks Before comparing the marks, we address Opposer’s argument that its marks are commercially and conceptually strong, and Applicant’s counter-argument that Opposer’s marks are weak and entitled to a narrow scope of enforcement. “Two of the DuPont factors (the fifth and sixth) consider strength.” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023). The fifth DuPont factor concerns “[t]he fame of the prior mark (sales, advertising, length of use),” whereas the sixth DuPont factor allows Applicant to contract that scope of protection by adducing evidence of weakness of the mark through “[t]he number and nature of similar marks in use on similar goods.” DuPont, 476 F.2d at 1361.34 1. Fifth Factor: Fame The fame (or commercial strength) of a mark under the fifth factor is relevant to the likelihood-of-confusion analysis because “[a] mark with extensive public 34 Applicant contends that Opposer did not present argument supporting the fame of its marks under the fifth factor and therefore “that factor does not favor it.”29 TTABVUE 23-24. As we discuss below, we find evidence and argument relating to both factors in the parties’ briefs.
Opposition No. 91291336 - 14 - recognition and renown deserves and receives more legal protection than an obscure or weak mark.” Omaha Steaks Int'l, Inc. v Greater Omaha Packing Co., 908 F.3d 1315, 1319 (Fed. Cir. 2018) (quoting Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992)). Such strength rests on the extent to which “a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards Holdings, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1324-25 (Fed. Cir. 2017) (citing Palm Bay, 396 F.3d at 1374-75). In this context, “the strength of a mark is not a binary factor, but varies along a spectrum from very strong to very weak.” In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003); see also Joseph Phelps Vineyards, 857 F.3d at 1325 (same). In assessing commercial strength or fame, we may consider direct evidence such as consumer surveys or declarations; and indirect evidence including the volume of sales and advertising expenditures in connection with the identified goods sold under the mark; the length of time the mark has been in use; widespread critical assessments; notice by independent sources of the goods offered under the marks; the general reputation of the goods; and social media presence. Heil Co. v. Tripleye GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *51 (citation omitted); Weider Publ’ns, LLC v. D & D Beauty Care Co., No. 91199352, 2014 TTAB LEXIS 2, at *18- 19; see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength). Opposer presented evidence and argument about the “commercial strength” of its mark, which we deem relevant to relevant to the question of commercial strength or
Opposition No. 91291336 - 15 - fame under the fifth DuPont factor. Applicant did not address this evidence in its brief. First, Opposer relies on third-party recognition in the form of “endorsements of the plants sold under Opposer’s Marks for use in gardens and landscaping from various publications and award-granting entities.”35 Mr. Deppe referred to “Awards of Excellence based on independent trials and evaluations,” and specifically, for the OSO EASY PEASY brand rose bushes, Winner of the 2024 A.R.T.S. Master Rose award, recipient of the Volunteers of America Best Shrub rose by the American Rose Center International Rose Trials, and Winner of the American Rose Society Award of Excellence.36 The exhibits submitted in support of these statements are advertisements by Proven Winners, by which Opposer “is exclusively licensed to select, develop, distribute, and market shrubs for the [PROVEN WINNERS] brand.”37 The advertisements tout Proven Winners’ “Awards of Excellence” for the OSO EASY brand roses (2012 – OSO EASY PETIT PINK; 2016 – OSO EASY LEMON ZEST; 2017 – OSO EASY PEASY; 2019 – OSO EASY URBAN LEGEND; and 2021 – OSO EASY DOUBLE PINK).38 Opposer also presented other examples of advertising in various publications, and Mr. Deppe testified: Spring Meadows advertises its plants in brochures, on its website, through the websites of affiliated companies, and all other customary channels, including social media, digital ads (such as Sponsored Ads and banner ads, in 35 13 TTABVUE 21. 36 Id. at 64, 65 (J. Deppe Decl. ¶¶ 8, 10). 37 Id. at 63 (J. Decl. ¶ 5). 38 Id. at 75-78 (J. Deppe Decl. Exh. B-1).
Opposition No. 91291336 - 16 - photographic and videographic form), television ads, radio ads, and print ads.39 …. Each year, Spring Meadow’s advertising features (among other things) its “Shrubs of the Year,” including “Rose of the Year.” In 2024, Spring Meadow promoting the rose shrub sold under the OSO EASY PEASY® brand name as its Rose of the Year.40 …. Our hundreds of thousands of social media followers inevitably get inspired by these promotions. In addition, we run a host of digital ads plus radio, podcasts, streaming video, and print ads prominently featuring the chosen shrub. OSO EASY PEASY® received this treatment. Examples are included among the advertisements in Exhibit 6.41 We also promoted OSO EASY PEASY® as the 2024 Rose of the Year at live trade events using such promotional materials as signs, standing displays, and stickers for distribution. Receipts for these materials are contained in Exhibit 7.42 OSO EASY® DOUBLE RED was the 2020 Rose of the Year, and OSO EASY® ITALIAN ICE was the 2021 Rose of the Year.43 Opposer submitted many copies of advertisements for plants sold under OSO EASY-formative marks in various media, but we have no information as to the 39 Id. at 68-69 (J. Deppe Decl. ¶ 18). 40 Id. at 69 (J. Deppe Decl. ¶ 22). 41 Id. at 70 (J. Deppe Decl. ¶ 22). 42 Id. (J. Deppe Decl. ¶ 23). 43 Id. (J. Deppe Decl. ¶ 25).
Opposition No. 91291336 - 17 - circulation of any of these advertisements in the United States.44 Mr. Deppe testified generally about Opposer’s marketing efforts as follows: The concept of marketing plants directly to the consumer at scale through brands has really only happened to any meaningful degree over the past thirty years. It started small and has grown like a snowball, picking up speed over time. Sure, anyone can market plants via social media or a website searching for organic reach and growth. Anyone can spend some marketing dollars to advertise to trade partners and wholesale customers. But the amount of dollars being spent both by the Applicant and Opposer are significant when it comes to marketing directly to the consumer. Gardeners today are more aware of individual plants names than ever before. Marketing to the consumer drives demand to the garden center looking for individual plants in specific brand containers.45 Mr. Deppe provided confidential marketing figures for “OSO EASY PEASY” and “OSO EASY (excluding PEASY),” each in the low six figures.46 There is no information on the exhibit or in testimony indicating the time period of these expenditures.47 Mr. Deppe, however, attempted to place Opposer’s marketing expenditures somewhat in context: “Applicant and Opposer have the two largest consumer marketing budgets for roses in the industry. Roses are a top ten-selling plant for the Opposer.”48 44 See, e.g., 13 TTABVUE 80-88 (Exh. B-3, B-4), 15 TTABVUE (Exh. B-6); 12 TTABVUE 2-70 (Exh. B-6, cont’d) 45 13 TTABVUE at 68 (J. Deppe Decl. ¶ 17). 46 Id. at 71 (confidential). 47 See id. at 68 (J. Deppe Decl. ¶ 16) (“A summary of Spring Meadow’s marketing and promotional expenses, sales volumes, and sales revenue for each of Opposer’s Marks is attached as Exhibit 2 (Sealed)….”). 48 Id. (J. Deppe Decl. ¶ 17).
Opposition No. 91291336 - 18 - Opposer’s testimony and evidence show some strength of the OSO EASY formative marks, but the probative value of this evidence is tempered because we do not know the exact extent or reach of Opposer’s activities including whether they have actually enhanced consumer recognition of the OSO EASY-formative marks. See Made in Nature, 2022 TTAB LEXIS 228, at *38-39 (“Opposer did not provide evidence regarding the extent or reach of these activities (e.g., the volume and geographical extent of the readership of the print media in which Opposer’s advertisements and flyers have appeared … and the length of time over which these advertisements have been placed.”). The advertisements made of record are in gardening magazines and trade publications such as Digger, Nursery Management, Michigan Landscape, The English Garden, L&GR Lawn and Garden Retailer, Fine Gardening, Green Profit, Garden Gate, Triangle Gardener, American Rose, Gateway Gardener, Growsmith, The Buckeye Magazine, Landscape Trades, and Garden Center, and we have not been provided with the circulation of these publications or target audiences.49 The marketing numbers are not so large that we could impute widespread recognition of the pleaded marks amongst relevant consumers: the general public who buy plants. Mr. Deppe also provided confidential figures for Opposer’s sales units — presumably individual shrubs — from 2014-2024 for nineteen of Opposer’s OSO EASY formative marks combined (including non-pleaded marks).50 These figures 49 13 TTABVUE 83-87 (J. Deppe Decl. Exh. B-3); 12 TTABVUE 3-70 (id. Exh. B-6). 50 14 TTABVUE 2-3 (J. Deppe. Decl. Exh. B-2) (confidential). These are identified as: Rosa OSO EASY EN FUEGO®; Rosa OSO EASY® PETIT PINK; Rosa OSO EASY ITALIAN ICE®; Rosa OSO EASY ICE BAY®; Rosa OSO EASY® CHERRY PIE; Rosa OSO EASY® URBAN LEGEND®; Rosa OSO EASY LEMON ZEST®; Rosa OSO EASY RED STRIPE™; Rosa OSO EASY DOUBLE RED®; Rosa OSO EASY® DOUBLE PINK; Rosa OSO EASY PEASY®; Rosa
Opposition No. 91291336 - 19 - total in the mid-seven figures.51 Mr. Deppe also provided revenue figures for these same products, but what appears to be a spreadsheet is split across multiple pages without sufficient columns and headings (and not summarized in testimony or in Opposer’s brief). Because we found the numbers difficult (if not impossible) to accurately track and total, we give the data less probative weight.52 To the extent the numbers are probative, again we have no basis of comparison with similar products.53 Raw figures, unless they are extraordinarily large – which is not the case with Opposer’s numbers – are not sufficient by themselves to establish that a mark is strong. See Fossil, Inc. v. Fossil Grp., No. 91098191, 1998 TTAB LEXIS 388, at *20 (citing Gen. Mills Inc. v. Health Valley Foods, No. 91076303, 1992 TTAB LEXIS 37, at *22-23). We conclude that Opposer has not established that it is entitled to a broadened scope of protection of its pleaded OSO EASY or OSO EASY PEASY marks. The fifth Dupont factor is neutral. OSO EASY® PINK CUPCAKE; Rosa OSO EASY® FRAGRANT SPREADER; Rosa OSO EASY® PAPRIKA Rosa OSO EASY® PEACHY CREAM; Rosa OSO EASY® STRAWBERRY CRUSH Rosa OSO EASY® HONEY BUN; Rosa OSO EASY® MANGO SALSA; and Rosa OSO EASY® HOT PAPRIKA®. 51 14 TTABVUE 3 (confidential). 52 Id. at 5-10. 53 Applicant also made of record its own unverified supplemental interrogatory responses with “Knockout Family Revenues,” including “Easy-Beezy Revenues.” 19 TTABVUE 112 (Jones Decl. Exh. Q, public); 20 TTABVUE 12 (confidential Exh. Q)) This was improper. 37 C.F.R. § 2.120(k). No witness verified the truth of these responses during trial. See Icon Health & Fitness, Inc. v. Eifit LLC, No. 91264393, 2022 TTAB LEXIS 119, at *14 (Trademark Rule 2.120(k) does not preclude a party’s offering of its interrogatory response as an exhibit to trial testimony regarding veracity of responses). We have not considered these responses; but even if we had, it has limited probative value because the data is not limited to U.S. sales. 20 TTABVUE 10 (Exh. Q).
Opposition No. 91291336 - 20 - 2. Sixth Factor: Conceptual and Commercial Strength or Weakness of Opposer’s Marks “There are two prongs of analysis for a mark’s strength under the sixth factor: conceptual strength and commercial strength.” Spireon, 71 F.4th at 1362 (internal citations omitted)); accord, Made in Nature, 2022 TTAB LEXIS 228, at *24. a. Conceptual Strength or Weakness Conceptual strength, or inherent strength, is a measure of a mark’s distinctiveness, ranging from generic to fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Because Opposer’s OSO EASY and OSO EASY PEASY marks issued on the Principal Register without a claim of acquired distinctiveness, the marks are presumed to be inherently distinctive as to the goods listed in the registration. 15 U.S.C. § 1057(b); Made in Nature, 2022 TTAB LEXIS 228, at *24 (citing Tea Bd. of India v. Republic of Tea, Inc., No. 9118587, 2006 TTAB LEXIS 330, at *62 (“A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”)). Opposer asserts that its OSO EASY marks are “clearly arbitrary as applied to live plants,” while inconsistently conceding that the marks “convey a sense of ease….”54 Opposer argues in the alternative that “[e]ven if the EASY element of Opposer’s marks is deemed to carry a double entendre by also suggesting that Opposer’s plants 54 13 TTABVUE 19-20.
Opposition No. 91291336 - 21 - are low-maintenance, that still renders the mark, at worst, suggestive; it is not a descriptive element.”55 Opposer also made of record evidence from Dictionary.com’s slang dictionary regarding the meaning of the phrase “easy peasy lemon squeezy” as “a playful way to describe a task or activity as extremely easy or simple to perform …. an elaboration on easy-peasy, likewise meaning ‘extremely easy or simple.’”56 Applicant counters that OSO EASY and OSO EASY PEASY describe Opposer’s plants as “EASY or OSO EASY to grow and maintain. While [the marks] undoubtedly have some distinctive value on the whole, their use of EASY is highly suggestive and conceptually weak.57 Applicant also made of record evidence it claims demonstrates that third parties use EASY with a normally understood and well-recognized descriptive or suggestive meaning as to live plants and related goods. First, Applicant provided abstracted search results from the USPTO Trademark Search database, showing 108 active EASY-formative registrations within international class 31 (natural agriculture products).58 An excerpt is shown below: 55 Id. at 20. 56 Id. at 89-91 (Exh. B-5). A note to the entry indicates that “This is not meant to be a formal definition of easy peasy lemon squeezy like most terms we define on Dictionary.com, but is rather an informal word summary that hopefully touches upon the key aspects of the meaning.” Id. at 91. We accept the entry for this limited purpose. 57 19 TTABVUE 11. 58 Id. at 12; id. at 49-63 (Exh. C).
Opposition No. 91291336 - 22 - Third-party registrations may be entitled to some weight to show the meaning of a mark, or a portion of a mark, in the same manner as a dictionary definition. See Spireon, 71 F.4th at 1363 (existence of third-party registrations for similar goods can bear on a mark’s conceptual strength by showing that an element common to both opposer’s and applicant’s marks has a normally understood and well-recognized descriptive or suggestive meaning). But “merely listing third-party registrations does not make them of record.” In re ZeroSix, LLC, No. 88981832, 2023 TTAB LEXIS 209, at *1; see also TBMP § 704.03(b)(1)(B) (“[A] party may not make a third-party registration of record simply by introducing a list of third-party registrations that includes it … or by referring to the registration in its brief or pleading.”).
Opposition No. 91291336 - 23 - Applicant’s exhibit is more than a list: it includes serial number, mark, status (live), owner name, and a truncated list of goods for each search result (though some elements are obstructed).59 Although this is more information than a mere list of registrations, the exhibit does not include enough information to be highly probative. Because the list does not include all of the goods, register, filing basis, disclaimers, claims of acquired distinctiveness, and other relevant information, “we do not know whether the listed registrations are relevant.” In re Peace Love World Live, LLC, No. 86705287, 2018 TTAB LEXIS 220, at *17 n.17 (citing, inter alia, Nat’l Fidelity Life Ins. v. Nat’l Ins. Trust, 1978 TTAB LEXIS 59, at *9 n.5 (list of registrations without goods and services and other relevant information “has no probative value”)); see also Edom Labs. Inc. v. Licher, No. 91193427, 2012 TTAB LEXIS 81, at *11-12 (“We cannot determine from a mere listing like this the nature of the goods or services for which these purported marks have been applied-for or registered and many of the marks themselves appear to contain substantial additional matter.”). For example, in Made in Nature, 2022 TTAB LEXIS 228, at *30, the Board discounted third-party registrations not based on use in commerce, but rather issued under Trademark Act Sections 44(e) or 66(a), 15 U.S.C. §§ 1126(e) or 1141f(a), and registered for less than five years. Because Applicant’s printout does not display filing basis, we cannot evaluate the probative value of the listed registrations. 59 The exhibit does not show registration numbers, but it does indicate that the marks are “live” and “registered.” id. at 49-63 (Exh. C).
Opposition No. 91291336 - 24 - Moreover, from what we can see, many of these registrations, which cover both “easy” and “EZ” marks, do not concern live plants. Instead, they recite goods such as fresh foods; mulch; plant and grass seed; insect larvae; wood shavings; processed fruits; live animals; fertilizers; pet, bird, and livestock treats, food, and feed; chemicals; prepared meals; medicated animal feed; cat litter; websites; agricultural and forestry products; unprocessed cocoa; and animal feeders.60 We can see “live plants” or legally identical or overlapping goods in twenty-one of the 108 listed third- party registrations.61 Applicant also made of record, under Mr. Jones’ declaration, certificates of registration based on use in commerce for several third-party marks including the term EASY, including five of the registrations referenced above and listed in note 61 60 Id. 61 Id. These are: BLOOMIN’ EASY (live plants); LIVIN’ EASY (live plants); E3 EASY WAVE (live plants, excluding roses and wheat); EASY WAVE (live petunia plants); EASY STREET (lacebark elm trees); EASY BLOOM (live plants); EASY TROPICS (live plants and flowers); EASY ELEGANCE (live plants, namely, roses); EASY-TO-LOVE (live flowering plants, namely rose plants); EASY DOES IT (live plants, namely, roses); ORCHIDS ARE EASY (live flowers and living plants, namely, orchids); EASY TO GROW in standard characters and design (live ornamental perennial plants); EASY TO PLEASE (live plants); GARDENS MADE EASY (live plants); TAKE IT EASY (live plants); EASY TO GROW BULBS (live ornamental perennial plants); EZ RIDER (live plants); EZPLUG (live plants); PLANTEASY (live plants); and EZ START (live trees and plants). We have excluded Applicant and Opposer’s registrations. Five of the registrations, for EASY-TO-LOVE, EASY DOES IT, LIVIN’ EASY, EASY TO PLEASE, and TAKE IT EASY, appear to be owned by one entity, Early Morning LLC. The three EASY TO GROW registrations are owned by EASY TO GROW BULBS, LLC. Two registrations for E3 EASY WAVE and EASY WAVE are owned by Ball Horticultural Company.
Opposition No. 91291336 - 25 - (EASY ELEGANCE, EASY DOES IT, LIVIN’ EASY, BLOOMIN’ EASY), and the following:62 • Reg. No. 6028437 for for “fertilizers” in International Class 1; • Reg. No. 5247624 for EASY PEEZY for “Wood shavings for animal bedding for absorbing chemicals and eliminating odors” in International Class 31. We do not consider the registrations for fertilizers or wood shavings to be probative because the goods are meaningfully different from the live plants at issue here. Apex Bank v. CC Serve Corp., 156 F.4th 1230 (Fed. Cir. 2025) (“When the Board has already made a factual finding that the [goods] are highly similar—in fact, partially legally identical—in its analysis of the second DuPont factor … the Board should retain the same scope in its consideration of similarity under the other factors”). The remaining evidence is quite imperfect for the reasons we point out above, but generally support the conclusion that EASY is highly suggestive of the effortlessness of growing and maintaining live plants, and thus conceptually weak. 62 19 TTABVUE 69-88 (Jones Decl. Exhs. F-L). Where, as here, third-party registrations are offered merely to show that they issued, a plain copy of the registration is sufficient. See Merritt Foods Co. v. Americana Submarine, No. 91060795, 1980 TTAB LEXIS 80, at *3 n.16 (a party who wishes to rely upon third-party registrations need only provide plain copies thereof); see also TBMP § 704.03(b)(1)(B) and cases cited therein. But doing so – and not also attaching current status and title (e.g., TSDR printouts) – diminishes the value of the evidence and increases our burden in reviewing it. For example, based on Applicant’s representations (see 19 TTABVUE 8), we surmise that some of the third-party registrations were assigned (e.g. from Weeks Wholesale Rose Grower, Inc., which appears on the registration certificates, to Early Morning LLC, which appears on the trademark search results), as we summarize above in note 61. The registration for BLOOMIN’ EASY is listed as owned by Bloomin’ Easy Plants, Inc. in the search listing, and Van Belle Nursery Inc. in the certificate of registration, but the application serial numbers are the same.
Opposition No. 91291336 - 26 - Applicant also made of record an excerpt from W. Atlee Burpee Company’s website for an “Easy Peasy” pea plant.63 Extensive third-party use may indicate conceptual weakness of a mark or a portion thereof. Juice Generation Inc. v. GS Enters. LLC, 794 F.4th 1334, 1339 (Fed. Cir. 2015). A single use of EASY PEASY does not rise to this level, but tends to support the registration evidence (imperfect as it is) as to the conceptual weakness of EASY. In sum, we find that Opposer’s pleaded marks OSO EASY and OSO EASY PEASY, taken as a whole, are inherently distinctive, although their conceptual strength is somewhat limited by the conceptual weakness of the term EASY as it pertains to the ease of growing and maintaining the shrubs. See Sock It to Me, 2020 TTAB LEXIS 201, at *30 (finding SOCK IT TO ME inherently distinctive as a whole, although its strength is somewhat limited by the term SOCK which is generic for socks). b. Commercial Strength or Weakness As to commercial weakness, we cannot consider Applicant’s third-party registration evidence because the “probative value of third-party trademarks depends entirely upon their usage.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1771, 396 F.3d 1369, 1373 (Fed. Cir. 2005). “[W]here the ‘record includes no evidence about the extent of [third-party] uses … the probative value of this evidence is thus minimal.” Id. There is no evidence of actual use as to any of the third- party registrations. As to the use of the “Easy Peasy” brand pea plant above,64 a single 63 19 TTABVUE 36 (Jones Decl. ¶ 14); id. at 89-91 (Jones Decl. Exh. M). 64 See text accompanying note 63.
Opposition No. 91291336 - 27 - third-party use also is insufficient to show commercial weakness of a mark. Juice, 794 F.3d at 1339; Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d 1363, 1373-74 (Fed. Cir. 2015). We conclude that the pleaded marks have some conceptual weakness due to use of the term EASY, and are of average commercial strength. We accord the pleaded marks slightly less than the average scope of protection due to inherently distinctive marks, which weighs against likelihood of confusion. B. Second and Third Factors: Similarity or Dissimilarity of the Goods and Channels of Trade We next turn to the second and third DuPont factors addressing the similarity or dissimilarity of the goods and channels of trade. The goods need not be identical, but need only be “related in some manner and/or if the circumstances surrounding its marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., 668 F.3d at 1369. Our assessment focuses on the identification of goods in Applicant’s challenged application, “live plants” in Class 31. and Opposer’s registered marks OSO EASY for “live plants” and OSO EASY PEASY for “live plants excluding barley and peas in any form.” We must “give the [goods] identified in the application its full scope in our analysis of the second DuPont factor.” In re OSF Healthcare Sys., No. 88706809, 2023 TTAB LEXIS 353, at *11 (citing In re Country Oven, Inc., No. 87354443, 2019 TTAB LEXIS 381, at *10-11).
Opposition No. 91291336 - 28 - Applicant concedes “the goods in question (factor 2) and trade channels (factor 3) are identical.”65 On its face, Applicant’s broadly-described live plants is identical to Opposer’s live plants and includes live plants other than barley and peas. We conclude that the goods are identical and overlapping. We also may presume that the channels of trade and classes of purchasers for those goods also overlap. In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); Am. Lebanese Syrian Assoc. Charities Inc. v. Child Health Rsch. Inst., No. 91190361, 2011 TTAB LEXIS 260, at *14. These DuPont factors weigh in favor of likelihood of confusion. C. First Factor: Similarity or Dissimilarity of the Marks Turning next to the first DuPont factor, we must compare Applicant’s mark to Opposer’s marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005) (quoting DuPont, 476 F.2d at 1361). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, No. 87075988, 2018 TTAB LEXIS 170, at *13 (quoting In re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4, aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019)); accord Krim-Ko Corp. v. Coca-Cola Bottling 65 19 TTABVUE 22.
Opposition No. 91291336 - 29 - Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “While the marks must be considered in their entireties, ‘in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.’” Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 TTAB LEXIS 464, at *39 (quoting In re Detroit Athletic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018)). “Similarity is not a binary factor but is a matter of degree.” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (citation omitted). “The proper test is … whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” In re i.am.symbolic, llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017) (citation omitted); see also Phillips Petroleum Co. v. Knox Indus. Corp., 277 F.2d 945, 947 (CCPA 1960) (“This issue is whether the marks are confusingly similar, not whether they are identical.”) (citation omitted). In making these comparisons, we keep in mind our findings above that the goods and channels of trade overlap under the second and third DuPont factors,66 reducing the degree of similarity between the marks necessary to conclude that there is a likelihood of confusion. Viterra, 671 F.3d at 1360; In re Mighty Leaf Tea, 601 F.3d 66 See Section V(B), supra
Opposition No. 91291336 - 30 - 1342, 1348 (Fed Cir. 2010). We also keep in mind our finding under the sixth DuPont factor that Opposer’s pleaded marks have some conceptual weakness due to use of the term EASY.67 Applicant’s mark is EASY BEE-ZY KNOCK OUT. Opposer’s marks are OSO EASY and OSO EASY PEASY. Opposer argues that “EASY PEASY” and “EASY BEE-ZY” have highly similar commercial impressions in that the terms sound nearly identical, differing only in the “barely distinguishable ‘p’ and ‘b’ sounds at the beginning of the second words.”68 Opposer argues that relevant consumers pronounce the letter string OSO, and take it to mean, “oh so”, resulting in marks pronounced “oh so easy” and “oh so easy peasy.”69 Opposer contends that the marks are similar in meaning because EASY BEE-ZY is an “intentional play on the popular (and already playful) phrase ‘easy peasy.’ ‘Easy Bee-zy’ has no other meaning. OSO EASY® marks look and sound like the phrase ‘oh so easy, which conveys the same meaning as, and a very similar ring to, ‘easy bee-zy.’” 70 67 See Section V(A), supra. 68 13 TTABVUE 14. 69 Id. at 64 (J. Deppe Decl. ¶ 8). 70 Id. at 15. In support, Opposer cites to the declarations of its witnesses, all of which use nearly identical language to express various opinions about similarities of the marks and likelihood of confusion. See 12 TTABVUE 90 (D. Deppe Decl. ¶¶ 9-12); id. at 93 (Wood Decl. ¶¶ 8-11); 13 TTABVUE 71-73 (J. Deppe Decl. ¶¶ 28-34). Opposer terms these individuals “industry experts” and says they are “highly knowledgeable in the gardening and nursery industry” 13 TTABVUE 8 n.3, 18. We have not considered testimony to the extent it concerns matters solely in the Board’s purview. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., No. 92050879, 2013 TTAB LEXIS 347, at *13, aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014) (“we have disregarded any opinion testimony regarding the ultimate disposition of the claims asserted herein”); Edwards Lifesciences Corp. v. VigiLanz Corp., No. 91154210, 2010 TTAB LEXIS 84, at *3 (“[T]he Board is responsible for determining whether the marks are similar,
Opposition No. 91291336 - 31 - Opposer also claims that OSO in its pleaded marks and KNOCK OUT in Applicant’s mark are used by the parties to indicate entire product lines, and so it is the other components of the marks (Opposer’s EASY PEASY and Applicant’s EASY BEE-ZY) that a customer will associate with particular plants within those lines.71 Opposer provides evidence that Applicant sometimes uses EASY BEE-ZY without the term KNOCK OUT.72 Finally, Opposer argues that consumers may view Applicant’s mark as the “KNOCK OUT” version of OSO EASY PEASY.73 Applicant counters that any strength in Opposer’s marks comes from the leading term OSO: “Where a party consistently uses the same first word to denote a family of products, the first word takes on heightened importance simply because consumers will notice it first …. In sum, the primary source identifier for [Opposer’s] marks is the OSO prefix, which dominates the overall impression of its various marks.”74 Applicant also contends that the subject mark EASY BEE-ZY KNOCK OUT is distinguished by the following phrase KNOCK OUT.75 According to Applicant, KNOCK OUT is conceptually strong, because it is “at least suggestive, if not arbitrary,” as applied to roses.76 Further, Applicant argues “[t]he overall impression and we will not substitute the opinion of a witness, even an expert witness, for our evaluation of the facts.”). 71 13 TTABVUE 16. 72 Id. 73 Id. 74 19 TTABVUE 18. Despite Applicant’s reliance on “families of marks,” we find below that neither Opposer nor Applicant pleaded or proved a family of marks. See Section V(F), infra. 75 19 TTABVUE 24. 76 Id. at 19.
Opposition No. 91291336 - 32 - of consumers being directed to KNOCK OUT more than EASY BEE-ZY is also supported by the way the marks are used in commerce,” with KNOCK OUT in large print on the pot and EEZY BEE-ZY KNOCK OUT “constrained to the much smaller plant tag.”77 In addition, Applicant explains that the connotation of the marks is different: The OSO EASY family, including OSO EASY PEASY, connote[s] that the subject roses are “oh so easy” to grow and maintain. The EASY BEE-ZY KNOCK OUT mark, on the other hand, highlights the ease of attracting pollinators with this new addition to Conard-Pyle’s well-known KNOCK OUT line of roses. While consumers will no doubt appreciate that both make their gardening easier in some way, there is no likelihood that they will be confused as to the source of the roses.78 We turn to a comparison of the marks. As an initial matter, we must compare the marks as they appear in the registrations and application, and not on any actual use such as tags or labels. See In re Aquitaine Wine USA, LLC, No. 86928469, 2018 TTAB LEXIS 108, at *11. All of the marks are in standard characters, which means they may be portrayed in any “any particular font style, size, or color.” id. at *13 (quoting Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a)). The obvious similarities are the shared term EASY in the three marks at issue, and the rhyming nature of EASY BEE-ZY and EASY PEASY in Applicant’s mark and one of Opposer’s marks. There are, however, obvious points of difference in that the 77 Id. at 20; see also id. at 32 (Watkins Decl. ¶ 12). 78 Id. at 21.
Opposition No. 91291336 - 33 - marks are constructed differently with EASY as the first term in Applicant’s mark and KNOCK OUT at the end, and OSO as the first term in both Opposer’s marks. Opposer’s intent that OSO EASY be pronounced as, or meaning, “oh so easy,” is not determinative. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332 (Fed. Cir. 2014) (“There is no correct pronunciation of a trademark that is not a recognized word.”) (citation omitted); Viterra, 671 F.3d at 1367 (“[T]here is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.”) (citation omitted). But we think that consumers would readily recognize the marks OSO EASY and OSO EASY PEASY in this way and Applicant does not disagree.79 Opposer’s advertising supports this connotation, boasting that slightly less than the average scope of protection due to inherently distinctive marks its rose bushes have the “ability to thrive with ease.”80 The phrases “oh so easy” and “oh so easy peasy” are short slogans, and EASY PEASY rhymes. A mark may be unitary (that is, it creates a commercial impression separate and apart from any unregistrable component) where it is, inter alia, a slogan that is not itself merely descriptive or composed of sound patterns such as alliteration and rhyming. See TMEP §§ 1213.05(b)(i), 1213.05(c), and 1213.05(e) and cases cited therein. We conclude that the OSO EASY and OSO EASY PEASY marks are 79 See 19 TTABVUE 15 (“[Opposer’s marks sound like ‘oh so easy’”). 80 12 TTABVUE 6, 15, 20, 33, 35, 37, 42, 44; 15 TTABVUE 57, 126, 128, 130, 132, 134, 136, 141, 148, 151, 153.
Opposition No. 91291336 - 34 - inseparable unitary phrases with an unusual spelling of “oh so,” both imparting to the consumer that growing and caring for the plants is very easy.81 By contrast, Applicant’s mark begins with the phrase EASY BEE-ZY, which, despite some phonetic similarity to a portion of Opposer’s unitary marks, ends with the incongruous phrase KNOCK OUT. The phrase EASY BEE-ZY appears to be a play on words with either “easy peasy” or another well-known saying with similar connotation, “easy breezy”. But it includes a hyphen setting off BEE and ZY, and so the mark specifically directs consumers to understand that the shrubs attract bees as pollinators. Mr. Watkins testified: [Applicant] developed the rose known as EASY BEE-ZY KNOCK OUT in 2014. We later held an internal survey to select the name. The EASY BEE-ZY name was selected to convey to consumers that it is a yellow rose that attracts pollinators. We chose to include the hyphen in BEE-ZY to further highlight the word “bee” within BEE-ZY as a way to further connote bees and therefore other pollinators in consumers’ minds.82 Applicant’s advertising supports this connotation: • “Easy Bee-zy Knock Out: A Haven for Pollinators Transform your garden into a haven for pollinators with Easy Bee-zy Knock Out. Boasting a riot of very bright, yellow blooms, this variety not only captivates the eye but also attracts bees and butterflies, contributing to a thriving ecosystem right in your own backyard. With its disease resistance and easy maintenance, Easy Bee-zy Knock Out is the perfect choice for both seasoned gardeners and beginners.”83 81 Neither registration for Opposer’s pleaded marks includes a disclaimer of “easy,” supporting our finding that the marks function as unitary phrases. 82 19 TTABVUE 32 (Watkins Decl. ¶ 15). 83 12 TTABVUE 139.
Opposition No. 91291336 - 35 - • “And from Star Roses and Plants, the family of Knockout Roses keeps on growing. Easy Bee-zy, a rounded, bushy plant that grows to 3-4 feet tall and 3 feet wide, rewards with single yellow flowers that attract butterflies and bees with a light, citrus fragrance….”84 This is not a connotation shared by Opposer’s marks. Although Opposer asserts that its “OSO EASY PEASY® plants in particular are attractive to bees and butterflies — just like EASY BEE-ZY KNOCK OUT roses are,”85 this meaning is not reflected in the marks OSO EASY, OSO EASY PEASY, or any of Opposer’s other pleaded marks as it is in Applicant’s mark. We next turn to Applicant’s argument that consumers will likely focus on the KNOCK OUT portion of its mark because is part of a “family” of KNOCK OUT marks.86 The “family of marks doctrine” has been explained as follows: A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.... Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family. It is thus necessary to consider the use, advertisement, and distinctiveness of the marks, including assessment of the contribution of the common feature to the recognition of the marks as of common origin. 84 Id. at 173. 85 13 TTABVUE 13. 86 We do not consider this argument under the ninth DuPont factor for the reasons stated in Section V(F), infra.
Opposition No. 91291336 - 36 - J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462 (Fed. Cir. 1991) (citations omitted). To prove the existence of a family of marks, a party “must show that its putative family: (1) has a recognizable common characteristic; (2) that is distinctive; and (3) that has been promoted in such a way as to create ‘recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.’” In re LC Trademarks, Inc., No. 85890412, 2016 TTAB LEXIS 577, at *24 (quoting Wise F & I, LLC v. Allstate Ins. Co., No. 91226028, 2016 TTAB LEXIS 473, at *19). It is well-established that the family of marks doctrine is not available to overcome a Section 2(d) refusal in an ex parte proceeding. Id. at *20 (citing cases). But the Board has held, at least in an ex parte proceeding, that an applicant may submit a variety of evidence in support of the acquired distinctiveness (e.g. consumer recognition) of its mark under Trademark Act Section 2(f), which could consist of market evidence establishing a family of marks. Id. at *22. We conclude that evidence of a family of marks also supports the distinctiveness of a defendant’s mark, or a portion thereof (such as KNOCK OUT), in a Section 2(d) analysis. Neither the mere intention to create a family of marks, nor ownership of multiple registrations containing the family term, is sufficient in and of itself to establish that a party owns a family of marks. New Era Cap Co., 2020 TTAB LEXIS 199, at *20-21. It requires proof of the use and advertisement of the marks in the marketplace, and an assessment of the contribution of the common feature to the recognition of the
Opposition No. 91291336 - 37 - marks as of common origin. J & J Snack Foods, 932 F.2d at 1463. Applicant’s Director of Compliance, Mr. Watkins, testified: • Applicant’s KNOCK OUT brand of roses is the company’s premier product line and is the largest rose brand in the industry. • The original KNOCK OUT rose variety was developed and tested for nearly a decade before it was released in 2000. That year, it was named an All-America Rose Selections winner, the most prestigious award in the industry. • Applicant developed the KNOCK OUT name to convey to the public that these roses were resilient, with excellent beauty throughout the blooming season. • Consumers now know the KNOCK OUT name and seek it out when looking to purchase easy-to-maintain, beautiful roses. • The KNOCK OUT rose was the #1 seller in the rose industry from its launch until about 2014, when it was surpassed by the DOUBLE KNOCK OUT – another rose developed between Conard-Pyle and the breeder of the original KNOCK OUT. • More than 100 million KNOCK OUT roses have been sold since its debut. • Since the original rose in 2000, Conard-Pyle has sold 13 varieties of KNOCK OUT roses. • With few exceptions, all KNOCK OUT roses are required by Conard- Pyle’s licensing terms to be sold in the same pots, which are green and display the words “the knock out family of roses” printed on them, with “knock out” in larger print than the rest of the words. • Since the original rose in 2000, Conard-Pyle has held eight federal registrations for various KNOCK OUT marks for roses.87 87 19 TTABVUE 30-32 (Watkins Decl. ¶¶ 4, 6-14).
Opposition No. 91291336 - 38 - The record also contains evidence that Applicant uses KNOCK OUT in conjunction with what it advertises, both as a brand and colloquially, as a “family of roses,” such as the website excerpt below and a picture of Applicant’s goods:88 Applicant sometimes advertises its KNOCK OUT rose varieties together, such as in this Instagram post:89 88 See, e.g., 12 TTABVUE 125, 143; 19 TTABVUE 122; see also 12 TTABVUE 136 (Collection identified as “The Knock Out® Family of Roses”); id. at 139 (press release mentioning “The Knock Out® Family of Roses”); id. at 171 (brochure describing the plant as “An outstanding addition to the Knock Out® family”); id. at 173 (advertisement stating, “And from Star Roses and Plants, the family of Knockout Roses keeps on growing….”). Some of these exhibits are not verified by declaration or self-authenticating as printed publications, see Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), but Applicant did not object. We rely on these materials only for what is shown on their faces rather than their contents. 89 12 TTABVUE 138.
Opposition No. 91291336 - 39 - And, some third parties recognize this “family” of roses, such as in this social media post from the National Garden Bureau: None of this testimony or evidence is limited to use in the United States, which somewhat tempers its probative value, but it is unchallenged.90 Although we do not think this evidence, standing alone, is sufficient for us to find the KNOCK OUT is a “family of marks,” it generally supports Applicant’s argument that the KNOCK OUT portion of Applicant’s mark is strong and distinctive. Conceptually, the term suggests that the roses produced by the plants are a “knock out,” or a “a sensationally striking, 90 We have not considered Applicant’s unverified evidence of KNOCK OUT revenues in support of this argument; but in any case, this data also was not limited to the United States See note 53, supra.
Opposition No. 91291336 - 40 - appealing, or attractive … thing.”91 Mr. Watkin’s unchallenged testimony supports a finding that KNOCK OUT is commercially strong. We conclude that the inclusion of the term KNOCK OUT in Applicant’s mark significantly contributes to the other differences we have identified in the marks. In sum, we find that the similarities in appearance, sound, meaning, and overall commercial impression are outweighed by the marks’ significant dissimilarities, particularly considering the limited scope of protection of Opposer’s OSO EASY marks, and in spite of the similarities in goods and channels of trade. The first DuPont factor weighs against a finding of likelihood of confusion. D. Fourth Factor: Degree of Care in Purchasing The fourth DuPont factor considers “‘[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’” Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (quoting DuPont, 476 F.2d at 1361). A heightened degree of care when making a purchasing decision may tend to minimize likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985) (because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and 91 MERRIAM-WEBSTER DICTIONARY (www.merriam-webster.com/dictionary/knockout, accessed Jan. 12, 2026). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, No. 85214191, 2014 TTAB LEXIS 94, at *6 n.4; see also B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 728 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”).
Opposition No. 91291336 - 41 - NARKOMED). Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay Imps., Inc., 396 F.3d at 1376. Opposer argues that purchasers of live plants are not sophisticated and the products are low cost, favoring a finding of likely confusion.92 Applicant argues that the fourth factor should be given little weight because the target market is the public at large.93 Alternatively, Applicant argues the factor favors a finding of no likelihood of confusion because consumers of plants know its KNOCK OUT brand.94 The application does not contain any limitation on the channels of trade or intended customers and, thus, the potential class of purchasers of live plants is very broad. There is no evidence of record as to the sophistication of customers that typically purchase live plants or what brands they know or do not know. We could make certain assumptions, however, based on the nature and cost of the goods. The record demonstrates that live plants, such as rose bushes, are advertised for under twenty dollars or as much as seventy dollars, and thus some may be impulse purchases and some may be more carefully selected.95 We see no evidence that consumers exercise more or less than ordinary care with respect to the products at issue. We therefore find the fourth DuPont factor to be neutral. 92 13 TTABVUE 22-24. 93 19 TTABVUE 21. 94 Id. at 22. 95 See, e.g., 12 TTABVUE 146-69 (Exh. H).
Opposition No. 91291336 - 42 - E. Seventh and Eighth Factors: Actual Confusion Under the seventh and eighth DuPont factors, we consider the parties’ respective uses “such that we could make a finding as to the ‘length of time during and conditions under which there has been concurrent use without evidence of actual confusion.’” In re Guild Mortg. Co., No. 86709944, 2020 TTAB LEXIS 17, at *25; see also DuPont, 476 F.2d at 1361 (identifying seventh and eighth DuPont factors as “[t]he nature and extent of any actual confusion,” and “[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion”). Applicant argues that there is no evidence of actual confusion, and there is reasonable opportunity for confusion to have occurred because it has offered its goods under the EASY BEE-ZY KNOCKOUT mark since 2023.96 “A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion.” Majestic Distilling Co., 315 F.3d at 1317; see also Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 762 (CCPA 1980) (“Actual confusion is entitled to great weight but only if properly proven.”). But the reverse is not true; the absence of evidence of actual confusion, under the seventh DuPont factor, by itself is entitled to little weight in our likelihood of confusion analysis unless there also is evidence, under the eighth DuPont factor, that there has been a significant opportunity for actual confusion to have occurred. Keystone Consol. Indus. v. Franklin Inv. Corp., No. 92066927, 2024 TTAB LEXIS 290, at *75-76 (citations omitted). 96 19 TTABVUE 23.
Opposition No. 91291336 - 43 - The marks have co-existed in the marketplace at most for two years, though we do not know exactly the extent or length of time of actual overlap in the same stores or websites.97 We cannot determine if there has “been a reasonable opportunity for confusion to have occurred” during the few years of possible concurrent use of the parties’ marks. Id. at *63 (citing Citigroup Inc. v. Cap. City Bank Grp., Inc., No. 91177415, 2010 TTAB LEXIS 40, at *50. Therefore, we find that the seventh and eighth DuPont factors are neutral in our analysis of likelihood of confusion. F. Ninth Factor: Variety of Goods The ninth DuPont factor considers “[t]he variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).” DuPont, 476 F.2d at 1361. In Applicant’s view, “[e]ach side has a family of marks implicated in this case. For each side, the presence of that family decreases, if not eliminates, the likelihood of confusion.”98 The ninth DuPont factor, however, only concerns Opposer’s mark (and we have addressed the argument relating to Applicant’s “family of marks” above under the first factor).99 In a surprising twist, Applicant argues that Opposer has a family of OSO EASY marks.100 Opposer did not plead or attempt to prove a family of marks. See Wise F&I, LLC v. Allstate Ins. Co., No. 91226028, 2016 TTAB LEXIS 473, at *12 (a plaintiff 97 We note that many of Applicant’s admissions and interrogatory responses are of little probative value when the requests (including definitions and exhibits) have not been supplied. 98 19 TTABVUE 24. 99 See supra Section V(C). 100 19 TTABVUE 18-19.
Opposition No. 91291336 - 44 - must plead ownership of a family of marks in its complaint in order to rely on the marks as a family as a basis for sustaining the opposition at trial or in a motion for summary judgment). We certainly would not find that a party owns a family of marks where that party has not argued that it has one. See TPI Holdings Inc. v. Trailertrader.com LLC, No. 92064976, 2018 TTAB LEXIS 121, at *37 (plaintiff bears the burden of proof to prove family of marks).101 We conclude that the ninth DuPont factor is neutral. G. Eleventh Factor: Extent to Which Applicant Has a Right to Exclude Others from Use of its Mark Applicant argues under the eleventh DuPont factor that it can exclude others from using its mark because Opposer has “allowed” Applicant to build goodwill in another “line of products,” namely products under its registered mark GROUNDCOVER ROSES MADE EASY.102 However, this argument does not suffice to establish that Applicant has any significant right to exclude others from use of a different mark for the same goods merely because the marks share the term “easy”. We find this DuPont factor neutral. 101 Even if we did consider it, the family of marks doctrine could be relevant under the ninth factor dispute in at least one of two ways, neither of which is present here. First, it could affect the analysis of the similarity of goods. New Era Cap Co., 2020 TTAB LEXIS 199, at *18. But here, the goods are legally identical. Second, where the family comprises a common prefix in marks, a junior user may find it harder to argue that the difference in the ‘non- family’ part of its mark weighs against confusion because consumers are accustomed to seeing the family component together with other elements coming from one source (the senior user). Id. Applicant’s mark does not use the OSO EASY prefix and Opposer only has one EASY PEASY-formative mark. 102 19 TTABVUE 25-26.
Opposition No. 91291336 - 45 - H. Thirteenth DuPont Factor: Any Other Established Fact Opposer agues that we should consider that Applicant was aware of Opposer’s OSO EASY marks under the thirteenth DuPont factor, “any other established fact probative of the effect of use,” which includes any evidence of a party's bad faith in adopting a mark. DuPont, 476 F.2d at 1361. However, it is settled that “an inference of ‘bad faith’ requires something more than mere knowledge of a prior similar mark.” QuikTrip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036 (Fed. Cir. 2021) (quoting Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1565 (Fed. Cir. 1987)). This factor is neutral. I. Summary of the DuPont Factors We must “weigh the DuPont factors used in [our] analysis and explain the results of that weighing.” In re Charger Ventures LLC, 64 F.4th 1375, 1383-84 (Fed. Cir. 2023). “In any given case, different DuPont factors may play a dominant role,” and the “weight given to each factor depends on the circumstances of each case.” Id. (citation omitted). Weighing the DuPont factors for which there is evidence and argument in this proceeding, Opposer’s mark are accorded slightly less than the average scope of protection due to inherently distinctive marks under the sixth factor, which weighs against likelihood of confusion. Although the goods are identical under the second factor, which weighs heavily in favor of likelihood of confusion, and trade channels overlap under the third factor which also weighs in favor of likelihood of confusion,
Opposition No. 91291336 - 46 - the parties’ marks are dissimilar under the first factor, which weighs heavily against a finding of likelihood of confusion. The remaining DuPont factors are neutral. In this case, we find the dissimilarity of the marks and the slight weakness of Opposer’s marks to outweigh the other factors. Accordingly, we find that Opposer has not proven by a preponderance of the evidence that confusion between its marks OSO EASY and OSO EASY PEASY and Applicant’s mark EASY BEE-ZY KNOCK OUT is likely. Decision The opposition to Serial No. 97912429 is dismissed.
Wondering how this text applies to your situation?
Free consultation, no commitment
Describe your situation. Our team will contact you by email about your consultation.
Continue your research in ChatGPT or Claude
Connect Omnilex to search the legal corpus from your AI assistant.