Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA290438
`ESTTA Tracking number:
`06/17/2009
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`Agrotain International, LLC
`06/17/2009
`
`#1 Angelica Street
`St. Louis, MO 63147
`UNITED STATES
`
`Attorney
`information
`
`Jason Ross
`Greensfelder, Hemker & Gale, P.C.
`10 South Broadway Suite 2000
`St. Louis, MO 63102
`UNITED STATES
`jlr@greensfelder.com, dtb@greensfelder.com, krh@greensfelder.com,
`gae@greensfelder.com, hly@greensfelder.com Phone:314-241-9090
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77295286
`06/17/2009
`
`Publication date
`Opposition
`Period Ends
`
`02/17/2009
`06/17/2009
`
`Agrium Inc.
`13131 Lake Fraser Drive, S.E.
`Calgary, T2J7E8
`CANADA
`Goods/Services Affected by Opposition
`
`Class 001. First Use: 1954/00/00 First Use In Commerce: 1954/00/00
`All goods and services in the class are opposed, namely: Fertilizers
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77295316
`06/17/2009
`
`Publication date
`Opposition
`Period Ends
`
`02/24/2009
`
`Agrium Inc.
`13131 Lake Fraser Drive, S.E.
`Calgary, T2J7E8
`CANADA
`Goods/Services Affected by Opposition
`
`Class 001. First Use: 1954/00/00 First Use In Commerce: 1954/00/00
`All goods and services in the class are opposed, namely: Granular fertilizer ingredients of blended
`
`

`
`fertilizers
`
`Grounds for Opposition
`
`The mark comprises matter that, as a whole, is
`functional
`Torres v. Cantine Torresella S.r.l.Fraud
`Other
`
`Trademark Act section 2(e)(5)
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`(1) The mark is not distinctive of Applicant's
`goods; (2) the mark is ornamental; (3) Applicant
`is collaterally estopped from registering the mark;
`and (4) Applicant has abandoned its rights in the
`mark.
`
`Attachments
`
`Notice of Opposition.pdf ( 20 pages )(773727 bytes )
`Exhibit A - Notice of Opposition.pdf ( 10 pages )(763701 bytes )
`Exhibit B - Notice of Opposition.pdf ( 11 pages )(941552 bytes )
`Exhibit C - Notice of Opposition.pdf ( 10 pages )(546254 bytes )
`Exhibit D - Notice of Opposition.pdf ( 10 pages )(589652 bytes )
`Exhibit E - Notice of Opposition.pdf ( 11 pages )(637253 bytes )
`Exhibit F - Notice of Opposition.pdf ( 11 pages )(636093 bytes )
`Exhibit G - Notice of Opposition.pdf ( 11 pages )(692568 bytes )
`Exhibit H - Notice of Opposition.pdf ( 11 pages )(647372 bytes )
`Exhibit I - Notice of Opposition.pdf ( 5 pages )(351073 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Jason L. Ross/
`Jason Ross
`06/17/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 77/295,286 published in the Oflicial Gazette on February 17,
`2009, and Application Serial No. 77/295,3 16 published in the Official Gazette on February 24, 2009
`
`Opposition No.:
`
`Trademark: Color Blue
`
`Application Serial Nos.: 77/295,286
`77/295 ,3 16
`
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`
`Agrotain International, L.L.C.
`
`v
`
`Agrium Inc.
`
`Opposer,
`
`Applicant.
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`Opposer Agrotain International, L.L.C. (“Agrotain” or “Opposer”) hereby opposes Applicant
`
`Agrium Inc.’s (“Agrium’s” or “Applicant’s”) registration as its trademark the color Blue (“Color
`
`Blue”) when used on granules of fertilizer, Application Serial Nos. 77/295,286 and 77/295,316
`
`(collectively, the “Applications,” submitted herewith as Exhibits A & B and incorporated herein by
`
`reference), because such registrations will injure Opposer. Applicant filed the Applications on
`
`October 3, 2007, which were published in the Oflicial Gazette of the United States Patent and
`
`Trademark Oflice on February 17 and 24, 2009, respectively. This Notice of Opposition is timely
`
`filed within the extended due dates for filing oppositions — June 17 and June 24, 2009, respectively.
`
`The grounds for the opposition are as follows:
`
`

`
`INTRODUCTION
`
`1.
`
`Applicant and Opposer have been competitors in the fertilizer industry for many
`
`years. During that time, both parties, their respective predecessors, as well as other competitors,
`
`have manufactured, marketed and sold blue-colored fertilizers. The color blue is used throughout the
`
`industry to, inter alia, indicate to consumers that the fertilizer is nitrogen-infused. In pursing the
`
`Applications, Applicant has taken the unprecedented, anti-competitive step of trying to secure
`
`exclusive rights to this popular color. If Applicant succeeds, it will receive primafacie exclusive
`
`rights to the Color Blue, and Opposer and other competitors will be put in a severe competitive
`
`disadvantage by being forced to adopt another color that consumers do not associate with nitrogen-
`
`infused fertilizer.
`
`2.
`
`Notably, Applicant’s efforts to monopolize a color don’t end with the Color Blue.
`
`Since October 2007, Applicant has sought no less than six (6) other trademark registrations for two
`
`other very common fertilizer colors: green and tan. Together, Applicant is striving to monopolize
`
`the right to use three common colors in the fertilizer industry. If Applicant succeeds, Opposer and
`
`other competitors will be forced to switch to colors that consumers are completely unfamiliar with.
`
`With the loss of this familiarity, consumers will no longer recognize Opposer’s goods and will
`
`instead falsely conclude that Opposer has changed its product.
`
`3.
`
`Applicant’s registrations for the Color Blue should be denied on the basis that the
`
`Color Blue is generally used throughout the industry to indicate the presence of nitrogen as well as
`
`serves numerous other utilitarian and aesthetic functions or, alternatively, is purely ornamental.
`
`4.
`
`In addition, Applicant’s conduct bars these registrations for the Color Blue.
`
`Applicant and its predecessors have abandoned any and all rights to the Color Blue by knowingly
`
`allowing their competitors, including Opposer, to use the Color Blue for decades without objection.
`
`

`
`Moreover, Applicant has committed fraud on the U.S. Patent and Trademark Office through
`
`numerous, knowingly false statements made during the application process. In fact, a federal district
`
`court has previously held that Applicant’s predecessor does not have any enforceable trademark
`
`rights in the Color Blue. Yet Applicant fraudulently submits these applications claiming that it does.
`
`5.
`
`For all of the above reasons, Applicant will be injured if the subject registrations are
`
`issued and, therefore, the Applications should be denied.
`
`FACTS COMMON TO ALL COUNTS
`
`I.
`
`Opposer’s Use of the Color Blue
`
`6.
`
`Opposer Agrotain International, L.L.C., is a limited liability company organized and
`
`existing under the laws of the State of Missouri, with a place of business at One Angelica Street, St.
`
`Louis, Missouri 63147.
`
`7.
`
`Opposer is the world’s largest producer of proprietary nitrogen-stabilized fertilizers.
`
`Opposer markets its fertilizers under the brands AGROTAIN®, AGROTAIN® PLUS, SuperN®
`
`SuperU®, HYDREXX®, UMAXX® and UFLEXXT" (collectively, “Opposer’s Products”). Opposer’s
`
`award-winning nitrogen stabilizer technology has a proven track record, backed by worldwide
`
`research studies, in reducing nitrogen losses and extending plant-available nitrogen for healthier
`
`plants and higher yields.
`
`8.
`
`Since at least as early as 1984, Opposer and Opposer’s predecessor(s)-in-interest have
`
`continuously manufactured, marketed and sold in interstate commerce blue-colored fertilizers under
`
`numerous different brands.
`
`

`
`II.
`
`Use of the Color Blue by Other Fertilizer Manufacturers
`
`9.
`
`The use of the Color Blue on fertilizer is commonplace in the industry.
`
`10.
`
`Since at least as early as 1952, many other competitors in the fertilizer industry have
`
`continuously manufactured, marketed and sold blue-colored fertilizers in interstate commerce.
`
`11.
`
`Today, in addition to Opposer, at least four other competitors manufacture, market
`
`and sell one or more blue-colored fertilizers in interstate commerce.
`
`12.
`
`J.R. Peters, Inc., currently manufactures, markets and sells one or more blue-colored
`
`fertilizers.
`
`13.
`
`Upon information and belief, J .R. Peters, Inc., has manufactured, marketed and sold
`
`in interstate commerce one or more blue-colored fertilizers under various trademarks, including
`
`without limitation TRUE BLUE, continuously since at least as early as 1952.
`
`14.
`
`Upon infonnation and belief, since at least before Applicant filed the Applications,
`
`Applicant has known and been familiar with J .R. Peters, Inc. and that J.R. Peters, Inc. is a competitor
`
`that manufactures, markets and sells blue-colored fertilizer.
`
`15.
`
`Sadepan Chimica currently manufactures, markets and sells one or more blue-colored
`
`fertilizers.
`
`16.
`
`Upon information and belief, Sadepan Chimica (and/or its predecessors) has
`
`manufactured, marketed and sold in interstate commerce one or more blue-colored fertilizers
`
`continuously since at least as early as 2001.
`
`17.
`
`Upon information and belief, since at least before Applicant filed the Applications,
`
`Applicant has known and been familiar with Sadepan Chimica and that Sadepan Chimica is a
`
`competitor that manufactures, markets and sells blue-colored fertilizer.
`
`

`
`18.
`
`Lebanon Seaboard Co. currently manufactures, markets and sells one or more blue-
`
`colored fertilizers.
`
`19.
`
`Upon information and belief, Lebanon Seaboard Co. (and/or its predecessors) has
`
`manufactured, marketed and sold in interstate commerce one or more blue-colored fertilizers
`
`continuously since at least as early as October 18, 2004.
`
`20.
`
`Upon information and belief, since at least before Applicant filed the Applications,
`
`Applicant has known and been familiar with Lebanon Seaboard Co. and that Lebanon Seaboard Co.
`
`is a competitor that manufactures, markets and sells blue-colored fertilizer.
`
`21.
`
`Upon information and belief, Scotts Company LLC (and/or its affiliates) currently
`
`manufactures, markets and sells one or more blue-colored fertilizers.
`
`22.
`
`Upon information and belief, Scotts Company LLC (and/or its affiliates and/or their
`
`respective predecessors) has manufactured, marketed and sold in interstate commerce one or more
`
`blue-colored fertilizers continuously since at least as early as 1964.
`
`23.
`
`Upon information and belief, since at least before Applicant filed the Applications,
`
`Applicant has known and been familiar with Scotts Company LLC and that Scotts Company LLC is
`
`a competitor that manufactures, markets and sells blue-colored fertilizer.
`
`24.
`
`Upon information and belief, each of these manufacturers has sold blue fertilizers for
`
`many years with no instance of confusion among consumers as to the source of their respective
`
`fertilizers.
`
`25.
`
`Because of the aforementioned use of the Color Blue on fertilizer by many
`
`manufacturers, consumers in the fertilizer industry do not uniformly identify a particular
`
`manufacturer as the sole source of blue-colored fertilizers.
`
`

`
`III.
`
`Applicant and its Use of the Color Blue
`
`26.
`
`Notwithstanding Opposer’ s and other competitors’ long-standing and ubiquitous use
`
`ofthe Color Blue for fertilizer, Applicant, on October 3, 2007, filed two trademark applications with
`
`the U.S. Patent and Trademark Office: one claims the color blue for blue-colored granular fertilizer
`
`blended with other color(s) of fertilizer, and a second generally seeks protection for the color blue on
`
`fertilizers.
`
`27.
`
`Upon information and belief, Applicant claims a first use date of 1954 based on
`
`purported “tacking,” or use by its alleged predecessors-in-interest.
`
`28.
`
`Upon information and belief, Applicant’s alleged priority right to use the Color Blue
`
`as a trademark for fertilizer is derived, inter alia, from its purported succession ofNor-Am Chemical
`
`Company’s (“Nor-Am’s”) alleged trademark rights in the Color Blue for fertilizer.
`
`29.
`
`In 1986, Nor-Am brought suit in the U.S. District Court for the Eastern District of
`
`Pennsylvania, asserting claims of unfair competition and trademark infringement against O.M. Scott
`
`& Sons Company (“Scotts”). _S_e§ Nor-Am Chemical v. O.M. Scott & Sons Co., 4 USPQ2d 1316
`
`(E. Pa. 1987), a copy of which is attached hereto as Exhibit I and incorporated herein by reference.
`
`Nor-Am argued that Scotts’ use of the Color Blue on its own fertilizer violated Nor-Am’s established
`
`trademark rights.
`
`30.
`
`The court rejected Nor-Am’s trademark claim, finding that the color blue is
`
`functional: “a competitive need exists in the fertilizer industry generally, and in the specialty
`
`agricultural market specifically, for the coloration of fertilizer. Thus, Nor-Am is not entitled as a
`
`matter of law to use the color blue in the manufacture of nitrogen based fertilizer exclusively.” Q at
`
`1319.
`
`

`
`31.
`
`In reaching its conclusion, the court recognized several functional purposes for color
`
`in fertilizer: (l) “the use of color assists commercial blenders of fertilizer in determining whether
`
`various components of a blend are sufficiently mixed;” (2) “color assists users in determining
`
`whether fertilizer has been applied to an area, and if so, whether it has been applied uniformly;” and
`
`(3) “the scientific community uses the color blue to designate nitrogen and the color blue commonly
`
`identifies nitrogen in fertilizers outside the specialty agricultural fertilizer market.” Q at 1320.
`
`32.
`
`Upon infonnation and belief, Applicant’s claim oftrademark rights in the Color Blue
`
`on fertilizer is also based on alleged transfers and/or assignments from Spectrum Brand, Inc.
`
`(“Spectrum”), in or about 2006.
`
`33.
`
`Upon information and belief, Applicant relies on its succession of Spectrum’s
`
`purported trademark rights in the Color Blue on fertilizer in or about 2006 for its assertion that its
`
`alleged trademark rights predate 2006.
`
`34.
`
`Upon information and belief, Applicant’s first use of the Color Blue on fertilizer in
`
`commerce was in or about 2006, after it allegedly acquired certain trademark rights in same from
`
`Spectrum.
`
`IV.
`
`The Applications
`
`35.
`
`Applicant filed Application Serial No. 77/295,286 on October 3, 2007,
`
`for
`
`“fertilizers.” The color(s) blue is/are claimed as a feature of the mark. The description of the mark
`
`is: “The mark consists ofthe color blue used on the granules of fertilizers. The dotted outline around
`
`the granules of fertilizers is intended to show placement of the color blue and is not claimed as part
`
`of the mark.” This application claims the date of first use of 1954. E Application Serial No.
`
`77/295,286, submitted herewith as Exhibit A and incorporated herein by reference.
`
`

`
`36.
`
`Applicant filed Application Serial No. 77/295,316 on October 3, 2007, for “granular
`
`fertilizer ingredients from blended fertilizers.” Theicolor(s) blue is/are claimed as a feature of the
`
`mark. The description ofthe mark is: “The mark consists ofthe Color Blue as applied to a portion of
`
`the granules constituting a fertilizer blend, the remainder of the granules having contrasting colors,
`
`but such colors are not claimed as part of the mark. The dotted outline of the goods shown in the
`
`drawing is intended to show the position of the mark and is not part of the mark.” This application
`
`also claims the date of first use of 1954. E Application Serial No. 77/295,316, submitted herewith
`
`as Exhibit B and incorporated herein by reference.
`
`37.
`
`Neither Application claims a specific hue, shade or Pantone color of blue; instead,
`
`both Applications seek exclusive trademark rights to the entire, broad spectrum of the Color Blue.
`
`E Exhibits A & B.
`
`3 8.
`
`Upon information and belief, Applicant asserts exclusive rights in nearly every shade
`
`of the color blue for fertilizer, including at least 130 Pantone color shades.
`
`39.
`
`Applicant also filed Trademark Application Serial No. 77/357,676, on December 21,
`
`2007, for “fertilizers for agriculture.” The color(s) green is/are claimed as a feature of the mark.
`
`The description of the mark is: “The mark consists of the Color Green used on the granules of
`
`fertilizers. The dotted outline around the granules of fertilizers is intended to show placement ofthe
`
`Color Green and is not claimed as part of the mark.” The claimed date of first use is October 2003.
`
`3 Application Serial No. 77/357,676, submitted herewith as Exhibit C and incorporated herein by
`
`reference.
`
`40.
`
`Applicant also filed Trademark Application Serial No. 77/357,703, on December 21,
`
`2007, for “fertilizers for agriculture.” The color(s) green is/are claimed as a feature of the mark.
`
`The description of the mark is: “The mark consists of the Color Green as applied to a portion of the
`
`

`
`granules constituting a fertilizer blend, the remainder of the granules having contrasting colors, but
`
`such colors are not claimed as part of the mark. The dotted outline around the granules of fertilizers
`
`is intended to show placement of the Color Green and is not claimed as part of the mark.” The
`
`claimed date of first use is October 2003. & Application Serial No. 77/357,703, submitted
`
`herewith as Exhibit D and incorporated herein by reference.
`
`41.
`
`Applicant also filed Trademark Application Serial No. 77/322,290, on November 6,
`
`2007, for “fertilizers.” The color(s) green is/are claimed as a feature of the mark. The description of
`
`the mark is: “The mark consists of the Color Green used on the granules of fertilizers. The dotted
`
`outline around the granules of fertilizers is intended to show placement ofthe Color Green and is not
`
`claimed as part ofthe mark.” The claimed date of first use is April 1989. fig Application Serial No.
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`77/322,290, submitted herewith as Exhibit E and incorporated herein by reference.
`
`42.
`
`Applicant also filed Trademark Application Serial No. 77/322,303, on November 6,
`
`2007, for “granular fertilizer ingredients ofblended fertilizers.” The color(s) green is/are claimed as
`
`a feature of the mark. The description of the mark is: “The mark consists of the color green as
`
`applied to a portion of the granules constituting a fertilizer blend, the remainder of the granules
`
`having contrasting colors, but such colors are not claimed as part of the mark. The dotted outline of
`
`the goods shown in the drawing is intended to show the position of the mark and is not claimed as
`
`part of the mark.” The claimed date of first use is April 1989. E Application Serial No.
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`77/322,303, submitted herewith as Exhibit F and incorporated herein by reference.
`
`43.
`
`Applicant also filed Trademark Application Serial No. 77/667,283, on February 10,
`
`2009, for “fertilizers.” The color(s) tan is/are claimed as a feature of the mark. The description of
`
`the mark is: “The mark consists of the color tan used on the granules of fertilizers. The dotted
`
`outline around the granules of fertilizers is intended to show placement of the color tan and is not
`
`

`
`claimed as part of the mark.” The claimed date of first use is 1998. g Application Serial No.
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`77/667,283, submitted herewith as Exhibit G and incorporated herein by reference.
`
`44.
`
`Applicant also filed Trademark Application Serial No. 77/667,310, on February 10,
`
`2009, for “granular fertilizer ingredients of blended fertilizers.” The color(s) tan is/are claimed as a
`
`feature ofthe mark. The description ofthe mark is: “The mark consists ofthe color tan as applied to
`
`a portion of the granules constituting a fertilizer blend, the remainder of the granules having
`
`contrasting colors, but such colors are not claimed as part of the mark. The dotted outline of the
`
`goods shown in the drawing is intended to show the position of the mark and is not a part of the
`
`mark.” The claimed date of first use is 1998. E Application Serial No. 77/667,310, submitted
`
`herewith as Exhibit H and incorporated herein by reference.
`
`CLAIMS
`
`Count I: The Color Blue is Not Distinctive of Applicant’s Goods.
`
`45.
`
`Opposer hereby adopts and incorporates paragraphs 1 through 44 of this Notice as if
`
`set forth fully herein.
`
`46.
`
`Color trademarks are not inherently distinctive of an applicant’s goods in commerce;
`
`rather, the applicant must establish that a color has become distinctive under Section 2(f) of the
`
`Trademark Act. TMEP § l202.05(a).
`
`47.
`
`Trademark rights are not established, and a registration must be refused, if an
`
`applicant cannot establish distinctiveness. Ld.
`
`48.
`
`Under Section 2(f), a color is distinctive of an applicant’s goods if the applicant
`
`proves “substantially exclusive and continuous use” ofthat color in connection with those goods “for
`
`five years before the date on which the claim of distinctiveness is made.” 15 U.S.C. § lO52(f).
`
`49.
`
`The Color Blue is not distinctive of Applicant’s fertilizer under Section 2(f) of the
`
`10
`
`

`
`Trademark Act because the Applicant has not enjoyed substantially exclusive use of that color for
`
`fertilizer for five years before it filed the Applications.
`
`50.
`
`Specifically, numerous of Applicant’s competitors, including Opposer, do and have
`
`sold blue-colored fertilizer — with at least one competitor’s use dating back over 57 years ago —
`
`without any instances of confusion in the marketplace as to the source of such fertilizer.
`
`51.
`
`Consumers for fertilizer do not View the Color Blue as a source identifier.
`
`52.
`
`Applicant has not developed a secondary meaning in the Color Blue for fertilizer.
`
`53.
`
`Further, the fact that Applicant is pursuing registrations for three distinct colors —
`
`green, blue and tan — demonstrates that Applicant’s fertilizer is not distinctively identified with one
`
`particular color.
`
`54.
`
`Applicant’s use of the Color Blue has not become distinctive of the Applicant’s
`
`goods. Opposer will be damaged by the registrations because it will be prevented from continuing
`
`to use the Color Blue on its fertilizers.
`
`Count II: The Color Blue Is Functional When Used With Fertilizer.
`
`(Alternative to Count IV below)
`
`55.
`
`Opposer hereby adopts and incorporates paragraphs 1 through 54 of this Notice as if
`
`set forth fully herein.
`
`56.
`
`“No trademark by which the goods of the applicant may be distinguished from the
`
`goods of others shall be refused registration on the principal register on account of its nature unless it
`
`(e) consists of a mark which
`
`(5) comprises any matter that, as a whole, is functional.” 15
`
`U.S.C. § l052(e)(5).
`
`57.
`
`A product feature is functional if it is essential to the use or purpose ofthe article or if
`
`it affects the cost or quality of the article.
`
`11
`
`

`
`58.
`
`If a color gives a trademark owner an advantage over its competitors that is unrelated
`
`to reputation, the color serves a function and, therefore, is not a protectable trademark.
`
`59.
`
`Colors that serve some usefiil purpose on products are functional and unprotectable.
`
`60.
`
`A color can be functional even if it does not cause the product itselfto perform better.
`
`61.
`
`Over the years, many different fertilizer manufacturers and/or sellers have used the
`
`Color Blue on their fertilizers, and their purchasers have come to recognize these colors generally to
`
`identify fertilizer, without association with the particular manufacturer.
`
`62.
`
`The Color Blue is commercially used on fertilizer by Applicant, Opposer and other
`
`competitors, for the purpose of identifying to the consumer that the fertilizer contains nitrogen.
`
`63.
`
`The Color Blue also assists commercial blenders of fertilizer in determining whether
`
`various components of a blend are sufficiently mixed.
`
`64.
`
`The Color Blue also assists users in determining whether fertilizer has been applied to
`
`an area, and if so, whether it has been applied uniformly.
`
`65.
`
`Through the Applications, Applicant intends to bar its competitors,
`
`including
`
`Opposer, from continuing the long custom in the trade of coloring nitrogen-infused fertilizer blue.
`
`66.
`
`If Opposer and Applicant’s other competitors are unable to use the Color Blue, they
`
`will be put in the unfair disadvantage of having to adopt a new color that customers do not associate
`
`with nitrogen-infused fertilizer.
`
`67.
`
`Applicant’s pursuit of similar trademark registrations for the colors green and tan
`
`further puts Opposer and the other competitors at a disadvantage; if they are not able to use these
`
`three traditional colors of fertilizer, Opposer will be forced to expend enormous time and resources
`
`to develop its consumers’ association of fertilizer with a new color.
`
`12
`
`

`
`68.
`
`Because the Color Blue has numerous utilitarian purposes when used with fertilizer
`
`and Opposer would be put in an unfair competitive disadvantage if it was unable to use it, the
`
`Applications violate the functionality doctrine and Opposer will be unfairly damaged. Therefore, the
`
`registrations should be denied.
`
`Count III: The Color Blue is Aesthetically Functional.
`(Alternative to Count IV below)
`
`69.
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`Opposer hereby adopts and incorporates paragraphs 1 through 68 of this Notice as if
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`set forth fully herein.
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`70.
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`A color trademark is functional and not registrable if the color provides a competitive
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`advantage from aesthetic appeal versus other available colors.
`
`71 .
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`Here, Applicant seeks to register the Color Blue. As discussed above, customers have
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`come to recognize the color blue to generally identify fertilizer, without associating the color with a
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`particular manufacturer or source.
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`72.
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`Notwithstanding the traditional use of blue dye throughout the fertilizer industry,
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`Applicant does not limit its claim of exclusivity to any particular hue, shade or Pantone color ofblue;
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`rather, Applicant seeks to deny Opposer and other competitors the right to use any shade, hue or
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`Pantone color of blue.
`
`73.
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`The Color Blue is aesthetically pleasing versus other colors to consumers because
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`such color is commonly associated with fertilizer and complements the ground on which it is spread.
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`74.
`
`Applicant is concurrently seeking to register the colors green and tan, which are also
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`aesthetically pleasing to consumers versus other colors because they are commonly associated with
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`fertilizer and they complement the ground upon which they are spread.
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`75.
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`If Opposer and Applicant’s other competitors are unable to use the aesthetically
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`pleasing Color Blue, they will be put at a competitive disadvantage by having to use colors that are
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`less aesthetically pleasing, and thus less attractive to consumers.
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`76.
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`Since the Color Blue has an aesthetic function when used with fertilizer, the
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`Applications violate the functionality doctrine and Opposer would be unfairly damaged by being
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`prevented from similarly taking advantage of the aesthetic appeal ofthe Color Blue. Therefore, the
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`registrations should be denied.
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`Count IV: The Color Blue Is Merely Ornamental and Decorative.
`(Alternative to Counts II and III above)
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`77.
`
`Opposer hereby adopts and incorporates paragraphs 1 through 54 of this Notice as if
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`set forth fully herein.
`
`78.
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`If a party’s use of a color is merely ornamental and not perceived as a source-
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`identifier, the party has not developed any registrable trademark rights in such color.
`
`79.
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`Here, the Color Blue is ornamental. Specifically, it is used by Applicant, Opposer,
`
`and numerous other competitors merely to color their fertilizer, or for purposes other than source
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`identification.
`
`80.
`
`Especially in light ofthe extensive use ofthe Color Blue by numerous manufacturers
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`including Opposer, the Color Blue does not identify one particular source of the fertilizer.
`
`81 .
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`Further, Applicant’s concurrent applications for three distinct colors — green, blue and
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`tan — demonstrate that, rather than use the Color Blue to identify Applicant as the source of the
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`fertilizer, Applicant uses the Color Blue (and the other colors) omarnentally.
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`82.
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`Because the Color Blue is ornamental, Opposer will be damaged by the registrations.
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`If the registrations issue, Opposer will be prevented from continuing to use the Color Blue on its
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`fertilizers. Therefore, the registrations should be denied.
`
`Count V: Applicant Is Collaterally Estopged From Asserting Trademark Rights In The
`Color Blue.
`
`83.
`
`Opposer hereby adopts and incorporates paragraphs 1 through 82 of this Notice as if
`
`set forth fully herein.
`
`84.
`
`An applicant may be collaterally estopped from pursuing a trademark registration if a
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`prior adjudication adversely resolved an applicant’s assertion of trademark rights in the same mark.
`
`85.
`
`The requirements of collateral estoppel are: 1) the issue to be determined is identical
`
`to the issue involved in the prior litigation; 2) the issue was raised, litigated and actually adjudged in
`
`the prior action; 3) the determination of the issue must have been necessary and essential to the
`
`resulting judgment; and 4) the party precluded must have been fully represented in the prior action.
`
`86.
`
`In 1987, the United States District Court for the Eastern District ofPennsylvania ruled
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`that the Applicant’ s predecessor’ s asserted trademark rights in the Color Blue for fertilizer were not
`
`enforceable because the Color Blue was functional as applied to fertilizer. E Nor-Am Chemical v.
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`O.M. Scott & Sons Co., 4 USPQ2d 1316 (E. Pa. 1987).
`
`87.
`
`Being in privity with Nor-Am, Applicant is precluded from re-litigating the same
`
`issues that were previously judicially determined in Nor-Am Chemical V. O.M. Scott & Sons Co.
`
`88.
`
`Collateral estoppel applies to bar Applicant’s asserted trademark rights because the
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`issue of the protectability of the Color Blue as a trademark for fertilizer was raised, litigated and
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`actually adjudged against Applicant’s predecessor in the prior action.
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`15
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`
`89.
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`Further, the determination of Applicant’s trademark rights in the Color Blue was
`
`necessary and essential to the resulting judgment.
`
`90.
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`Also, Applicant, through its predecessor, was fully represented in the prior action
`
`when it was adjudged not to have exclusive, enforceable trademark rights in the Color Blue on
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`fertilizer.
`
`91.
`
`Since Applicant is collaterally estopped from asserting trademark rights in the Color
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`Blue and taking the position that the Color Blue is not functional, Applicant carmot now claim that it
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`has exclusive, enforceable trademark rights in same. Further, Opposer would be unfairly damaged if
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`the registrations are issued because Opposer will be prevented from using a color which a court has
`
`already resolved is functional and in which Applicant has no enforceable trademark rights.
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`Therefore, the registration should be denied.
`
`Count VI: Applicant Has Abandoned Its Rights
`
`92.
`
`Opposer hereby adopts and incorporates paragraphs 1 through 91 of this Notice as if
`
`set forth fully herein.
`
`93.
`
`Under 15 U.S.C. § 1 127, a trademark is abandoned, “When any course of conduct of
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`the owner, including acts of omission as well as commission, causes the mark to become the generic
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`name for the goods or services on or in connection with which it is used or otherwise to lose its
`
`significance as a mark.”
`
`94.
`
`Here, Applicant has abandoned any alleged trademark rights in the Color Blue by
`
`allowing numerous other competitors, including Opposer, to use the Color Blue for decades without
`
`objection.
`
`95.
`
`Applicant has permitted the Color Blue to serve as a common, generic color on
`
`fertilizer throughout the industry for numerous years.
`
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`96.
`
`Since any alleged trademark rights in the Color Blue have been abandoned, Applicant
`
`cannot now assert any enforceable trademark rights in such color. Opposer would be unfairly
`
`damaged if Applicant were permitted to resurrect its alleged rights and prevent Opposer from using
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`the Color Blue. Therefore, the registrations should be denied.
`
`Count VII: Applicant Committed Fraud On The Office By Filing A False Declaration
`
`97.
`
`Opposer hereby adopts and incorporates paragraphs 1 through 96 of this Notice as if
`
`set forth fi.1lly herein.
`
`98.
`
`Fraud in procuring a trademark registration or renewal occurs when an applicant
`
`knowingly makes a false, material representation of fact in connection with his application, e.g., in a
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`Verified declaration forming a part of the application for registration.
`
`99.
`
`As part of its Applications, Applicant signed verified declarations stating:
`
`...to the best of his/her knowledge and belief no other person, firm, corporation, or
`association has the right to use the mark in commerce, either in the identical form
`thereof or in such near resemblance thereto as to be likely, when used on or in
`connection with the goods/services of su