Gardens Alive, which has a family of trademarks ending in “ALIVE!” filed an opposition to an Australian-based company’s trademark request for PLANTSALIVE. The opposition cited a likelihood of confusion between the mark and its family of marks.
The trademark application was filed on April 22, 2020 by SP & RA PTY LTD and is intended for goods in class 021, specifically “herb storage containers for household use.” The opposer, however, claimed that the application does not include a “claim of actual use” but that instead the company applied for the trademark on an “Intent to Use basis.”
Gardens Alive’s family of trademarks includes “GARDENS ALIVE!, HOUSEPLANTS ALIVE!, VEGETABLES ALIVE!, TURF ALIVE!, TOMATOES ALIVE!, COMPOST ALIVE!, BULBS ALIVE!, and FRUIT TREES ALIVE!,” according to the complaint.
The company is a garden and plant supply company that claimed it has sold products consistently using its family of trademarks since 2011, including “a variety of containers for growing and storing plants, vegetables, and herbs.” The opposer also cited that it should have long-standing common-law rights in addition to its owned registered trademarks because it has been using its marks since 1988 for organic plant food and other items.
Gardens Alive argued that it has invested time and money into promoting its marks and has developed both goodwill and recognition from consumers. It further purported that since the goods it produces are similar to those produced by the applicant, and would be marketed to the same consumers, it could cause Gardens Alive harm.
The opposition claimed, “if successful, Applicant’s attempt to register a nearly identical mark to one used by Opposer will create a dangerous legal presumption in Applicant’s favor harming Opposer’s ability to fairly compete in the marketplace.” It further claimed that the opposer could have harm to its reputation due to registration of the mark.