This Opinion Is Not a
Precedent of the TTAB

Mailed: September 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Biochar Supreme Inc.
v.
Forest Concepts, LLC
_____

Opposition No. 91233360
Cancellation No. 92065060
_____

Dawn A. Deans of Kickstart Law Corporation
for Biochar Supreme Inc. (“Plaintiff”)

Thomas F. Broderick for Forest Concepts, LLC (“Defendant”)
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Shaw and
English, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:

Defendant, Forest Concepts, LLC, seeks registration of the mark ULTRACHAR

in standard characters for “plant biomass particle feedstocks of substantially uniform

size used in the manufacture of biochar charcoal,” in International Class 1.1

1 Application Serial Number 87125910 was filed on August 3, 2016, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
References to the briefs, motions and evidence are to the Board’s TTABVUE docket system.
Opposition No. 91233360
Cancellation No. 92065060

Defendant is the owner of a registration for the same mark for “biochar, namely,

pyrolyzed biomass particles of substantially uniform size, useful for soil amendment

and environmental remediation,” in International Class 1.2

Plaintiff asserts common law rights in the mark ENVIRONMENTAL ULTRA for

“biochar, namely activated carbon or charcoal for use in water filtration, soil

amendment, and environmental remediation.”3 Plaintiff opposes Defendant’s

pending application and seeks cancellation of Defendant’s registration based upon an

allegation of priority and likelihood of confusion under Section 2(d) of the Lanham

Act. 15 U.S.C. § 1052(d).

We consolidated these proceedings because they “involve the same parties and

common questions of law or fact …”4 Defendant denied the salient allegations in the

Notice of Opposition and the Petition to Cancel, but later admitted to Plaintiff’s

standing and priority.5 The case has been fully briefed. We find the evidence of record

insufficient to establish a likelihood of confusion and therefore dismiss the Opposition

and deny the Petition to Cancel.

2U.S. Reg. No. 5087194 issued on November 22, 2016, from an application filed January 5,
2015.
3 7 TTABVUE 3 (91233360); 5 TTABVUE 3 (92065060). Plaintiff has a pending, suspended
application for the same mark for “biochar, namely, activated carbon for use in water
filtration, soil amendment and environmental remediation for agricultural and horticultural
use,” in International Class 1. 26 TTABVUE 16-21. As explained in the following section,
Plaintiff initially asserted a different mark in the Cancellation action, but later amended the
Petition to reconcile it with the Notice of Opposition.
44 TTABVUE 1 (91233360). The opposition proceeding was designated the “parent” case and
unless otherwise noted, all references will be to the record of the opposition.
57 TTABVUE 3 (92065060); 11 TTABVUE 5 (91233360); 61 TTABVUE 9 (“Defendant agrees
that Plaintiff has established standing and priority in these consolidated Opposition and
Cancellation proceedings.”).

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Opposition No. 91233360
Cancellation No. 92065060

I. Background

Plaintiff initiated these two proceedings after learning that Defendant was

seeking registration of the mark ULTRACHAR for biochar and for feedstocks used to

make biochar.6 Plaintiff filed on June 29, 2016, an application to register the mark

ULTRA ENVIRONMENTAL BIOCHAR for “Activated carbons for Water filtration

and Environmental Remediation,” in International Class 1.7 The Examining Attorney

suspended Plaintiff’s application based on Defendant’s then-pending application,

explaining that if Defendant’s application issued as a registration, a likelihood of

confusion refusal might be issued.8 Defendant’s registration issued on November 22,

2016.

On December 23, 2016, Plaintiff filed a Petition to Cancel Defendant’s

registration, alleging common law rights in the marks ULTRA ENVIRONMENTAL

BIOCHAR and ULTRA.9 Defendant moved for a more definite statement arguing the

Petition failed to assert priority of use.10 Plaintiff filed an amended Petition alleging

6 60 TTABVUE 17 (“Plaintiff first became of [sic] aware of Defendant’s registration, and
ultimately the second application, for the ULTRACHAR mark as a result of the examining
attorney’s October 21, 2016 suspension letter and 2(d) likelihood of confusion refusal notice.”)
We use a shortened version of the goods here for convenience, but our decision is based on
the goods as identified in the record.
7Serial No. 87087343 filed on June 29, 2016 based on alleged use of the mark in commerce.
15 U.S.C. § 1051(a). Plaintiff disclaimed the words “ENVIRONMENTAL BIOCHAR” in this
application. 26 TTABVUE 8-10.
8 26 TTABVUE 11.
9 1 TTABVUE 1 (92065060) (asserting ULTRA ENVIRONMENTAL BIOCHAR mark), 4-5
(identifying the mark as ULTRA within the Petition).
10 4 TTABVUE 2 (92065060).

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Cancellation No. 92065060

common law rights only in the mark ENVIRONMENTAL ULTRA.11 Plaintiff then

filed an application to register the mark ENVIRONMENTAL ULTRA for “biochar,

namely activated carbon or charcoal for use in water filtration, soil amendment, and

environmental remediation,” in International Class 1.12

On August 3, 2016, Defendant filed the application being opposed in these

proceedings.13 This application was allowed, published, and then opposed by Plaintiff.

II. The Record

The record consists of the pleadings, the files of Defendant’s subject application

and registration, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), and

the evidence submitted by the parties. We summarize Plaintiff’s evidence as follows:

• A testimonial declaration of Renel Anderson, President and CEO of
Plaintiff, together with exhibits purporting to show, among other things,
use and promotion of the ENVIRONMENTAL ULTRA mark;14

• A Notice of Reliance submitting file records for Plaintiff’s two trademark
applications identified above and certain corporate records;15 and,

• A Notice of Reliance submitting documents from Plaintiff’s website and
Facebook account.

11 5 TTABVUE 3 (92065060).
12Serial No. 87327044 filed on February 7, 2017 based on alleged use of the mark in
commerce. 15 U.S.C. § 1051(a). Plaintiff disclaimed the word “ENVIRONMENTAL” in this
application. This application was suspended on June 19, 2017 and remains suspended. 26
TTABVUE 16-21.
13 Application Serial No. 87125910.
14 25 TTABVUE.
15 26 TTABVUE.

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Cancellation No. 92065060

Defendant submitted a great deal of evidence, much of it untimely. Upon motion,

we struck Defendant’s untimely submissions.16 During its trial period, Defendant

made an additional 16 submissions. Plaintiff objected generally to the large record

submitted by Defendant, but made no specific objections to the evidence Defendant

submitted during its trial period.17 We give appropriate weight to the evidence in the

record.

We summarize Defendant’s evidence as follows:

• Several testimonial declarations that purport to authenticate documentary
evidence submitted as exhibits to the declarations. Many of these
documents are of a technical nature. Other documents, including the file
records of Defendant’s application and registration, were already of record
by rule.18

• Several Notices of Reliance that submit similar evidence, much of it
technical.19

The technical evidence submitted by Defendant relates to the goods at issue in these

proceedings, namely biochar, which is “prolyzed biomass,” to use Defendant’s

wording.20 This evidence is relevant to understanding the goods and the meaning of

both parties’ marks, as we explain below. Defendant also submitted some evidence of

third-party use of the term “ultra” for similar or related goods.

16 41 TTABVUE 1-2.
17 60 TTABVUE 32.
1842-46, 51, 53 TTABVUE. The exhibits submitted with these declarations cover a few
thousand pages.
19 47-50, 52, 54-57 TTABVUE.
20 61 TTABVUE 6.

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Opposition No. 91233360
Cancellation No. 92065060

III. Standing and Priority

“Defendant agrees that Plaintiff has established standing and priority in these

consolidated Opposition and Cancellation proceedings.”21 Standing and priority are

important requirements, but Defendant’s concession effectively resolves these issues.

See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

1062 (Fed. Cir. 2014) (standing must be established in all cases); Penguin Books Ltd.

v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice

King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)) (priority must

be established to support a claim under Section 2(d)).

IV. Plaintiff’s Alleged Common Law Trademark Rights

Plaintiff asserts common law trademark rights as the basis for these proceedings.

Defendant’s agreement that Plaintiff has established priority constitutes an

admission that Plaintiff has proven it had valid common law trademark rights prior

to January 5, 2015, the filing date of Defendant’s first application. We note, however,

that Defendant also challenged Plaintiff’s allegations of trademark use.22 Such

arguments appear to contradict Defendant’s concession on the priority issue.

We treat Defendant’s admission and arguments on this issue as a legal concession

on the priority issue, while reserving the right to challenge the strength and scope of

Plaintiff’s common law rights in the ENVIRONMENTAL ULTRA mark. For that

21 61 TTABVUE 9 (“Plaintiff has established standing and priority …”).
22 Id. at 18-19 (noting irregular use of the marks by Plaintiff).

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reason, we evaluate Plaintiff’s mark and the evidence of record to determine the

nature and scope of its common law trademark rights.23

A. The ENVIRONMENTAL ULTRA Mark Is Merely Descriptive

Plaintiff correctly notes that it “must also establish that its mark is distinctive,

either inherently or through secondary meaning.”24 Plaintiff argues

ENVIRONMENTAL ULTRA is a suggestive mark, but the evidence shows the mark

is merely descriptive because it “immediately conveys information concerning a

feature, quality, or characteristic of the goods or services.” Real Foods Pty Ltd. v.

Frito-Lay N. Am., Inc., 906 F.3d 965, 972 (Fed. Cir. 2018) (internal quotation

omitted). A relevant consumer who sees ENVIRONMENTAL ULTRA biochar will

immediately understand that this product is an ultra type of biochar that is well-

suited for environmental use.

Plaintiff states four times in its brief that its ENVIRONMENTAL ULTRA biochar

is sold to customers engaged in “environmental remediation.”25 Both of Plaintiff’s

trademark applications include “environmental remediation” in the identification of

goods.26 Plaintiff appears to recognize that the word environmental is merely

descriptive, as it disclaimed the word in both its applications.27

23Plaintiff argues at one point that it can prevail by proving “prior use as a trade name …”
60 TTABVUE 22. That is incorrect in this case because the mark ENVIRONMENTAL
ULTRA is not a “name used by a person to identify his or her business or vocation.” 15 U.S.C.
§ 1127. Plaintiff’s mark is used to identify a particular product. It is not a trade name.
24 60 TTABVUE 22.
25 Id. at 11, 13, 14, 30. See also 25 TTABVUE 3-4, 6-7 (Anderson declaration).
26 Serial Nos. 87087343, 87327044.
27 Serial Nos. 87087343, 87327044.

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Cancellation No. 92065060

To appreciate the meaning of the composite ENVIRONMENTAL ULTRA mark,

we need to look more closely at the word ultra.28 Defendant submitted extensive

evidence showing that the word ultra is a widely used term of art within the biochar

industry. In fact, even Plaintiff’s evidence shows that the word ultra is used in a

descriptive sense for Plaintiff’s goods.

Plaintiff submitted three technical articles that were co-authored by Renel

Anderson, the President and CEO of Plaintiff.29 The first and second articles were

published in CHEMICAL ENGINEERING JOURNAL and reported on experiments

involving the removal of certain contaminants from wastewater using biochar.30

These two articles and other technical evidence, establish the following three facts:

1. Biochar is a generic term for a type of charcoal produced by heating biomass
to a high temperature in a low-oxygen environment. The word biochar is
used generically throughout almost all the technical evidence, including the
first article submitted by Plaintiff.31 Plaintiff’s goods are biochar.

2. Char is an abbreviation for biochar and is also a generic term for Plaintiff’s
goods.32

28 We are cognizant of the need to consider the marks as a whole and to avoid improper
dissection of the marks. See, e.g., Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion”). Though we consider the meaning of each term in Plaintiff’s ENVIRONMENTAL
ULTRA mark, we do so only to better understand what the composite mark means as a whole.
29 25 TTABVUE at Exhs. 2a, 2b, 2c.
30 Id. at 40, 54.
31Id. at 40-42, 54-56. These pages are merely illustrative. Almost every other technical paper
cited in this decision includes generic uses of the word biochar. The parties do not appear to
dispute that this is a generic term. The second article contains similar generic uses of the
word char. Id. at 55 (generic use of char), 62 (table with many generic uses of char, such as
“oak wood char,” and “oak bark char” and so on).
32Id. at 42-45 (at least five generic uses of the word char as an abbreviation of biochar).
Defendant’s evidence also contains extensive generic uses of the word char. See, e.g., 43
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3. Ultra is a particular type of biochar. It is a descriptive term of art when
used in the relevant industry.

Ultra biochar is a type of biochar produced at a higher temperature that results

in smaller pores in the carbon.33 There is ample evidence to show that persons

familiar with this industry use ultra as a term of art. Indeed, even one of the articles

co-authored by Ms. Anderson describe the product provided by Plaintiff as merely

“ultra biochar.”34 Emails submitted by Plaintiff contain similar references to “ultra

biochar,” thus confirming that even Plaintiff and its customers use biochar as a

generic term and ultra as a descriptive term.35

Defendant submitted a great deal of evidence showing uses of the word ultra.

Some of this evidence shows a combination of the generic abbreviation char with the

descriptor ultra, as in the following abstract from a technical paper:

The laboratory column test results indicated that the most
efficient adsorption medium for both copper and zinc is
ultra-char of poplar, followed by tanoak crumbles, poplar
crumbles, ultra-char of Douglas-fir, Douglas-fir crumbles,
lodgepole pine crumbles, and ultra-char of alder, in that
order…[And] wood crumbles and ultra-chars of different
wood crumbles …36

TTABVUE 29 (U.S. Patent No. 9,890,332 – numerous generic uses of the word char), 45
(same), 122-32, 148.
33 61 TTABVUE 9 (an ultra biochar has “activated carbons produced by high pyrolysis
temperature that increases environmental adsorption due to ultramicropores”). We do not
rely on Defendant’s argument to establish this fact, as the following discussion shows. We
agree, however, with the general definition Defendant provided for the meaning of the word
ultra within this industry.
34 25 TTABVUE 67.
35 Id. at 174-76.
36 43 TTABVUE 107. We note that this evidence tends to show that Defendant’s
ULTRACHAR mark is a combination of a descriptive term and a generic term. We discuss
this point more in the likelihood of confusion analysis below.

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Graphs and tables in the same paper refer repeatedly to “various ultra-chars.”37 A

study of the biochar market by Oregon State University includes the following:

The stakeholders stated that they could potentially
produce the low temperature char at approximately $300/
cu. yd. and the high temperature (pyrolysis/combustion?),
‘ultra’ biochar at approximately $500 / cu. yd. Although the
ultra biochar is more favorable for organics predominantly
due to surface area chracteristics [sic], the biochar
produced at a low temperature is cheaper to produce and
thus is more realistic in application to a bioswale.38

This document shows generic use of the words char and biochar, together with

descriptive use of the word ultra. Defendant presented another study that explained

“Premium and Ultra biochars were obtained from Black Owl Biochar in Washington

state, USA …”39 In other words, Plaintiff provided the ultra biochar used in the study.

Defendant also submitted substantial evidence showing that persons involved in

biochar research began to notice that heating the feedstocks to a higher temperature

produced biochar with smaller pores in the carbon.40 When pores were less than about

0.7 nm in size, the resulting carbon tended to act as a molecular sieve, which

increased its ability to remove various materials (e.g., contaminants) from water

flowing through the biochar. The terms ultra micropores began to be used to identify

biochar with these characteristics. It appears the industry, including scientists, have

37 Id. at 123.
38 46 TTABVUE 49.
39 52 TTABVUE 914.
40See, e.g., 47 TTABVUE 17-25 (1981 paper describing ultra micropores in biochar); 48
TTABVUE 19-26 (noting that ultra micropores were typically less than 0.7 nm in size), 140-
46 (same), 201 (U.S. Patent Publ. 2011/0100211 – same), 524-31 (same); 49 TTABVUE 5-6
(more description of ultra micropores), 68-72 (same); 50 TTABVUE 53 (noting that ultra
micropores may be limited to less than 0.5 nm).

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continued this use and now simply refer to biochar containing ultra micropores as

ultra biochar.

We find the Plaintiff’s ENVIRONMENTAL ULTRA mark is merely descriptive

when used in connection with the Plaintiff’s goods. It includes two descriptive terms,

and these terms retain their descriptive meaning when combined, because in

combination the terms are complementary. Plaintiff’s goods are an ultra biochar that

is well-suited for use in environmental projects, particularly for environmental

remediation.

B. The Evidence of Acquired Distinctiveness Is Thin

Descriptive terms may become trademarks if they acquire distinctiveness.

Plaintiff bears the burden of proving that its ENVIRONMENTAL ULTRA mark is

distinctive and to do so, it “must show that, in the minds of the public, the primary

significance of [the] term[s] is to identify the source of the product rather than the

product itself.” Inwood Labs., Inc., v. Ives Labs., Inc. 456 U.S. 844, 214 USPQ 1, 4

n.11 (1982); see also In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422

(Fed. Cir. 2005). The kind and amount of evidence necessary to establish acquired

distinctiveness depends on the nature of the proposed mark and the circumstances

surrounding its use. In re Steelbuilding.com, 75 USPQ2d at 1424; In re Gen. Mills IP

Holdings II, LLC, 124 USPQ2D 1016, 1018 (TTAB 2017). We require “more evidence

… where a mark is such that purchasers seeing the matter in relation to the offered

goods would be less likely to believe that it indicates source in any one party.” Gen.

Mills, 1245 USPQ2d at 1018.

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Acquired distinctiveness may be proven through “both direct and circumstantial

evidence.” Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ2d 1739,

1743 (Fed. Cir. 2018). “Direct evidence includes actual testimony, declarations or

surveys of consumers as to their state of mind. Circumstantial evidence is evidence

from which consumer association may be inferred, such as years of use, extensive

amounts of sales and advertising, and any similar evidence showing wide exposure

of the mark to consumers.” Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468,

1506 (TTAB 2017).

If we were evaluating priority, we would limit our analysis to evidence from before

January 5, 2015, Defendant’s earliest priority date based on the record. But because

Defendant has conceded that Plaintiff has established priority, we will consider all

the evidence of acquired distinctiveness in the record. The only arguably direct

evidence of acquired distinctiveness is the testimony of Renel Anderson, Plaintiff’s

President and CEO. Ms. Anderson asserts that there is “strong consumer recognition

of the ENVIRONMENTAL ULTRA mark in the United States.”41 She goes on to state

that “the ENVIRONMENTAL ULTRA mark has acquired enormous value and

become extremely well known to the public and to the trade ….”42

We find these and other assertions in Ms. Anderson’s declaration unpersuasive

for two reasons. First, Mr. Anderson is a biased witness and her testimony on these

points is self-serving. Second, and more importantly, the documentary evidence does

41 25 TTABVUE 9.
42 Id.

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not corroborate these claims. Ms. Anderson refers to advertising and promotion of the

mark, but there are no advertising materials in the record other than webpages

showing Plaintiff’s products.43 A webpage on an Internet site is a form of advertising,

but without information on the number of times the page has been viewed or the

number of purchases made via the website, we cannot determine what impact, if any,

pages on the Internet have had on the perceptions of relevant consumers.

Ms. Anderson claims sales of ENVIRONMENTAL ULTRA biochar of at least

$100,000 annually since 2013.44 Plaintiff submitted 15 invoices dating from August

19, 2013 to October 11, 2017.45 These invoices show total sales of $174,415.98 for a

period of four years and almost two months. If Ms. Anderson’s assertion were true,

there should be invoices or other sales records showing over $400,000 for this period.

More importantly, the evidence shows only 15 sales over a period of more than four

years, which is an average of about one sale every three months. Such sporadic sales

are not likely to convert a merely descriptive term into a distinctive trademark.46

It appears that most of these sales were bulk biochar.47 No evidence was submitted

of any packaging for the goods. There is a copy of what appears to be a product label

43 Id. at 167-68, 170-71.
44 Id. at 8.
45 Id. at 72-75, 153-62, 164.
46Only six of these sales occurred before January 5, 2015, making it very unlikely that sales
alone were sufficient to establish common law trademark rights prior to Defendant’s earliest
priority date. But as we noted above, priority is not in dispute here.
47Many of the invoices state that the biochar was sold in cubic feet, cubic yards or otherwise
in bulk. Id. at 72-74, 153-56, 158-59, 161, 164.

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in evidence,48 but it is unclear to what extent this label was used on any of the goods

sold by Plaintiff. Only one invoice identifies a relatively small volume, a “powdered

gallon” sold to a customer in New Hampshire.49 There is no evidence of how this

product was packaged.

There are only two types of trademark uses of the ENVIRONMENTAL ULTRA

mark in the record. First, the invoices use the mark, or a variation of the mark, to

identify the goods sold. Such uses may qualify as trademark uses50—but these are

not substantial uses of the mark. These are billing records sent to customers, so each

invoice represents a single exposure of the trademark to a single customer. Fifteen

such instances spread over more than four years is not enough to acquire

distinctiveness. In addition, Plaintiff used variants of the ENVIRONMENTAL

ULTRA mark on over half the invoices, as the following examples show: Biochar

Ultra,51 BIOCHAR ENVIRONMENTAL — ULTRA,52 Biochar (on one line) Ultra (on

the next line below),53 Env. Ultra,54 Biochar Env Ultra,55 En Ultra,56 and Ultra

48 Id. at 71.
49 Id. at 75 (this is the smallest dollar sale in the record at $124.55).
5015 U.S.C. § 1127 (defining trademark use on goods as a use “on the goods or their containers
or the displays associated therewith or on the tags or labels affixed thereto, or if the nature
of the goods makes such placement impracticable, then on documents associated with the
goods or their sale”). For bulk sales of biochar, use of the mark on invoices may constitute a
trademark use if it is impracticable to place the mark on the goods or their containers.
51 Id. at 72.
52 Id. at 73.
53 Id. at 74.
54 Id. at 153.
55 Id. at 154.
56 Id. at 157.

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Biochar Sized (used in description of goods sold).57 One invoice uses Ultra

Environmental and Environmental Ultra for different entries.58 A descriptive mark

does not become distinctive when used in such an inconsistent manner.

The product identification from the webpage for Plaintiff’s ENVIRONMENTAL

ULTRA biochar is shown below.

59

The use of ENVIRONMENTAL ULTRA on this webpage as a trademark is

inconclusive.60 It is clearly inferior in significance to the other branding on the image,

which includes the Black Owl word mark and a distinctive owl design, as well. This

image also features the OMRI organic certification mark. In light of the finding of

descriptiveness of ENVIRONMENTAL ULTRA, supra, consumers could view the

term as describing the goods, and not as a trademark.

57 Id. at 158.
58 Id. at 162.
59 Id. at 71.
60 15 U.S.C. § 1127.

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There is no other evidence of acquired distinctiveness in the record. We have only

Ms. Anderson’s testimony, the invoices and the webpage screenshots. We give no

weight to the conclusory statements in Ms. Anderson’s declaration. See In re Chem.

Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding

conclusory declaration from applicant’s vice-president failed to provide contextual

information about sales and failed to establish that purchasing public came to view

alleged mark as indicator of source). The invoices prove almost nothing about the

distinctiveness of the ENVIRONMENTAL ULTRA mark. The webpages present the

trademark to all who view those pages, but we have no evidence to quantify such

exposures. Given the evidence of record, we find Plaintiff’s ENVIRONMENTAL

ULTRA mark is extremely weak and is likely still understood by some relevant

consumers as a descriptive identifier (i.e., telling consumers what kind of biochar it

is, rather than what source provided it). This finding is important in the likelihood of

confusion analysis that follows.

V. Likelihood of Confusion

Our 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, 177 USPQ 563, 567 (CCPA 1973) (setting forth

factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65

USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key

considerations are the similarities between the marks and the similarities between

the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

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1098, 192 USPQ 24, 29 (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.”).

Plaintiff 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, 55

USPQ2d 1842, 1844 (Fed. Cir. 2000). We consider the likelihood of confusion factors

about which there is evidence. Du Pont, 177 USPQ at 567-68 (consider factors “when

of record”); Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed.

Cir. 2018) (“Not all of the Du Pont factors are relevant to every case, and only factors

of significance to the particular mark need be considered.”(quoting In re Mighty Leaf

Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). In this case, the strength

(or lack thereof) of the marks at issue is also an important factor.

A. Strength of Plaintiff’s Mark

We first consider the strength of Plaintiff’s ENVIRONMENTAL ULTRA mark

because this factor is particularly important given the facts of this case. In identifying

“strength” as a single factor, we are combining two of the du Pont factors.61 “A strong

and fanciful mark is entitled to broad protection.” Mishawaka Rubber & Woolen Mfg.

Co. v. Bata Narodni Podnik, 222 F.2d 279, 285 (CCPA 1955); Nautilus Grp., Inc. v.

Icon Health & Fitness, Inc., 372 F.3d 1330, 1339 (Fed. Cir. 2004) (same). “A mark’s

61In Du Pont, the court identified the following two related factors: “the fame of the prior
mark” and “the number and nature of similar marks in use on similar goods.” In re E.I. Du
Pont de Nemours & Co., 177 USPQ at 567. These two factors go to the strength of Plaintiff’s
mark and, therefore, are treated together here.

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strength is measured both by its conceptual strength (distinctiveness) and its

marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d

1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see also Top Tobacco, L.P. v. North

Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011); Tea Bd. of India v.

Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); 2 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 11:83 (5th ed. 2019).

To evaluate the conceptual strength of word marks, we place the mark in one of

the following classes: “(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or

fanciful. The lines of demarcation, however, are not always bright.” Abercrombie &

Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Market strength also

“varies along a spectrum from very strong to very weak.” Joseph Phelps Vineyards,

LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.

2017).

We found in the preceding section that Plaintiff’s ENVIRONMENTAL ULTRA

mark is extremely weak. The mark is merely descriptive, which means many relevant

consumers will understand this mark as describing Plaintiff’s goods (i.e., as an

indication of the type of biochar it is). This fact substantially reduces the likelihood

of confusion because consumers who see other parties using similar terms are likely

to view those uses as descriptions of the goods, too. Rather than mistakenly believing

two products using similar descriptive terms come from a single source, most

consumers will conclude that two businesses offer similar products.

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Plaintiff’s ENVIRONMENTAL ULTRA mark also lacks market strength, which

means that relatively few members of the relevant consumer universe are aware that

Plaintiff is using these descriptive terms as a trademark. Relevant consumers who

are not aware that Plaintiff uses these terms as a trademark are likely to understand

the words “Environmental Ultra” biochar as describing the goods. The low market

strength of Plaintiff’s mark, therefore, further reduces the likelihood of confusion.

B. Similarity of the Marks

We next consider the similarity of the marks, because confusion is more likely

when the marks are similar. We consider the 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, 73 USPQ2d 1689,

1691 (Fed. Cir. 2005) (quoting Du Pont, 177 USPQ at 567). “Similarity in any one of

these elements may be sufficient to find the marks confusingly similar.” In re Davia,

110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling

Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968).

The test is not whether the marks can be distinguished when subjected to a side-

by-side comparison, but rather whether the marks are sufficiently similar in terms of

their overall commercial impression so that confusion as to the source of the goods

and services offered under the respective marks is likely to result. Cai, 127 USPQ2d

at 1801; Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046,

103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The focus is on the recollection of the

average purchaser, who normally retains a general rather than a specific impression

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of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB

1975).

To recap, Defendant’s mark is ULTRACHAR and Plaintiff’s mark is

ENVIRONMENTAL ULTRA. Both marks include the word ultra. As we explained

above, ultra is a descriptive term of art within the relevant industry. This fact is

important, because shared use of a common descriptive term does not make confusion

more likely. Instead, such uses send the message to consumers that both parties sell

similar goods, in this case, ultra biochar. This case is somewhat analogous to Bass

Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58

(TTAB 2008), where both parties used the terms “Sportsman’s Warehouse” in their

marks. The services offered by the parties were identical in part. Id. at 1856.

Despite the use of identical terms in marks for identical services, the Board found

no likelihood of confusion in the Bass Pro case because the shared terms were merely

descriptive. Id. at 1857-58, 1859-60.

A descriptive feature of a mark is entitled less weight than
inherently distinctive elements. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 that the ultimate conclusion rests on
consideration of the marks in their entireties”). Moreover,
it is well settled that when a mark, or a portion of a mark,
is inherently weak, it is entitled to a narrow scope of
protection. In other words, when a business adopts a mark
incorporating a descriptive term, it assumes the risk that
competitors may also use that descriptive term.

Id. at 1857. This logic applies to the current dispute, where Plaintiff adopted a merely

descriptive term—ultra—as part of its mark. It should not be surprised that another

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participant in the same industry is also using that term. The remaining parts of the

parties’ marks—the words environmental and char—are not similar. Taken as a

whole, there is some similarity between the two marks, but the common, descriptive

nature of the shared word ultra reduces the significance of the similarity here. In re

Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003) (“Because

there are significant differences in the … two marks, the finding of similarity is a less

important factor in establishing a likelihood of confusion than it would be if the two

marks had been identical in design or nearly indistinguishable to a casual observer.”).

C. Similarity of the Goods and Channels of Trade

Defendant admits the goods and channels of trade in the cancellation are

identical.62 Plaintiff sells biochar and Defendant’s registration identifies biochar.

Defendant argues that the parties market their biochar somewhat differently, but

admits the identification in its registration is effectively identical to the goods

Plaintiff sells.

We find the goods at issue in the opposition are closely related. Plaintiff asserts

the same rights in both proceedings, so its goods and trade channels are the same for

the cancellation and opposition. Defendant’s pending trademark application,

however, does not identify biochar. Instead, the opposed application identifies “plant

biomass particle feedstocks of substantially uniform size used in the manufacture of

62 61 TTABVUE 12.

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biochar charcoal.”63 Defendant’s goods (feedstocks) are used to create Plaintiff’s goods

(biochar). We find these goods closely related.

The identical or closely related goods in both proceedings make confusion more

likely. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d

1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970

F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85

USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing

Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).

The identical trade channels for the cancellation make confusion more likely in

that proceeding. To evaluate the trade channels for the opposition, we compare the

trade channels used by Plaintiff with those likely used for goods of the type identified

in Defendant’s application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston

Comp. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Plaintiff’s

evidence shows that it manufactures and sells biochar.64 The feedstocks identified in

Defendant’s application are used in the manufacture of biochar, which means the

trade channels for the goods at issue in the opposition also overlap.65 This fact makes

confusion more likely.

63 Serial No. 87125910.
64 25 TTABVUE 3.
65Defendant submitted a 2014 report on the biochar industry that included entries for both
parties. 54 TTABVUE at Exh. D80. This shows some difference between the parties’ positions
in the market, but it does not contradict our finding.

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D. Purchasing Conditions

Where the relevant consumers are likely to exercise greater care in making

purchases or have a greater knowledge and understanding of the goods, confusion is

less likely. Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21

USPQ2d 1388, 1391 (Fed. Cir. 1992). The evidence shows these are specialized goods

marketed by and to sophisticated purchasers.66

There is, however, also evidence that Plaintiff sells biochar in smaller volumes

over the Internet.67 These sales are at prices as low as $17.00 and appear to be

targeted to gardeners or small agricultural users.68 Plaintiff submitted only one

invoice that appears to have resulted from an Internet sale for a gallon of powdered

biochar sold for $124.55.69 Because we must evaluate this factor based on the least

careful or sophisticated segment of Plaintiff’s customers, we cannot place as much

weight on the more common sales to large, sophisticated customers. Stone Lion, 110

USPQ2d at 1163-64 (recognizing Board precedent requiring consideration of the

“least sophisticated consumer in the class”).

We find, however, that Plaintiff’s biochar products are specialized goods sold to a

small segment of the public. Even the smaller purchasers of Plaintiff’s goods are

likely to know what biochar is and its benefits. Spending about $125 for one gallon of

6625 TTABVUE 40-69 (technical articles relating to a university study involving Plaintiff’s
goods); 160-61 (receipts showing sales to state and city governmental bodies); 165-66 (emails
showing communications with sophisticated customers).
67 Id. at 75 (invoice for a gallon of powdered biochar sold via Shopify), 167-70 (screenshots
from Plaintiff’s website).
68 Id. at 167.
69 Id. at 75.

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biochar does not reflect an impulse purchase, but was more likely a reasoned decision

made by an informed customer. We find that even “the least sophisticated potential

purchasers” of these goods are likely to be more careful and sophisticated than the

average consumer. Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584,

1600 (TTAB 2011). This factor, therefore, suggests that confusion is less likely.

E. Actual Confusion or the Lack Thereof

We also combine the two Du Pont factors that relate to actual confusion.70 There

is no evidence of actual confusion. Nor is there sufficient evidence to support any

inferences based on the absence of actual confusion. Citigroup Inc. v. Capital City

Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98

USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,

1774 (TTAB 1992); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287

(TTAB 2007) (the probative value of the absence of actual confusion depends upon

there being a significant opportunity for actual confusion to have occurred). We find

the actual confusion factors neutral.

F. Weighing and Balancing the Factors

Plaintiff has failed to prove that confusion is likely. The weakness of both parties’

marks makes confusion much less likely. The marks share a common term (ultra),

but it is a widely-used term of art within the relevant industry. The purchasers of

these goods are likely careful and sophisticated, which also reduces the likelihood of

70In Du Pont, the court listed two factors about actual confusion: “the nature and extent of
any actual confusion” and “the length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.” In re E.I. Du Pont de Nemours &
Co., 177 USPQ at 567.

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confusion. The goods and trade channels are identical (cancellation) or closely related

(opposition), but that is not enough to counter the other likelihood of confusion

factors. On balance, we find the evidence insufficient to prove that confusion is likely.

Decision: The opposition is dismissed and the cancellation is denied.

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