Kim Laube & Co., Inc.v.Loving Pets Corporation

Trademark Trial and Appeal Board

Jun 28, 2010

No. 91183002 (T.T.A.B. Jun. 28, 2010)

Mailed:
June 28, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Kim Laube & Company, Inc.
v.
Loving Pets Corporation
_____

Opposition No. 91183002
to Application Serial No. 78880699
filed on May 10, 2006
_____

Glenn J. Dickinson of Nordman Cormany Hair & Compton LLP for
Kim Laube & Company, Inc.

John E. Russell of Allmark Trademark for Loving Pets
Corporation.
_____

Before Seeherman, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Loving Pets Corporation (“applicant”) filed an intent-
to-use application for the mark NATURE’S CHOICE, in standard
character form, for “pet treats composed of the rawhide and
bones of domesticated animals,” in Class 31.
Kim Laube & Company, Inc. (“opposer”) opposed the
registration of applicant’s mark on the ground of priority
of use and likelihood of confusion. Specifically, opposer
alleged that it has used the mark NATURE’S CHOICE for
“animal beauty care products, namely, shampoos and
THIS OPINION IS NOT CITABLE
AS A PRECEDENT OF THE
T.T.A.B.
Opposition No. 91183002
2
conditioners; and stain removers,” since prior to the filing
date of the application at issue and that applicant’s mark
NATURE’S CHOICE for pet treats so resembles opposer’s
previously used and registered mark as to be likely to cause
confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes a notice of
reliance filed by opposer introducing the following items:
1. Copies of opposer’s three pleaded registrations
printed from the electronic database records of the USPTO
showing the current status and title of the registrations;
2. Copies of opposer’s two pending applications filed
July 9, 2008, including the notices of publication dated
April 15, 2009 and setting forth a publication date of May
5, 2009, for the following marks both for “non-medicated
grooming preparations for dogs, cats, horses, puppies,
kittens, ferrets, livestock, zebras, lions, tigers, bears,
otters, deer and llamas, namely, shampoos, conditioners, pet
colognes, hair care products, skin care products and
preparations for removing stains from pet hair,” in Class 3:
A. Serial No. 77517900 for the mark NATURE’S
CHOICE, in standard character form; and
Opposition No. 91183002
3

B. Serial No. 77518268 for the mark NATURE’S
CHOICE and design, shown below.

3. A copy of applicant’s abandoned application Serial
No. 77457190 for the mark NATURE’S CHOICE, in standard
character form, for “shampoos and conditioners for pets,” in
Class 3;
4. Copies of nine third-party registrations for marks
purportedly registered for the goods of both parties;
5. Applicant’s responses to opposer’s written
discovery.
Applicant did not take any testimony or introduce any
evidence.
Standing

Opposer’s pleaded registrations do not provide a basis
for opposer’s standing because they were expired and,
therefore, were inactive, when opposer filed the notice of
opposition. Whatever benefits a federal registration
confers are lost when that registration is canceled or
Opposition No. 91183002
4
expired. Anderson Clayton & Co. v. Krier, 478 F.2d 1246,
178 USPQ 46, 47 (CCPA 1973).
The notice of opposition was filed on March 14, 2008.
The relevant data for the pleaded registrations is set forth
below:
Registration
Number
Registration
Date
Renewal Due
Date
Grace Period1

1451666 August 11,
1987
August 11,
2007
February 11,
2008

2078484 July 15, 1997 July 15, 2007 January 15,
2008

2078486 July 15, 1997 July 15, 2007 January 15,
2008

Because “the date of expiration of [opposer’s]
registration is not dependent on the date the Office
undertook the ministerial function of entering the
cancellation into the USPTO database,” opposer’s pleaded
registrations were not valid when opposer filed the
opposition. Land O' Lakes Inc. v. Hugunin, 88 USPQ2d 1957,
1959 (TTAB 2008). Although opposer could have filed
applications for renewal during the grace period, it did
not, and therefore the registrations were deemed expired as
of the anniversary dates of the registrations. In other
words, Registration No. 1451666 expired on August 11, 2008

1 Sections 8 and 9 of the Trademark Act of 1946 provide that a
registrant may file its declaration of use and/or renewal
application within a 6-month grace period immediately following
the expiration period (i.e., the expiration of 10 years following
the registration date).
Opposition No. 91183002
5
and Registration Nos. 2078484 and 2078486 expired on July
15, 2008. Because the registrations expired prior to the
filing of the notice of opposition, they do not provide a
basis for opposer’s standing.
Nor can opposer rely on the common law use pleaded in
its notice of opposition because opposer has presented no
evidence of its use of the mark.
The third possible basis for opposer to establish its
standing is its pending applications. As indicated above,
opposer introduced its pending applications, filed on July
9, 2008, through a notice of reliance. However, opposer did
not file a motion to amend its notice of opposition to claim
ownership of the applications.2 Applicant did not file a
motion to strike opposer’s applications from the notice of
reliance, nor did applicant expressly object to the
applications in its brief. Instead, applicant argued that
the applications did not establish opposer’s priority
because opposer’s applications were filed after applicant’s
application. Because opposer may not rely on unpleaded
applications, we must determine whether opposer’s reliance
on the applications was tried by implied consent. See
Riceland Foods Inc. v. Pacific Eastern Trading Corp.,

2 In its reply brief, opposer incorrectly states that it
“properly cited the applications in its Notice of Opposition.”
Reply Brief, p. 2. The applications were filed four months after
the notice of opposition.
Opposition No. 91183002
6
26 USPQ2d 1883, 1884 (TTAB 1993) (only mark pleaded by
opposer and tried was registered design mark and applicant
had no notice that opposer intended to rely on use of
unregistered word mark appearing on opposer’s packaging).
Implied consent to the trial of an
unpleaded issue can be found only where
the nonoffering 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.

(Emphasis added). TBMP §507.03(b) (2nd ed. rev. 2004); see
also Long John Silver’s Inc. v. Lou Scharf Inc.,
213 USPQ 263, 266 n.6 (TTAB 1982) (applicant’s objection to
the introduction of evidence regarding an unpleaded issue
obviated the need to determine whether the issue had been
tried by implied consent); Boise Cascade Corp. v. Cascade
Coach Co., 168 USPQ 795, 797 (TTAB 1970) (“Generally
speaking, there is an implied consent to contest an issue if
there is no objection to the introduction of evidence on the
unpleaded issue, as long as the adverse party was fairly
informed that the evidence went to the unpleaded issue”).
Because applicant did not object to the introduction of
opposer’s unpleaded applications and because applicant
argued that the pending applications failed to prove
opposer’s priority (i.e., applicant attacked their probative
value), we find that opposer’s reliance on the applications
was tried by implied consent and we accordingly deem the
Opposition No. 91183002
7
pleadings to be amended to include opposer’s applications.
See Fed. R. Civ. P. 15(b).
The evidence submitted through opposer’s notice of
reliance shows that opposer’s applications were published
for opposition on May 5, 2009. In previous cases, the Board
has found standing where the defendant’s application or
registration had been cited as a bar to the plaintiff’s
application. “The filing of opposer’s application and the
Office’s action taken in regard to that application provides
opposer with a basis for pleading its standing.” Fiat Group
Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB
2010) (“the Office made a provisional refusal of opposer’s
application based on prior pending applications), citing
Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959
(TTAB 2008) (standing found because the opposed application
was cited as a potential bar to opposer’s registration); see
also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982). In the present case,
applicant’s application was not cited as a bar to
registration of opposer’s applications and opposer’s
applications were published for opposition. However,
evidence that the Patent and Trademark Office refused to
register the plaintiff’s application is not a requirement to
establish standing. Rather, it is sufficient if the
circumstances are such that it would be reasonable for a
Opposition No. 91183002
8
plaintiff to believe that the existence of the defendant’s
registration would damage it (e.g., a reasonable belief that
there is a likelihood of confusion between the marks, or
that the presence on the register of applicant’s mark may
hinder the opposer in using or registering its mark).
Accordingly, we find that opposer has shown that it has
a reasonable belief of damage and a real interest in this
proceeding. Therefore opposer is not a mere intermeddler,
and it has established its standing.
Priority
In order for opposer to prevail on its Section 2(d)
claim, it must prove that it has a proprietary interest in
its NATURE’S CHOICE marks and that it obtained that interest
prior to the earliest date of use that applicant can claim.3
Herbko International Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto
Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317,
209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-
Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993). For purposes
of determining priority of use, because applicant did not
submit evidence of earlier use, applicant’s date of first

3 With respect to its proprietary interest, opposer must
establish that its mark is distinctive – inherently or otherwise.
However, since applicant did not raise any issue regarding the
distinctiveness of opposer’s NATURE’S CHOICE marks, we consider
the marks to be inherently distinctive.
Opposition No. 91183002
9
use is May 10, 2006, the filing date and therefore the
constructive use date of its intent-to-use application.
Establishing opposer’s first use date is more complex.
Opposer took no testimony regarding the use of its marks.
Opposer’s cancelled registrations are not evidence of use,
nor may opposer rely on the filing dates of its underlying
applications and the dates of use first use alleged therein.
Kellogg Co. v. Western Family Foods, Inc., 209 USPQ 440, 442
(TTAB 1980) (a cancelled registration is not evidence of any
use of the mark at any time because it no longer benefits
from the presumptions of Section 7(b) of the Trademark Act);
Unitec Industries, Inc. v. Cumberland Corp., 176 USPQ 62, 63
(TTAB 1972). Opposer’s applications have no probative value
other than to show that the applications were filed.
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1403 n.4 (TTAB 2010); In re Phillips-Van Heusen Corp.,
63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
As for opposer’s applications, the applications give
opposer an inchoate constructive date of first use as of
their filing date, but this constructive use is contingent
upon their registration. Section 7(c) of the Trademark Act
of 1946, 15 USC §1057(c). In this regard, opposer argues
that we should take judicial notice of the registrations
that issued from its applications on July 21, 2009, after
the close of opposer’s testimony period. However, the mere
Opposition No. 91183002
10
fact that the applications were made of record does not
dictate that the resulting registrations are automatically
of record whenever they issue. For example, had the
registrations issued prior to the close of opposer’s
testimony period, opposer would have been required to make
the registrations properly of record for them to have been
considered. See UMG Recordings Inc. v. O’Rourke, 92 USPQ2d
1042, 1045 (TTAB 2009). The Board will not take judicial
notice of an opposer’s registrations that issue subsequent
to trial. Id.4
Finally, opposer argues that the Board should consider
its new registrations because applicant has treated the
registrations as being of record. Specifically, opposer
refers to the following two statements in applicant’s brief:
1. In fact, Applicant’s instant
application for Nature’s Choice has
priority over each of Opposer’s
active trademark
applications/registrations.5

2. As noted in the preceding sections,
Opposer is attempting to rely on
its prior cancelled registrations
and two registrations which were
filed well after that of
Applicant’s. (Emphasis in the
original).6

4 One reason for the Board’s position is that had opposer made
the registrations of record, applicant would have had the
opportunity to file a counterclaim to cancel the registrations,
an option foreclosed to applicant in this case. Thus, it would
be unfair to admit the registrations after the trial had closed.
5 Applicant’s Brief, p. 3.
6 Applicant’s Brief, p. 7.
Opposition No. 91183002
11
We do not deem these statements to be admissions that
opposer’s registrations are properly of record. They are
simply an acknowledgement by applicant that opposer contends
that its applications have registered while at the same time
applicant attacks the probative value of the underlying
applications. See TBMP §704.03(b)(1) (2nd ed. rev. 2004)
(the Board may deem a registration to be of record if the
adverse party treats the registration as being of record in
its brief). Under the circumstances of this case, we do not
consider applicant to have treated the registrations as
being properly introduced into evidence.
In view of the foregoing, opposer failed to prove that
it has a proprietary interest in its NATURE’S CHOICE marks
prior to that of applicant, and therefore opposer’s Section
2(d) claim fails.
Decision: The opposition is dismissed with prejudice.