Midwestern Pet Foods, Inc.

Trademark Trial and Appeal Board

Nov 16, 2011

No. 77327252 (T.T.A.B. Nov. 16, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Hearing: April 19, 2011 Mailed: November 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Midwestern Pet Foods, Inc.
________

Serial No. 77327252
_______

Timothy D. Pecsenye of Blank Rome LLP for Midwestern Pet
Foods, Inc.

Priscilla Milton, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Holtzman, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Midwestern Pet Foods, Inc.
to register in standard characters on the Principal
Register the mark KITTY NIBBLES for “cat treats” in
International Class 31.1

1 Application Serial No. 77327252 was filed on November 12, 2007,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce on the goods. In response to a requirement
by the examining attorney, applicant disclaimed KITTY apart from
the mark as shown.

Ser. No. 77327252
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on or in connection with its
goods, so resembles the mark shown below, previously
registered on the Principal Register for “cat food and cat
treats” in International Class 31,2 as to be likely to cause
confusion.

When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs on
the issue under appeal and applicant filed a reply brief.
In addition, applicant and the examining attorney presented
arguments before the Board in an oral hearing held on April
19, 2011.3
Timeliness of Examining Attorney’s Brief
In its reply brief, applicant argues that
…Applicant’s Brief was mailed to the Examining
Attorney April 2, 2010. While no brief was filed
within the sixty day time period, on June 28,
2010, the Board re-sent Applicant’s Brief allowing

2 Registration No. 3418325 issued on April 29, 2008 with a
disclaimer of KITTEN apart from the mark as shown. Color is not
claimed as a feature of the mark.
3 Applicant’s resubmission, at the Board’s invitation, of
evidence consisting of Exhibit 3 to its request for
reconsideration of the final refusal is noted.
Ser. No. 77327252
3
the Examining Attorney an additional sixty days to
file a brief explaining only that the earlier
brief was not received by the Examining Attorney.
The June 28, 2010 notice does not state that
Applicant’s Brief was not mailed, which it
presumably was, only that it was brought to the
Board’s Attention that it was not received.
Further, the Examining attorney does not explain
why her Brief was late filed when it was
ultimately submitted August 19, 2010. Certainly
Applicant would not be allowed extra time to
submit a filing simply by claiming a filing,
presumably mailed, was not received. As such,
Applicant respectfully requests that the Board
exclude the Examining Attorney’s Brief as no
adequate explanation has been provided to explain
the late filing.

A review of the relevant procedural history of the instant
appeal is helpful in determining applicant’s request:
- the Board issued a paralegal order on January 22,
2010, allowing applicant 60 days in which to submit
its brief on appeal;
- applicant submitted its main brief on appeal on
March 23, 2010;
- the Board issued a paralegal order on April 2, 2010
forwarding the electronic record of the application
file to the examining attorney and allowing the
examining attorney 60 days within which to submit
her brief on appeal;
- the Board issued a subsequent paralegal order on
June 28, 2010 noting that, due to an inadvertence,
the examining attorney did not receive a copy of
applicant’s March 23, 2010 appeal brief and allowed
Ser. No. 77327252
4
the examining attorney an additional sixty days in
which to submit her brief on appeal;
- the examining attorney submitted her brief on August
19, 2010.
Thus, it is clear that in the June 28, 2010 order, the
Board reset the examining attorney’s time in which to
submit her brief on appeal. While the June 28, 2010 order
does not discuss the nature of the inadvertence resulting
in the examining attorney’s non-receipt of applicant’s
brief, neither does the order require the examining
attorney to provide an explanation therefor. In short, the
Board simply reset the examining attorney’s time in which
to submit her brief without requiring a showing of good
cause therefor. In accordance with Trademark Rule
2.142(b), the examining attorney timely submitted her brief
on August 19, 2010, within the 60 day time period as reset.
In view thereof, applicant’s request to strike the
examining attorney’s brief on appeal is denied.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
Ser. No. 77327252
5
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Goods
We first compare applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”). See also Paula Payne
Ser. No. 77327252
6
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
In this case, applicant’s goods are “cat treats” and
registrant’s goods are “cat food and cat treats.” Thus,
registrant’s goods encompass and otherwise are identical in
part to applicant’s goods. In addition, we find that
registrant’s “cat food” would appear on its face to be
related to “cat treats” inasmuch as both are commonly
purchased by cat owners and fed to their pet cats. We
further note that applicant does not argue that the goods
are unrelated.
Channels of Trade
When identical goods are recited in an application and
registration with no limitations as to their channels of
trade or classes of consumers, such channels of trade and
classes of consumers must be considered to be legally
identical. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
Ser. No. 77327252
7
the same channels of trade.”); and In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers.”).
In the present case, registrant’s goods encompass
those of applicant and neither identification recites any
limitations regarding the trade channels therefor.
Accordingly, the trade channels are presumed to be
identical, and applicant does not argue otherwise.
We turn then to our consideration of the marks at
issue, noting initially that, "[w]hen marks would appear on
virtually identical ... [goods or] services, the degree of
similarity [of the marks] necessary to support a conclusion
of likely confusion declines." See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994).
See also ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
The Marks
Under the first du Pont factor, we must determine
whether applicant’s mark and registrant’s mark are similar
or dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
Ser. No. 77327252
8
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test
under the first du Pont factor 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
that confusion as to the source of the goods or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). We further note that
under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. See Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
In this case, applicant’s mark, KITTY NIBBLES, is
similar to the registered mark shown below

Ser. No. 77327252
9
in that they contain the highly similar terms KITTY versus
KITTEN and the identical term NIBBLES. The examining
attorney made of record the following definition of KITTY:
“a cat, especially a kitten.”4 As a result, we find that
the word portion of registrant’s mark, i.e. KITTEN LI’L
NIBBLES, is highly similar to applicant’s mark, KITTY
NIBBLES, in appearance, sound and meaning.
Further, the design of a kitten or cat holding what
appear to be cat treats in its paws, while visually
prominent, is hardly the dominant feature of registrant’s
mark. The kitten design is somewhat smaller than the
wording KITTEN LI’L NIBBLES in registrant’s mark, and the
wording and design are positioned next to each other such
that the words appear to the left of the design. Such
positioning of the kitten appears to visually reinforce the
wording KITTEN LI’L NIBBLES. Indeed, it is very difficult
to view the design without also viewing the words
comprising the mark.
We find, therefore, that the wording KITTEN LI’L
NIBBLES is the most visually prominent portion of
registrant’s mark, and accordingly it is entitled to more
weight in our analysis. It is a well-established principle

4 The American Heritage Dictionary of the English Language (2000)
retrieved from www.bartelby.com.
Ser. No. 77327252
10
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Further, when a mark comprises both a word and
a design, then the word is normally accorded greater weight
because it would be used by purchasers to request the goods
or services. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987). The presence of the kitten design in
registrant’s mark, particularly inasmuch as it is
positioned next to and overlapping the words KITTEN LI’L
NIBBLES, is insufficient to create a commercial impression
that is separate from that of applicant’s KITTY NIBBLES
mark.
We are not persuaded by applicant’s argument that its
mark connotes small snacks, or nibbles, for cats while
registrant’s mark connotes a character called Kitten Li’l.
In that regard, we note that registrant’s mark may likewise
connote small, or “Li’l” nibbles. Applicant further has
introduced evidence that registrant’s advertisements and
packaging for its goods under its mark refer to a character
Ser. No. 77327252
11
named Kitten Li’l. Nonetheless, our determination of the
similarities or dissimilarities between the marks is based
upon the applied-for and registered marks themselves, not
evidence of the context in which the marks are used. As a
result, such evidence fails to support its rather
speculative contention regarding the manner in which
consumers will perceive registrant’s mark in connection
with its recited goods.
Based upon the above analysis, we find that when the
marks KITTY NIBBLES and KITTEN LI’L NIBBLES and design are
viewed in their entireties, the similarities in appearance,
sound, connotation and commercial impression outweigh the
differences. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra.
Strength of the Registered Mark
In making our finding, we have considered applicant’s
evidence and argument that both KITTEN and NIBBLES are weak
in the field of cat food and cat treats. In support of
this argument, applicant submitted nine live third-party
registrations containing the term NIBBLE or a derivation
thereof.5 Registrations are not evidence of use of the

5 Two of the submitted registrations are cancelled. A cancelled
registration is not evidence of anything except that it issued.
See TBMP §704.03(b) (3d ed. 2011) and cases cited therein. See
also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB
2002). Any benefits conferred by the registration, including the
Ser. No. 77327252
12
marks shown therein; thus, they are not proof that
consumers are familiar with such marks so as to be
accustomed to the existence of the same or similar marks in
the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); AMF Inc. v.
Am. Leisure Products, Inc., 474 F.2d 1407, 177 USPQ 268
(CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint
Corp., 216 USPQ 989 (TTAB 1982). However, these
registrations, similar to a dictionary definition, may be
used to demonstrate that a particular term has some
significance in an industry. In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party registrations
can be used in the manner of a dictionary definition to
illustrate how a term is perceived in the trade or
industry”). See also In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987) (“[T]hird party registrations are of
use only if they tend to demonstrate that a mark or a
portion thereof is suggestive or descriptive of certain
goods and hence is entitled to a narrow scope of
protection”).

evidentiary presumptions afforded by Section 7(b) of the
Trademark Act were lost when the registration expired. See,
e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ
46 (CCPA 1973).

Ser. No. 77327252
13
Applicant also submitted evidence in the form of web
pages from 8 different third-party websites in which
various pet products identified in part by the term NIBBLES
are displayed. However, the probative value of this
evidence also is limited because applicant presented no
evidence concerning the extent to which these third-party
designations are used in commerce. For example, it is not
known how frequently these websites are viewed or how broad
the consumer base is for these goods. As a result, this
record simply does not establish that NIBBLES has been
severely diluted in the field of cat treats. See Broadway
Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996) (BROADWAY weak
for restaurant services based on evidence that hundreds of
restaurants and eating establishments use that word).
Thus, while it is clear that the term KITTEN is descriptive
and NIBBLES is suggestive of the goods in registrant’s
mark, applicant’s evidence does not establish that there is
widespread use of similar marks for cat treats or cat food
such that registrant’s marks is weak and entitled to only a
narrow scope of protection.
In any event, even if we were to find, based on
applicant’s evidence, that registrant’s mark is weak and
entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of a highly
Ser. No. 77327252
14
similar mark for identical or closely related goods. See
In re Farah Mfg. Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971).
Summary
We have carefully considered the arguments and
evidence submitted by applicant and the examining attorney,
including all evidence not specifically discussed in this
decision. In view thereof, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Decision: The refusal of registration is affirmed.