Positioning Animals Worldwide, Inc.

Trademark Trial and Appeal Board

May 17, 2012

No. 77689868 (T.T.A.B. May. 17, 2012)

Mailed:
May 17, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Positioning Animals Worldwide, Inc.
________

Serial No. 77689692
Serial No. 77689868
_______

T. Robert Rhem, Jr. of Smith, Anderson, Blount, Dorsett,
Mitchell & Jernigan, L.L.P.

Hanno Rittner, Trademark Examining Attorney, Law Office 117
(James Brett Golden, Managing Attorney).
_______

Before Taylor, Bergsman and Shaw,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Positioning Animals Worldwide, Inc. (“applicant”)
filed intent-to-use applications to register the mark
SPOTLIGHT, in standard character form (Serial No.
77689692), and SpotLight and design, shown below (Serial
No. 77689868),

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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Serial No. 77689868

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both for the following goods and services:
Electronic devices for animal locating
and tracking programmed to use global
positioning systems, in Class 9; and

Tracking, locating and monitoring
services for locating pets and service
animals for recovery, in Class 45.

The Trademark Examining Attorney refused to register
applicant’s marks under Section 2(d) of the Trademark Act
of 1946, 15 U.S.C. § 1052(d), on the ground that
applicant’s marks are likely to cause confusion with the
previously registered mark SPOTLIGHT, in typed drawing
form, for “pet leashes,” in Class 18.1
Because the issue on appeal shares common questions of
fact and law, we have consolidated the appeals. Reference
to the record in this decision is to application Serial No.
77689868 unless otherwise indicated.2
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,

1 Registration No. 2064006, issued May 20, 1997; renewed.
2 Although the Board denied applicant’s motion to reopen the time
to file a reply brief in application Serial No. 77689692, we have
considered the reply brief filed in application Serial No.
77689868. Moreover, as indicated below, we decide cases on the
probative facts in evidence.
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177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 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 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.”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks,
we are mindful that the test is not whether the marks can
be distinguished when subjected to a side-by-side
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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 offered under
the respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
In making this determination, we must consider the
recollection of the average purchaser who normally retains
only a general, rather than a specific, impression of the
marks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). In this case, the average purchaser is a
pet owner and/or owner of a service animal.
Registrant’s mark SPOTLIGHT, in typed drawing form,
and applicant’s mark SPOTLIGHT, in standard character form,
are identical.
With respect to applicant’s mark SpotLight and design,
the term SpotLight is the dominant element. While marks
must be compared in their entireties, it is not improper to
accord more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 24 USPQ2d
749, 751 (Fed. Cir. 1983). In the case of marks consisting
of words and a design, the words are normally given greater
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weight because they would be used by consumers to request
the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2
USPQ2d 1553, 1554 (TTAB 1987). Thus, the term SpotLight is
the dominant portion of applicant’s mark.
There is no legal difference between registrant’s mark
SPOTLIGHT, in typed drawing form, and the word portion of
applicant’s mark SpotLight because registrant’s mark is in
typed drawing form and, therefore, it may be presented in
any format, font or size (e.g., SpotLight, Spot Light or
SPOT LIGHT, etc.). In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011).
The marks have the same meaning and engender the same
commercial impression. A “spotlight” is a “strong, focused
light thrown upon a particular spot, as on a small area of
a stage or in a television studio, for making some object,
person or group especially conspicuous … to make
conspicuous: call attention to.”3 The commercial

3 The Random House Dictionary of the English Language
(Unabridged), p. 1845 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

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impression engendered by both marks is to make one’s pet
(e.g., dog) conspicuous (i.e., a light on “Spot”).
Applicant argues that the registrant’s pet leashes
are, in fact, pet leashes with a spotlight and, therefore,
registrant’s mark is inherently weak and should be accorded
only a narrow scope of protection. Even if this is true,
it does not negate the fact that SPOTLIGHT and SpotLight
are virtually indistinguishable. 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, that scope of protection is still broad enough
to prevent the registration of a very similar mark for
related goods. See In re Farah Manufacturing Co., Inc.,
435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971).
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
B. The similarity or dissimilarity and nature of the
services described in the application and goods
described in the registration, likely-to-continue
trade channels and classes of consumers.

Applicant has applied to register its SPOTLIGHT marks
for pet tracking devices and locating services. The
SPOTLIGHT mark in the cited registration is for “pet
leashes.”
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It is not necessary that the respective goods and
services be identical or even competitive in order to find
that they are related for purposes of the likelihood of
confusion analysis. The issue is not whether consumers
would confuse the goods and services, but rather whether
consumers would be confused as to the source of the goods
and services. See In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984). The goods and services need only be
sufficiently related that consumers would be likely to
assume, upon encountering the goods and services under
similar marks, that the goods and services originate from,
are sponsored or authorized by, or are otherwise connected
to the same source. In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). In this regard, the greater the
degree of similarity between the marks, the less similarity
between the goods and/or services is required to support a
finding of likelihood of confusion. Where as here, the
marks are virtually identical, there need be only a viable
relationship between the goods and services to find that a
likelihood of confusion exists. In re Opus One, Inc., 60
USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
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International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
With that premise in mind, we note that because
applicant’s goods and services are on their face different
from registrant’s pet leashes, it is incumbent upon the
examining attorney to show that the goods and services of
applicant and registrant are related. Autac Inc. v. Walco
Systems, Inc., 195 USPQ 11, 15 (TTAB 1977). The evidence
is summarized below.
Applicant’s “electronic devices for animal locating
and tracking programmed to use global positioning systems”
is a “gps locator collar”4 “with an LED beacon visible from
over 100 yards”5 used in conjunction with “‘24/7’ recovery
assistance if the pet ever gets lost.”6 The TechBlips
website refers to applicant’s SpotLight device and service
as “GPS Pet Locator, GPS Dog Collar, GPS Pet Tracker.”7
That applicant’s GPS device is associated with a pet
locator service is not unique. The examining attorney
submitted two examples, listed below, of competitive GPS
dog collars associated with location services:

4 June 8, 2009 Office action (pawsgps.com).
5 June 8, 2009 Office action (news.prnewswire.com).
6 Id.
7 June 8, 2009 Office Action (techblips.dailyradar.com).
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1. The Zoombak GPS Dog Protection Systems includes a
GPS dog collar and a service plan providing “unlimited on-
demand location requests via the internet, cell phone and
Customer Care” and “unlimited continuous tracking via the
web and Customer Care”;8 and
2. DogTracs “uses the latest GPS and wireless
technology combined with an easy to use WebBased Control
Center” to “notify you if your dog gets out and help you
find him before he is lost.”9
Registrant’s pet leash is a retractable leash with a
flashlight.10 The evidence identified below shows that
leashes and GPS collars are sold by the same source or in
the same channels of trade.
1. The LoveMyPetsgps.com website advertises the sale
that company’s Love My Pets GPS dog collars, leashes and
harnesses;11
2. The Dog-Spoiling-Made-Easy.com website posted
“Dog Collars, Leashes and Harnesses A Guide,” an article
regarding types of dog collars, including GPS collars, and
dog leashes;12 and

8 June 8, 2009 Office action (healthypets.com).
9 July 28, 2010 Office action (DogTracs.com).
10 June 8, 2009 Office action (a1petsupply.com).
11 July 28, 2010 Office action.
12 June 8, 2009 Office action.
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3. The HealthyPets.com, Jeep.Maguireclan.net,
RuffAroundTheHedges.com websites advertise the sale of a
wide variety of pet products, including GPS dog protection
systems, collars, and leashes.13
In analyzing the goods at issue, leashes and GPS
devices, we find that they are complementary products
because the GPS devices may be dog collars and dog collars
and leashes are used together. Because GPS pet location
devices are associated with pet locating systems, the
services may also be associated with other pet supplies
such as leashes.
In addition, we find that the evidence is sufficient
to show that the consumers for GPS dog collars, associated
locator services, and leashes may be the same and that
these products and services may be encountered under
circumstances that could give rise to the mistaken belief
that gps devices, leashes, and pet locator services
identified by similar marks originate from or are in some
way associated with the same source. In view of the
foregoing, we find that the goods and services are related,

13 June 8, 2009 and July 28, 2010 Office actions. The
RetailMeNot.com website in the July 28, 2010 Office action is a
foreign website (U.K.) that advertises the sale of INNER WOLF
brand pet products including, gps collars and leashes. Because
it has a “.com” URL, it may be encountered by U.S. consumers.

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they move in the same channels of trade and are sold to the
same classes of consumers.
C. Balancing the factors.
After considering all of the relevant du Pont factors,
as discussed above, we find that applicant’s marks
SPOTLIGHT and SpotLight and design for pet tracking devices
and locating services are likely to cause confusion with
the mark SPOTLIGHT for “pet leashes.”
Decision: The refusal to register is affirmed.