Steven A. Huber

Trademark Trial and Appeal Board

Jun 3, 2016

No. 86323047 (T.T.A.B. Jun. 3, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Steven A. Huber
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Serial No. 86323047
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Matthew H. Swyers of The Trademark Company PLLC,
for Steven A. Huber.
Drew M. Sander, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
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Before Bergsman, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Steven A. Huber (“Applicant”) seeks registration on the Principal Register of the
mark EARTH PETS NATURAL PET MARKET (in standard characters) for “retail
pet stores,” in International Class 35.1 Applicant disclaims the exclusive right to use
the words “Pets” and “Natural Pet Market.”
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground

1 Application Serial No. 86323047 was filed on June 27, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as October 2000.
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that Applicant’s mark so resembles the two registered marks listed below as to be
likely to cause confusion. The two cited registrations are owned by the same entity.
1. Registration No. 3351024 for the mark NATURAL PET MARKET and design,
shown below, for “retail stores featuring health food for pets,” in Class 35.2

Registrant disclaimed the exclusive right to use the words “Natural Pet
Market.”

2. Registration No. 3621455 for the mark NATURAL PET MARKET, in standard
character form, for “retail pet stores,” in Class 35.3 The mark was registered
under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
Registrant disclaimed the exclusive right to use the words “Pet Market.”
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination 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, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d

2 Registered December 7, 2011; Section 8 affidavit accepted.
3 Registered May 19, 2009; Sections 8 and 15 affidavits accepted and acknowledged.
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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 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.”).
Because the cited mark with the design element contains an additional point of
difference with Applicant's mark, we confine our analysis to Applicant’s mark and
the cited registration for the mark in standard character form. That is, if confusion is
likely between those marks, there is no need for us to consider the likelihood of
confusion with the cited mark with a design element; the standard character mark
would be a sufficient basis for us to affirm the refusal of registration. Conversely, if
there is no likelihood of confusion between Applicant’s mark and the cited mark in
standard character form, then there would be no likelihood of confusion with the
mark with a design element. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
A. The similarity or dissimilarity and nature of the services and established,
likely-to-continue channels of trade.

The services at issue, retail pet stores, are identical.4 Because the services
described in the application and the cited registration are identical, we must presume
that the channels of trade and classes of purchasers are the same. See In re Viterra

4 Applicant concedes “the similarity of the services as recited in the Applicant’s applied-for-
trademark as well as the registered trademarks.” 4 TTABVUE 10.
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Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods
are presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d
1039, 1049 (TTAB 2014); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
B. The similarity or dissimilarity of the marks.
We now turn 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., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). In a particular case, “two marks may be found to
be confusingly similar if there are sufficient similarities in terms of sound or visual
appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29
USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”)).
In comparing the marks, we are mindful that where, as here, the services are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the services. Coach
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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 America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing
Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721. See also 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 mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). In this appeal, the average customer is a pet owner,
who we deem to be an ordinary consumer.
Applicant’s mark is EARTH PETS NATURAL PET MARKET and the mark in the
cited registration is NATURAL PET MARKET. Applicant argues that consumers will
be able to distinguish the marks because the common portion of the marks “is the
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arguably generic but definitely highly descriptive NATURAL PET MARKET which
describes, if not is, exactly the services that are provided by the Applicant,” and
because the dominant part of Applicant’s mark is “Earth Pets” which is not part of
the registered mark.5
Registrant’s mark, NATURAL PET MARKET, was registered under Section 2(f)
of the Trademark Act, 15 U.S.C. § 1052(f), with the exclusive right to use the words
“Pet Market” disclaimed. Therefore, the lack of inherent distinctiveness in the word
“Natural” is a nonissue. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd.,
6 USPQ2d 1001, 1005 (Fed. Cir. 1988). However, registration under Section 2(f)
recognizes that the primary significance of the word “Natural” when used in
connection with “retail pet stores” is not descriptive, but the source of those services.
A term which is descriptive . . . may, through usage by one
producer with reference to his product, acquire a special
significance so that to the consuming public the word has
come to mean that the product is produced by that
particular manufacturer. 1 Nims, Unfair Competition and
Trademarks at §37 (1947). This is what is known as
secondary meaning.
The crux of the secondary meaning doctrine is that the
mark comes to identify not only the goods but the source of
those goods. To establish secondary meaning, it must be
shown that the primary significance of the term in the
minds of the consuming public is not the product but the
producer (citations omitted). This may be an anonymous
producer, since consumers often buy goods without
knowing the personal identity or actual name of the
manufacturer.

5 4 TTABVUE 13-14.
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Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820,
823 (SDNY 1972).
As Professor McCarthy explains,
Acquired distinctiveness is known as “secondary meaning”
not because it is second in importance or in impact, but
because it is a meaning acquired second in time. It is a new
meaning added second in time to the original primary
meaning of the designation. The new “secondary”
trademark meaning does not replace or overshadow the
original meaning, but adds a new layer of meaning. For
example, the original, “primary” descriptive meaning of a
word remains free for all sellers to use in a non-trademark
sense under the classic fair use rule.
McCarthy on Trademarks and Unfair Competition § 15:1 (4th ed. 2016). See also
Coach Services, Inc. v. Triumph Learning LLC, 101 USPQ2d at 1729 (“To establish
secondary meaning, or acquired distinctiveness, an applicant must show that ‘in the
minds of the public, the primary significance of a product feature or term is to identify
the source of the product rather than the product itself.’”).
Since the mark in the cited registration NATURAL PET MARKET is registered
on the Principal Register, it is entitled to the presumptions accorded by Section 7(b)
of the Trademark Act, 15 U.S.C. § 1057(b):
A certificate of registration of a mark upon the principal
register provided by this chapter shall be prima facie
evidence of the validity of the registered mark and of the
registration of the mark, of the owner’s ownership of the
mark, and of the owner’s exclusive right to use the
registered mark in commerce on or in connection with the
goods or services specified in the certificate, subject to any
conditions or limitations stated in the certificate
Because Applicant’s mark incorporates the entirety of the mark in the cited
registration, customers and potential customers mistakenly may believe that the pet
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store services emanate from a single source, or are somehow associated or affiliated
with one another. Likely consumer confusion about association or affiliation may
suffice to show likelihood of confusion:
Thus, the issue in these cases is whether [Applicant’s
marks] … so resemble [Opposer’s mark] … that consumers
would be likely to believe that the services originated with
or were somehow associated with or sponsored by the same
entity. Although confusion, mistake or deception about
source or origin is the usual issue posed under Section 2(d),
any confusion made likely by a junior user's mark is cause
for refusal; likelihood of confusion encompasses confusion
of sponsorship, affiliation or connection. See: J.T.
McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 24.O3 [3] (3d ed. 1992). (Emphasis
added).
Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423,
1429 (TTAB 1993). See also See In re Azteca Restaurant Enterprises Inc., 50 USPQ2d
1209, 1211 (TTAB 1999) (“The average consumer, therefore, would be likely to view
Mexican food items and Mexican restaurant services as emanating from or sponsored
by the same source if such goods and services are sold under the same or substantially
similar marks.”); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 n.7
(TTAB 1984) (“It may be appropriate at this point to note, as has been observed by
one commentator, that the statutory concept of ‘likelihood of confusion” denotes any
type of confusion, including not only source confusion but also “confusion of affiliation;
confusion of connection; or confusion of sponsorship.’” (quoting T. J. McCarthy, op.
cit, 24.3.B (4 McCarthy on Trademarks and Unfair Competition § 24:6 (4th ed.
2016))); Roush Bakery Products Co., Inc. v. Ridlen, 190 USPQ 445, 448 (TTAB 1976)
(customers of opposer’s HILLBILLY bread and rolls and likely to believe that
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applicant's restaurant, using essentially the same mark, is approved or sponsored by,
or is affiliated with opposer; the likelihood of confusion is aggravated by applicant's
sales of bread which is precisely opposer's product); Saks & Co. v. TFM Industries
Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (“the use of the phrase BY FIRE ISLANDER
may only tend to increase and not decrease the likelihood of confusion, mistake or
deception by suggesting that applicant is the source of or affiliated with at least some
of the women's sportswear featured in opposer's catalogs and retail department
stores.”). In other words, because of the similarity of the marks, consumers are likely
to mistakenly believe that Applicant’s EARTH PETS NATURAL PET MARKET
retail pet stores are somehow associated or affiliated with or sponsored by the source
of the previously used NATURAL PET MARKET retail pet stores.
We find that the marks are similar in appearance, sound, connotation and
commercial impression.
C. The nature and extent of any actual confusion and the length of time during
which there has been concurrent use without evidence of actual confusion.

Applicant asserts that there have been over 13 years of concurrent use without
any known instances of confusion.6 The alleged contemporaneous use of Applicant’s
and Registrant’s marks for a period of 13 years without actual confusion is entitled
to little weight, especially in an ex parte context. See In re Majestic Distilling Co., Inc.,
65 USPQ2d at 1205 (“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476

6 4 TTABVUE 15.
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F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of
applicant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438
(CCPA 1965).
D. Balancing the factors.
Because the marks are similar, the services are identical and there is a
presumption that the services move in the same channels of trade, we find that
Applicant’s mark EARTH PETS NATURAL PET MARKET for “retail pet stores” is
likely to cause confusion with the registered mark NATURAL PET MARKET for
“retail pet stores.”
Decision: The refusal to register Applicant’s mark is affirmed.