Country Club Animal Hospital, Inc.v.Innopet Brands Corp.

Trademark Trial and Appeal Board

Jan 6, 2000

No. 91106486 (T.T.A.B. Jan. 6, 2000)

Cataldo
Opposition No. 106,486
Jan. 6, 00 THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB
Country Club Animal
Hospital, Inc.
v.
Innopet Brands Corp.
Before Simms, Hairston, and McLeod,
Administrative Trademark Judges
By the Board:
Country Club Animal Hospital, Inc. (“opposer”) has
opposed the application of Innopet Brands Corp.
(“applicant”) to register the mark shown below for “pet
food.”1
As grounds for the opposition, opposer contends that since
April 7, 1990, it has used the mark shown below in

1 Application Serial No. 75/132,237, filed on July 12, 1996,
based on applicant’s bona fide intent to use the mark in
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 106,486
2
connection with its animal hospital and kennels, veterinary
services, premium pet foods, supplies and equipment,
professional grooming, obedience and protection training,
24-hour supervision, bath/dips and skin treatments and
imported European fully trained dogs in the State of Florida
and in interstate commerce; that it owns State of Florida
service mark Registration No. T15291, for the same mark for
veterinary services, namely, general medical, surgery,
orthopedics, laboratory, dentistry, polishing, vaccinations,
avian exotic medicine, flea and pest control, bathing,
grooming and boarding;2 that applicant’s mark, INNOPET
BRANDS and design, is highly similar to its mark; that the
public is likely to associate applicant’s goods with
opposer’s services under their respective asserted marks;
and that a likelihood of confusion exists under Trademark
Act Section 2(d) between its previously used mark and the
mark in the application at issue.
Applicant, in its answer, denies the salient
allegations of the notice of opposition. In addition,
applicant asserts certain affirmative defenses.
This case now comes before the Board for consideration
of opposer’s motion for summary judgment and applicant’s

commerce. Applicant did not file an amendment to allege use
prior to publication of the mark.
Opposition No. 106,486
3
cross-motion for summary judgment, both on the ground of
likelihood of confusion under Trademark Act Section 2(d).
Both parties submitted responses to the respective motions
for summary judgment.3
We note as a preliminary matter that the parties’
motions for summary judgment are untimely inasmuch as
opposer’s testimony period opened in this proceeding on
January 5, 1998; opposer filed its motion for summary
judgment on February 4, 1998; and applicant filed its cross-
motion for summary judgment on March 4, 1998. See Trademark
Rule 2.127(e)(1). We further note, however, that in their
stipulation (filed January 8, 1998) to extend trial dates,
the parties indicate that they seek to limit their expenses
by agreeing to “limit the issues in this matter to
likelihood of confusion between the designs of Applicant’s
mark and Opposer’s mark, and that Opposer shall file a
Motion for Summary Judgment directed to said issue….”
(Parties’ January 8, 1998 stipulation, pp. 1-2) Moreover,
in its motion for summary judgment, opposer states (in
footnote 1) that the “parties have agreed to submit the

2 State of Florida Registration No. T15291, issued December 4,
1991, reciting April 7, 1990 as a date of first use in Florida in
connection with the services.
3 We have considered opposer’s March 27, 1998 filing both in
response to applicant’s cross-motion for summary judgment and
further in reply to applicant’s opposition to opposer’s motion
for summary judgment because it clarifies the issues and aids us
in coming to a just decision on the motion. See Trademark Rule
2.127(a).
Opposition No. 106,486
4
issue of likelihood of confusion between the designs of the
marks to the Board for determination in the form of a Motion
for Summary Judgement…” and requests that the Board accept
the untimely motion.
The Board generally will consider motions for summary
judgment filed after the first trial period commences only
if they involve matters of res judicata (claim preclusion)
or collateral estoppel (issue preclusion); are submitted by
agreement of the parties (prior to the taking of any
testimony); or are not opposed by the nonmoving party (at
least on the basis of untimeliness). See, for example,
Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497
(TTAB 1986), and Buffett v. Chi-Chi’s, Inc., 226 USPQ 428
(TTAB 1985).
In the instant case, neither party has objected on the
basis of untimeliness to the other party’s motion for
summary judgment. Furthermore, from the record it appears
that the parties have agreed as a cost-saving measure to the
disposition of this matter on summary judgment. In view
thereof, we are exercising our discretion to consider the
parties’ cross-motions for summary judgment filed in this
proceeding.
We turn first to opposer’s motion for summary judgment.
In support of its motion, opposer argues that applicant’s
mark is highly similar to opposer’s pleaded mark; that
Opposition No. 106,486
5
opposer uses the design portion of its mark alone as a logo
on the doors of the examination rooms at its animal
hospitals; that opposer has used, and registered in the
State of Florida, its mark prior to the filing date of the
application at issue; that applicant’s goods, namely, pet
food, are closely related to opposer’s services, which
include offering premium pet food for sale at its animal
hospitals; and that applicant’s goods and opposer’s services
will be available in the same channels of trade to the same
classes of purchasers, namely, pet owners.
In support of its position, opposer has submitted its
first request for production of documents; a copy of its
pleaded State of Florida registration; and its responses to
applicant’s first set of interrogatories and document
requests.
In response to opposer’s motion for summary judgment,
and in support of its own cross-motion for summary judgment,
applicant maintains that its mark is sufficiently different
from that asserted by opposer in appearance, sound,
connotation, and commercial impression that no likelihood of
confusion exists; that the design portion of opposer’s mark
is descriptive of opposer’s services and thus entitled to
limited trademark protection; that nothing in the record
supports opposer’s claim that it has established a strong
association between the design portion of its mark and its
Opposition No. 106,486
6
services; that dog and cat designs are commonly used in the
pet industry and thus are weak elements of marks used to
identify pet-related goods and services; that applicant’s
goods and opposer’s services differ and, moreover, move in
different channels of trade.
In support of its position, applicant has submitted the
affidavit of its attorney, Elaine M. Laflamme; examples of
third-party printed advertisements demonstrating use of
silhouette designs of dogs, cats, and other pets in
connection with pet-related goods and services; examples of
third-party Internet advertisements demonstrating use of
silhouette designs of dogs, cats, and other pets in
connection with pet-related goods and services; and copies
of a third-party registration and application demonstrating
use of silhouette designs of dogs and cats in connection
with pet-related goods and services.4
In response to applicant’s cross-motion and in reply to
applicant’s opposition to its motion, opposer essentially
argues that the design element of its asserted mark is
suggestive, not descriptive, of its services; that none of
the third-party marks presented by applicant is confusingly
similar to opposer’s mark; that the design elements of both
applicant’s and opposer’s marks are their dominant features;
and that the design features of the marks are confusingly
Opposition No. 106,486
7
similar. In support of its response, opposer has submitted
a graphical representation of the third-party advertisements
submitted by applicant with its combined cross-motion and
response to opposer’s motion.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The party moving for summary judgment has
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986), and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Cir. 1987). A factual dispute is genuine, if, on the
evidence of record, a reasonable finder of fact could
resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992), and Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). The evidence must be viewed in a light
most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993), and Opryland USA, supra.

4 Applicant’s notice of cross-motion and corrected affidavit
Opposition No. 106,486
8
We note initially that priority of use is not at issue
in this proceeding inasmuch as applicant does not dispute
that the dates of use alleged by opposer are earlier than
applicant’s constructive date of first use, and furthermore
that the parties have agreed, as noted above, to limit the
matter under consideration in this proceeding to likelihood
of confusion between the marks.
Turning to the statutory ground of likelihood of
confusion, in determining whether there is any genuine issue
of material fact relating thereto, we must consider all of
the probative facts in evidence which are relevant to the
factors bearing on likelihood of confusion, as identified in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). As noted in the du Pont decision
itself, each of the factors may from case to case play a
dominant role. Indeed, our principal reviewing court and
this Board frequently have held, in appropriate cases, that
a single du Pont factor may be dispositive of the likelihood
of confusion analysis. See, for example, Kellogg Co. v.
Pack‘em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d.
951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
The factor which we consider dispositive of this case
is discussed below. After a careful review of the record in
this case, we find that there is no genuine issue of

(filed March 25, 1998) are noted and have been made of record.
Opposition No. 106,486
9
material fact relating to this factor. Moreover, even if
there was a genuine issue for trial on the summary judgment
motion, we are deciding this case as if it had been
submitted to us on this record inasmuch as the parties
appear to have agreed thereto.
We believe that the first du Pont factor, namely the
dissimilarity between the marks, is dispositive of this
case. While it is not proper to dissect a mark, if one
feature of a mark is more significant than another feature,
it is proper to give greater force and effect to that
dominant feature for purposes of determining likelihood of
confusion. See Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). When
the marks at issue comprise both wording and a design,
greater weight is often accorded to the wording, which would
be used by purchasers in requesting the goods or services.
See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554
(TTAB 1987). Our primary reviewing court has cautioned,
however, that "[t]here is no general rule as to whether
letters or designs will dominate in composite marks; nor is
the dominance of letters or design dispositive of the
issue." In re Electrolyte Laboratories Inc., 929 F.2d 645,
647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990). Accordingly,
the comparison of composite marks must be done on a case-by-
case basis without reliance on mechanical rules of
Opposition No. 106,486
10
construction. See, for example, Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281
(Fed. Cir. 1984), and Spice Islands, Inc. v. Frank Tea &
Spice Co., 505 F.2d 1293, 184 USPQ 35 (CCPA 1974).
In this case, opposer’s asserted mark comprises the
wording COUNTRY CLUB ANIMAL HOSPITAL and the design of a
silhouette of the heads of a dog and cat superimposed over a
square grid.5 The mark in the application at issue
comprises the wording INNOPET BRANDS and the design of a
silhouette of the heads of a dog and cat superimposed over
an incomplete, single line square. The word portions of the
two marks are entirely dissimilar. In regard to the
designs, we note that applicant has introduced evidence in
the form of a third-party registration and application, as
well as examples of third-party advertisements, featuring
animal silhouette designs appearing in connection with pet-
related goods and services. Third-party registrations and
advertisements, without evidence of actual use, are of
extremely limited value in the determination of the question
of likelihood of confusion. Nevertheless, third-party
registrations and related evidence are entitled to some
weight when they are offered to show the sense in which a

5 While opposer asserts in its motion for summary judgment that
it uses the design portion of its mark “as a logo” appearing on
the doors of the examination rooms in its animal hospitals,
opposer has failed to demonstrate that it uses said design
Opposition No. 106,486
11
term, word, prefix or other feature of a mark is used in
ordinary parlance. They may show that a particular term has
descriptive or suggestive significance as applied to certain
goods or services. See, generally, Sams: Third Party
Registrations in TTAB Proceedings, 72 TMR 297 (1982). See
also, Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693 (CCPA 1976). As the Court stated in that case,
third-party registrations are entitled to weight to show the
meaning of a mark in the same way that dictionaries are
used. See also, United Foods Inc. v. Simplot Co., 4 USPQ2d
1172 (TTAB 1987). As such, the evidence proffered by
applicant indicates that silhouette designs of animals,
particularly cats and dogs, are commonly used and have a
suggestive significance as applied to pet-related goods and
services. Accordingly, we are of the opinion that the marks
as a whole differ so substantially in appearance, sound, and
connotation that there is no likelihood of confusion as a
matter of law. We would be of this opinion even if opposer
offered evidence at trial that the involved goods and
services are purchased casually rather than with care,
and/or that COUNTRY CLUB ANIMAL HOSPITAL and design is a
well known and famous mark.
We find therefore that applicant has carried its burden
of proof that no genuine issues of material fact remain as

portion as a mark, or that the consuming public would recognize
Opposition No. 106,486
12
to likelihood of confusion and that applicant is entitled to
judgment as a matter of law. In view thereof, applicant’s
cross-motion for summary judgment is granted. Opposer’s
motion for summary judgment is denied.
Decision: The opposition is dismissed.
R. L. Simms
P. T. Hairston
L. K. McLeod
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

the design portion alone as such.