Crazy Pet, LLCv.Pet Crazy, Inc.

Trademark Trial and Appeal Board

Aug 17, 2007

No. 91164687 (T.T.A.B. Aug. 17, 2007)

Mailed: August 17, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Crazy Pet, LLC
v.
Pet Crazy, Inc.
_____

Opposition No. 91164687
to application Serial No. 76484963
filed on January 21, 2003
_____

Crystal A. Russell of Law Offices of Crystal A. Russell,
P.C. for Crazy Pet, LLC.

William E. Noonan, Law Office of William E. Noonan for Pet
Crazy, Inc.
______

Before Quinn, Hairston and Walters, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Crazy Pet, LLC has opposed the application of Pet
Crazy, Inc. to register PET CRAZY and design as shown below,

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91164687
2
as a mark for services ultimately identified as “pet sitting
services.”1
Opposer has alleged that it sells and distributes
products in the pet industry; that it currently has in place
marketing and licensing programs for pet care products and
pet caricatures in the United States and abroad; that such
pet care products and pet caricatures have been featured in
publications and television programs and have been sold by
major pet suppliers and pet service providers; and that
registration of applicant’s mark for the identified services
is likely to cause confusion with opposer’s previously used
and registered marks as follows:
1. Registration No. 2084047, issued July 29, 1997 (Section
8 affidavit accepted; Section 15 affidavit received), which
is of the mark CRAZY PET (in standard character form; PET is
disclaimed) for “shampoos, conditioners, and grooming sprays
for pets” in Class 3;

2. Registration No. 2838255, issued May 4, 2004, which is
of the mark CRAZY PET (in standard character form) for
“picture frames” in Class 20;

3. Registration No. 2850534, issued June 8, 2004, which is
of the mark CRAZY PET (in standard character form) for
“clocks” in Class 14; and

1 Application Serial No. 76484963, filed January 21, 2003, which
is based on an allegation of a date of first use anywhere and in
commerce on January 2001. The word PET has been disclaimed apart
from the mark as shown.
Opposition No. 91164687
3
4. Registration No. 3000128 issued September 27, 2005,
which is of the mark CRAZY PETS (in standard character form)
for “CD’s, DVD’s, video tapes featuring cartoon characters,
and animated motion picture films featuring cartoon
characters” in Class 9; and “advertising slogan and cartoon
character licensing; product merchandising” in Class 35.

Applicant has answered the notice of opposition by
denying the salient allegations thereof.
The Record
The record includes the pleadings and the file of the
involved application. As its case in chief, opposer
submitted the affidavits2 (with exhibits) of its president,
Tony DeVos and director of licensing, Howard Finelt; and a
notice of reliance on certified copies of its four pleaded
registrations and nine additional registrations it owns, and
applicant’s responses to opposer’s interrogatories and
requests for admissions. Applicant submitted the affidavit
of its president Helena Picariello.3 In its case on
rebuttal, opposer submitted an additional affidavit of its
president, Mr. DeVos. The parties have fully briefed the
case.

2 Pursuant to a stipulation filed January 12, 2006, the parties
have agreed to the submission of affidavit testimony under
Trademark Rule 2.123(b).
3 The Board, in an order issued March 5, 2007, denied applicant’s
motion to reopen its testimony period to submit additional
evidence. Thus, we have not considered the evidence accompanying
applicant’s motion in reaching our decision herein.
Opposition No. 91164687
4
Preliminary matter
In addition to arguing the issue of likelihood of
confusion in its brief, opposer also argues that applicant
did not use the applied-for mark in January 2001, the date
of first use claimed in the application. Further, opposer
argues that applicant has not used the applied-for mark in
connection with the services identified in the application,
i.e., pet sitting services.
In response, applicant maintains that opposer is
attempting to raise issues which were not pleaded in the
notice of opposition, and that opposer should not be allowed
to raise such issues at this stage of the proceeding.
We agree with applicant that the above issues were not
raised in the notice of opposition. Fed. R. Civ. P. 15(b)
provides, in pertinent part, that when issues not raised by
the pleadings are tried by the express or implied consent of
the parties, they shall be treated in all respects as if
they had been raised in the pleadings. It is clear that the
issues of whether applicant used the applied-for mark as of
the date claimed and whether such mark has been used in
connection with the identified services were not tried by
the express consent of the parties. Moreover, our review of
the record convinces us that these issues were not tried by
the implied consent of the parties as contemplated by Fed.
R. Civ. P. 15(b). The evidence allegedly bearing on these
Opposition No. 91164687
5
issues consists of applicant’s Articles of Incorporation and
applicant’s Internet homepage.
We cannot say that applicant was fairly apprised that
opposer intended to rely on this evidence in support of the
above unpleaded issues. Not only would it result in undue
prejudice to applicant to allow amendment at this late
juncture of the proceeding, but such an amendment would
serve no purpose.
Opposer argues that applicant was not incorporated
until October 1, 2001 and thus could not have used the
applied-for mark in January 2001, the date of first use
claimed in the application. However, as discussed infra,
applicant’s president, Ms. Picariello, has stated that she
first used the applied-for mark as a sole proprietor as
early as January 2001. Applicant is entitled to rely on its
predecessor’s earlier use.
Opposer also argues that because applicant, at its
Internet homepage, lists “pet sitting” after “pet grooming,”
pet sitting is merely incidental to pet grooming and not a
separate service. However, the order in which applicant’s
activities are listed on its homepage is not determinative
of whether applicant’s pet sitting activities constitute a
service within the Trademark Act.
In view of the foregoing, we find that opposer’s
attempt to raise the above issues is untimely and not well
Opposition No. 91164687
6
taken. Thus, the only ground for consideration is the
pleaded ground of likelihood of confusion.
Factual findings
Opposer’s business involves marketing a variety of pet
products including pet grooming products and aids such as
hair dryers, combs, brushes, shampoos, and conditioners; pet
treats; leashes; collars; toys and novelty items. Opposer’s
products are sold to consumers through stores such as PetCo,
PetSmart and Wal-Mart and small specialty pet stores.
Opposer first used the CRAZY PET mark in connection with
shampoos, conditioners and grooming aids on or around July
15, 1996. Opposer currently has several national and
international licensees who manufacture and distribute
products under its CRAZY PET mark. Opposer also has
published children’s books, a cartoon strip, and produced a
cartoon feature DVD under the mark CRAZY PETS. Opposer’s
annual retail sales have grown from $1 million in 1997 to
$18 million in 2005.
Opposer has advertised its products in national
newspapers and trade magazines, and retailers have featured
opposer’s products in their newspaper inserts, in-store
advertisements and end cap promotions. Opposer attends
approximately ten trade shows each year. Since 1996 opposer
has spent more than $8,000,000 in advertising and promoting
its CRAZY PET goods and services. In addition opposer’s
Opposition No. 91164687
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business has been the subject of a number of articles in
newspapers and magazines.
Applicant’s president, Ms. Picariello, began using the
applied-for mark as a sole proprietor as early as January
2001 in connection with “pet sitting services and related
pet grooming.” (Affidavit, p. 2). She incorporated the
business around October 1, 2001. The applied-for mark has
been used continuously since January 2001. Applicant’s
business is primarily a pet sitting service which is
operated at a single storefront location in Cape Coral,
Florida. In addition to the pet sitting services, Ms.
Picariello personally grooms most of the pets she cares for.
Applicant has sold a small number of pet products at its
store, but all such products are manufactured by third
parties and bear the marks of the third parties.
Priority
Inasmuch as certified copies of opposer’s pleaded
registrations are of record, there is no issue with respect
to opposer’s priority, as to the registered marks and the
goods and services identified therein. King Candy Co., Inc.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
Opposition No. 91164687
8
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first consider the similarity/dissimilarity of the
marks. We must determine whether applicant’s mark and
registrant’s mark, when compared in their entireties, are
similar or dissimilar in terms of sound, appearance,
connotation and commercial impression. Although the marks
must be considered in their entireties, it is well-settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Furthermore, the
test 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
Opposition No. 91164687
9
commercial impression that confusion as to the source of the
goods and/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).
Applicant’s mark consists of the words CRAZY PET and a
fanciful dog design. It is appropriate to accord greater
weight to the word portion of applicant’s mark because it
would be used by purchasers in requesting the services and
it will therefore make a greater impression on them. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). In
addition, the fanciful dog design depicted in applicant’s
mark merely reinforces the word “PET.”
Comparing first applicant’s mark PET CRAZY and design
and opposer’s mark CRAZY PET, it is obvious that the
dominant portion of applicant’s mark, i.e., the words PET
CRAZY, is essentially a transposition of opposer’s mark. As
noted by the Board in In re Sybron Corporation, 165 USPQ 410
(TTAB 1970), the fact that two marks are composed of reverse
combinations of the same elements is not necessarily
conclusive on the issue of likelihood of confusion since
registration may be permitted if the transposed marks create
distinctly different commercial impressions.
Opposition No. 91164687
10
Here, the words in the marks are identical, and thus,
in reverse order are very similar in sound. The marks are
also similar in appearance. Registrant’s mark, presented in
typed form, could reasonably be displayed in the same style
of lettering as used by applicant, thereby increasing the
visual similarity of the two marks.
We recognize that the marks have somewhat different
connotations. Applicant’s mark PET CRAZY and design
suggests a person who is crazy about pets whereas opposer’s
mark CRAZY PET suggests a pet that is crazy. Nonetheless,
in view of the marks’ similarities in sound and appearance
due to the shared words “pet” and “crazy,” we find that the
marks have substantially similar commercial impressions. In
reaching this finding, we have taken into consideration that
this is not a case where the marks of the parties are likely
to be encountered by purchasers on a side-by-side basis, and
that the average person is not infallible in his
recollection of marks and may well transpose the elements of
a mark in his mind. For essentially the same reasons, we
find that applicant’s PET CRAZY and design mark is highly
similar to opposer’s CRAZY PETS mark in sound, appearance,
and commercial impression.
We next turn to a comparison of the goods and services
of the parties. We start with the premise that goods or
services need not be identical or even competitive in order
Opposition No. 91164687
11
to support a finding of likelihood of confusion. Rather, it
is enough that goods or services are related in some manner
or that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which could give rise, because
of the marks used or intended to be used therewith, to a
mistaken belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
In this case, we find that opposer’s pet shampoos and
conditioners, in particular, are sufficiently related to
applicant’s pet sitting services that when offered under the
highly similar marks in this case, confusion is likely.
Applicant’s pet sitting services essentially involve caring
for pets. Opposer’s shampoos and conditioners are used in
caring for pets’ grooming needs. With respect to the
channels of trade, while there is no evidence that pet
shampoos and conditioners and pet sitting services are
generally offered in the same channels of trade, we
nonetheless note that applicant itself offers pet grooming
services and some pet products in addition to its pet
sitting services. Also, opposer’s pet shampoos and
conditioners and applicant’s pet sitting services are
Opposition No. 91164687
12
offered to the same class of purchasers, namely, pet owners.
We have no basis to conclude that pet owners would exercise
anything more than ordinary care in selecting these goods
and services.
A related factor in this case is the variety of goods
on which opposer’s CRAZY PET and CRAZY PETS marks are used.
The evidence of record demonstrates that opposer and its
licensees use the CRAZY PET mark on pet stain and odor
removers, pet dental products, pet treats, pet toys, pet
leashes, pet grooming kits, pet hair dryers, novelty clocks
and picture frames; and the CRAZY PETS mark on children’s
books, a cartoon strip, and a cartoon feature DVD. Use of a
mark on a wide variety of products reflects and enhances the
mark’s strength. Opposer and its licensees’ use of the
CRAZY PET and CRAZY PETS marks in connection with a diverse
line of pet products and collateral products makes it more
likely that consumers will mistakenly believe that PET CRAZY
and design pet sitting services originate from or are
associated with or sponsored by the same source. The
licensing of commercial trademarks for use on “collateral
products which are unrelated in nature to the goods or
services on which the marks are normally used, has become a
common practice in recent years. See General Mills Fun
Group, Inc. v. Tuxedo Monopoly, Inc. 204 USPQ 396, 400 (TTAB
1979)[where we stated that such use is a matter of common
Opposition No. 91164687
13
knowledge and “has become a part of everyday life which we
cannot ignore”, affirmed 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981)[where the Court of Customs and Patent Appeals
noted that “‘collateral product’ product use is a matter of
textbook discussion (see J. Gilson, Trademark Protection and
Practice, Section 5.05 [10](1980) and frequent commentary
(see Grimes and Battersby, The Protection of Merchandising
Properties, 69 T.M. Rep. 431 (1979) and references cited
therein)”]. See also: J. Thomas McCarthy, Important Trends
in Trademark and Unfair Competition Law During the Decade of
the 1970s, 71 T.M. Rep. 93, 125 (1981) where the author, in
his discussion of legal developments during the 1970’s,
referred to “the increased licensing of commercial
trademarks for use on ‘collateral products’ such as tee-
shirts and wearing apparel”] and Robert Denicola,
Institutional Publicity Rights: An Analysis of the
Merchandising of Famous Trade Symbols, 75 T.M. Rep. 41
(1985). See also: The Black and Decker Mfg. Co. v. Big
Yank Corp., 23 USPQ 484 (TTAB 1986); Harley Davidson Motor
Co. v. Pierce Foods Corp., 231 USPQ 857 (TTAB 1986); Cadence
Industries Corp. v. Kerr, 225 USPQ 331 (TTAB 1985);
Bridgestone Tire Co. v. Bridgestone Trading Co., 221 USPQ
1012 (TTAB 1984); Broadway Catering Corp. v. Carla Inc., 215
USPQ 462 (TTAB 1982); Hurst Performance, Inc. v. Torsten
Hallman Racing, Inc., 207 USPQ 671 (TTAB 1980); Amica Mutual
Opposition No. 91164687
14
Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB
1979); and “21” Club, Inc. v. Popular Merchandise Co., Inc.,
139 USPQ 127 (TTAB 1963); affirmed 343 F.2d 1011, 145 USPQ
203 (CCPA 1963). See generally: 3 J.T. McCarthy, McCarthy
on Trademarks and Unfair Competition Section 24:9.50 (4th
ed. 2006).
Finally, according to applicant, it has not encountered
any instances of consumer confusion over a period of five
years. However, because applicant operates a single
storefront in Florida and there is no information concerning
the number of applicant’s customers, it is not clear that
there has been any meaningful opportunity for confusion to
occur in the marketplace. In any event, the test is
likelihood of confusion, not actual confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984).
In view of the foregoing, we find that the parties’
respective goods and services are sufficiently related that
when offered under the highly similar marks in this case,
confusion as to source, sponsorship or affiliation is
likely. To the extent that we have any doubt, we resolve it
as we must, in favor of opposer as the prior user and
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988); In re Pneumatiques,
Opposition No. 91164687
15
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The opposition is sustained.