Janice Cahajlav.Tail-Waggers of Hilton Head, Inc.

Trademark Trial and Appeal Board

Jul 21, 2009

No. 91177475 (T.T.A.B. Jul. 21, 2009)

Hearing: Mailed
17 June 2009 21 July 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Janice Cahajla
v.
Tail-Waggers of Hilton Head, Inc.
_____

Opposition No. 91177475
_____

Richard C. Balough, Esq. for Janice Cahajla.

Chris Shiplett and Eric M. Pelton of Pelton & Associates,
PLLC for Tail-Waggers of Hilton Head, Inc.
______

Before Seeherman, Walters, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 4, 2006, applicant Tail-Waggers of Hilton
Head, Inc. applied to register the mark TAIL-WAGGERS GOURMET
PET BAKERY & BOUTIQUE in the design shown below:

for “retail gourmet pet food bakery and pet store” in Class
35. The application (Serial No. 76657835) contains an
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91177475
2
allegation of a date of first use anywhere and in commerce
of August 1, 2000, and a disclaimer of the terms “Gourmet
Pet Bakery & Boutique.”
On May 24, 2007, opposer Janice Cahajla filed an
opposition to the registration of applicant’s mark alleging
that she owns Registration No. 2583102 for the mark WAGTAILS
in typed or standard character form for “animal treats,
namely dog cookies, dog biscuits, dog treats, and cat
treats” in Class 31. The registration issued June 18, 2002,
and it is based on an application that was filed on December
20, 1999. It also contains an allegation of a date of first
use anywhere of October 18, 1998, and a date of first use in
commerce of June 15, 2000.1 The notice of opposition
further alleges that “it is apparent that the goods that are
being sold are similar in nature to the goods covered by the
trademark ‘Wagtails.’ The proposed mark ‘Tail-Waggers’ is
very similar in sound and appearance and is confusingly
similar to the registered mark ‘Wagtails.’”2
Applicant denied the salient allegations of the notice
of opposition. An oral hearing was held on June 17, 2009.

1 We add that Office records indicate that affidavits under
Sections 8 and 15 have been accepted or acknowledged.
2 The notice of opposition also referred to Registration No.
2716029 and opposer subsequently refers to Registration No.
3259102, for the same mark for “scrapbook and photo album” in
Class 16, “blankets and towels for pets and animals” in Class 18,
and “beds for pets and animals” in Class 20. These registrations
are not as relevant as the 2583102 registration, and we do not
rely on them in reaching our determination in this case.
Opposition No. 91177475
3
The Record
The parties agree that the record consists of the
material set out in opposer’s description of the record.
See Opposer’s Brief at 2-3 and Applicant’s Brief at 2-3.
Priority
Applicant points out that the “record in this
proceeding does not contain status and title copies of
Opposer’s pleaded registrations.” Brief at 3. However,
status and title copies of registrations are only one means
by which an opposer’s registrations can properly be made of
record. See generally TMEP § 704.03(b)(1) (2d ed. rev.
2004). In this case, opposer has submitted a hard copy of
her registration No. 2583102 (Cahajla Dep. Ex. 7). Although
the copy of the registration, which issued in 2002, would
not be considered competent to show status and title at the
time of trial in 2008, applicant’s own actions are
sufficient to admit current status and title in opposer. In
its notice of reliance (ex. 7), applicant includes its
request for admission and opposer’s responsive admission No.
59: “Admit that the federal registrations identified as
Registration No. 2716029 and Registration No. 2583102
identified the following goods: “Animal treats, namely dog
cookies, dog biscuits, dog treats, and cat treats.” In
addition, applicant cross-examined opposer about
Registration No. 2583102. Cahajla dep. at 73-74.
Opposition No. 91177475
4
Subsequently, opposer’s counsel examined Ms. Cahajla and
read the combined Section 8 and 15 affidavit in the 2583102
registration into the record, without objection by
applicant. Cahajla dep. at 83-85. We determine that the
parties have treated this registration as being of record.
Riceland Foods Inc. v. Pacific Eastern Trading Corp., 26
USPQ2d 1883, 1885 (TTAB 1993) (“There is not of record a
status and title copy of the registration nor did the
parties make any mention of the current status of the
registration. Nonetheless, applicant has not made any
objection in this regard, but rather treats the registration
as if properly of record. In view thereof, we have treated
opposer’s registration to be of record”).
Therefore, priority is not an issue in the opposition
proceeding because opposer’s registration for the mark
WAGTAILS is considered to be of record. See King Candy Co.
v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). Opposer also argues that even “if the
registrations are ignored, the undisputed evidence shows
that Opposer’s use of Wagtails pre-dates by over four years
Applicant’s first use of Tail-Waggers.” Reply Brief at 4.
An opposer need not show use in interstate commerce in order
to have priority. Use in intrastate commerce is sufficient.
Corporate Document Services, Inc. v. I.C.E.D. Management,
Inc., 48 USPQ2d 1477, 1479 (TTAB 1998) (“It is well
Opposition No. 91177475
5
established that rights in and to a trademark are created by
use of the mark in either intrastate or interstate
commerce”). Opposer testified that: “Wagtails is gourmet
cookies and I make them without any preservatives in them… I
started making cookies in 1999.” Cahajla dep. at 5. “And
all those [cookie] packages would have the Wagtails on it?
A. Yes.” Id. at 9. See also Cahajla Ex. 5 (List of
customers in 1999) and Cahajla dep. at 53 (“I’d like to know
if any of those persons, to your knowledge, resided outside
of Illinois at the time this document was prepared in 1999?
A. I recognize one, Kathy Allen, she is in Indiana”). Based
on the evidence of record, we conclude that opposer’s date
of first use of her mark for dog treats was 1999. While
applicant points out that the sales of these items are
relatively small, opposer’s use is consistent with what one
would expect of an individual operating as a sole
proprietorship and baking her dog cookies in her kitchen
(Cahajla dep. at 30 and 49); thus, we do not regard the
sales as merely token use of the mark.
Regarding applicant’s priority date, it is entitled to
the constructive use date of its application, which is April
4, 2006. This application contains an allegation of a date
of first use anywhere and in commerce of August 1, 2000,
which is subsequent to opposer’s first use. To establish an
earlier date of first use, applicant must do so by clear and
Opposition No. 91177475
6
convincing evidence. “Where an applicant seeks to prove a
date earlier than the date alleged in its application, a
heavier burden has been imposed on the applicant than the
common law burden of preponderance of the evidence… The
burden thus rested with [applicant] to prove an earlier date
by clear and convincing evidence”). Hydro-Dynamics Inc. v.
George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772,
1773-74 (Fed. Cir. 1987). See also Martahus v. Video
Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1852
n.7 (Fed. Cir. 1993) (“VCDS alleges use prior to the date
that it apparently listed in its registration application as
its date of first use, i.e., prior to May of 1985, and
therefore VCDS has the burden of establishing that use by
clear and convincing evidence instead of mere preponderance
of the evidence”). While applicant submits that it “has
established on the record priority at least as early as
2003” (Brief at 5) and it does not specifically argue that
it has an earlier use date than 1999, we note that
applicant’s secretary/treasurer referred to the earlier
owner of its pet store and testified:
Q. Okay. Do you know when the store was first opened
by the prior owner?

A. In 1999.

Q. Do you know did they use the name Tail-Waggers from
the beginning in 1999?

A. Yes…

Opposition No. 91177475
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Q. And to your knowledge, did they – have they also
used the logo –

A. Since day one they have.

Q. – since 1999?

A. Yes. Actually earlier than ‘99. Those happen to be
their three dogs that they had at the time.

Wirth dep. at 36.

However, we find that this rather general testimony
about some other entity’s use of the mark is not clear and
convincing evidence and it does not establish a date of
first use prior to opposer’s date in 1999. Because we find
that applicant does not have a date of first use prior to
1999, we determine that opposer would have priority even if
her registration were not of record.
Likelihood of Confusion
The central issue in this case is whether there is a
likelihood of confusion. In likelihood of confusion cases,
we analyze the facts as they relate to the relevant factors
set out in 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
The first factor we will consider is whether the marks
are similar. “The first DuPont factor requires examination
of ‘the similarity or dissimilarity of the marks in their
Opposition No. 91177475
8
entireties as to appearance, sound, connotation and
commercial impression.’” Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567).
Opposer’s mark is the term WAGTAILS in standard
character form, which means it can be displayed in a style
similar to the words in applicant’s mark. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000) (“Registrations with typed drawings are not
limited to any particular rendition of the mark and,
in particular, are not limited to the mark as it is used in
commerce”). Applicant’s mark consists of the words TAIL-
WAGGERS GOURMET PET BAKERY & BOUTIQUE and a design.
Inasmuch as applicant identifies its services as “retail
gourmet pet food bakery and pet store” and it has disclaimed
these words, these very descriptive terms would not be a
significant factor in distinguishing the marks. Cunningham,
55 USPQ2d at 1846, quoting, In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion’”).
See also In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Because ALE has nominal
Opposition No. 91177475
9
commercial significance, the Board properly accorded the
term less weight in assessing the similarity of the marks
under DuPont. As a generic term, ALE simply delineates a
class of goods”).
We add that the design also includes three dogs
apparently wagging their tails. Wirth dep. at 31 (“It’s a
dalmatian, a shelty, and a Jack Russell wagging their
tails”). Again, this additional feature is unlikely to
distinguish the marks. First, applicant’s pet food bakery
and pet store includes products for pets, specifically
including dogs. Ferguson dep., Ex. 2 (“Dog Bakery,” “Other
dog treats,” and “Dog Beds”). Therefore, the image of dogs
in association with a store selling dog food and other
accessories for dogs is hardly unique or unusual. The fact
that the dogs are wagging their tails reinforces the common
feature in both marks, the terms “wag” and “tail-.”
The other feature in applicant’s mark is the term
“tail-waggers.” The only feature of opposer’s mark is the
term “Wagtails.” It would obviously be the dominant term of
opposer’s mark and we find that the Tail-Waggers element in
applicant’s mark would similarly be the dominant part of
that mark. Tail-Waggers is clearly the largest and most
noticeable term in applicant’s mark. Its bold type makes it
stand out as much as, if not more, than the design.
“Moreover, in a composite mark comprising a design and
Opposition No. 91177475
10
words, the verbal portion of the mark is the one most likely
to indicate the origin of the goods to which it is affixed.”
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983).
Furthermore, TAIL-WAGGERS is essentially a reversal of
opposer’s mark WAGTAILS. “[T]he 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.” Bank of America National Trust and Savings
Association v. The American National Bank of St. Joseph, 201
USPQ 842, 845 (TTAB 1978). Here, the commercial impressions
and meanings of both marks would be essentially the same,
inasmuch as they both refer to and describe “tail wagging.”
See Carlisle Chemical Works, Inc. v. Hardman & Holden
Limited, 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“With
respect to the marks [COZIRC and ZIRCO] of the parties, they
are substantially similar, the difference being in a
reversal of syllables which are essentially the same.
Except for the reversal of syllables, the marks are similar
in sound and appearance. It seems reasonable that if any
connotation or meaning is to be ascribed to the marks and
their syllabic components, it would be the same, namely,
‘ZIR’ or ‘ZIRC’ designating zirconium and ‘CO’ designating
Opposition No. 91177475
11
cobalt”) and In re Nationwide Industries Inc., 6 USPQ2d
1882, 1886 (TTAB 1988) (“‘RUST BUSTER’ so resembles the
registered mark ‘BUST RUST’ as to be likely, when applied to
applicant’s rust-penetrating spray lubricant, to cause
confusion, mistake, or deception”). We must take into
consideration the fact that human memories are not
infallible, and therefore the reversal of the elements is
not likely to be noted or remembered by many purchasers. In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986). We also note applicant’s argument that
“wagtail” is a type of bird, but we do not consider this
asserted difference in connotation or meaning to distinguish
the marks. Even if “wagtail” is a type of bird, that is not
the meaning most purchasers in America would ascribe to the
term. Wirth dep. at 12 (“Wag Tails popped up a number of
times. It’s almost all foreign, the U.K. or Australia. And
they’re all bird companies. That’s what Wag Tail is, a
bird”).
Applicant argues that “the only material common between
the marks, the syllables WAG and TAIL, are used in numerous
third party registrations for pet products, and are diluted
in the field of pet goods and services.” Brief at 14.
Applicant has submitted registrations such as:
No. 3224957
TAILWAGGERS DOGGY DAYCARE
Dog daycare and kennel services

Opposition No. 91177475
12
No. 2081849
WAGGIN’ TAILS
Books and magazines about animals

No. 2031818
A TAIL WE COULD WAG
Animal collars and hats

No. 2240660
TAIL WAGGING FUN DOG TRAINING
Dog training services

No. 2493418
MRS. WAGGYTAILS
Dog accessories

No. 2752517
WAG’N TAILS
Pet grooming salons

No. 3171804
CAUTION TAILS WAGGING
Clothing and head gear

No. 2874758
WALK THE DOG TAIL WAGGIN’ PET CENTER and design
Dog walking services

No. 3028374
WAGMYTAIL.COM
Pet grooming business

No. 3114355
KEEP THOSE TAILS WAGGING
Insurance underwriting in the field of pet health care

No. 3200655
CAMP WAGGING TAILS and design
Dog daycare and boarding

No. 3224598
TAILS R WAGGIN MOBILE PET GROOMING and design
Pet grooming service

These registrations are not for dog food products and
they do not show that the term “Wagtails” is so weak and
diluted a term for the goods and services at issue that it
Opposition No. 91177475
13
is only entitled to a very narrow scope of protection.
“[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.” In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006). See also Institut National
Des Appellations D'Origine v. Vintners International
Company, 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir.
1992) (“Such third party registrations show the sense in
which the word is used in ordinary parlance and may show
that a particular term has descriptive significance as
applied to certain goods or services”); AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973) (“The existence of [third party] registrations is not
evidence of what happens in the market place or that
customers are familiar with them”).
Applicant also included numerous articles and websites
using the terms “tail” “and “wag” in association with
various pet products and services.
Tail Waggin’ Good!
All Jones USA-made 100% natural meat treats are created
using only American meat products.
Pet Product News International, October 2008.

Grow Sales and Keep Tails Wagging
Get the Simple Solution® Disposable Diaper Display [for
beagles, mini poodles, Bassett hounds, bull terrier,
etc.]
Dog Marketplace, October 200- [year obscured]

Tail Wagging Pet Services
www.tail-wagging.com

Opposition No. 91177475
14
A Tail Wagger’s Dream
Pet Supplies and Gifts
www.tailwaggersdream.com

A Tail We Could Wag
What does that mean? We are more than colorful hand
woven belts, dog collars and leads
www.tailwags.com

The Wagging Tail
Enjoy browsing our designer dog clothes, custom dog
coats…
www.wagwagwag.com

Wag My Tail
Pet grooming salon and school
www.wagmytail.com

Tail Wag Acres
Where it’s not just a name, we give our pet’s [sic] the
best possible home!!!
http://tailwagacres.com

Tail Wag-Inn
Boarding Kennels
http://tailwaginn.com

Tailwaggers Doggy Daycare
www.tailwaggersddc.com

There is little evidence regarding the extent of these
uses and most appear to be rather limited. Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125,
1131 (TTAB 1995) (“[A]pplicant has not furnished any
evidence regarding the extent of use of the marks by these
third parties. The geographic locations of these
restaurants, in many instances, are relatively obscure.
Moreover, the pictures of these restaurants tend to indicate
that the operations are small and local in nature”). We add
that applicant has also submitted Google search results and
Opposition No. 91177475
15
lists of businesses but we do not give this cryptic evidence
much weight. In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search engine
results — which provide little context to discern how a term
is actually used on the webpage that can be accessed through
the search result link — may be insufficient to determine
the nature of the use of a term or the relevance of the
search results to registration considerations”). See also
In re Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002)(“The
examining attorney's print-out of the results of an Internet
search by the Yahoo search engine are of little probative
value, largely because insufficient text is available to
determine the nature of the information and, thus, its
relevance”).
We do agree that the terms “tail-” and “wag” are hardly
unique and unusual terms when applied to products or
services for dogs. However, when we consider the marks
WAGTAILS and TAIL-WAGGERS GOURMET PET BAKERY & BOUTIQUE and
design, we find that the marks are more similar than they
are different. The dominant parts are essentially the same
terms in reverse order. They can be displayed in the same
type and the additional matter in applicant’s mark does not
help distinguish the source of the goods and services. The
marks have similar meanings and commercial impressions, and
while there are differences in appearance and pronunciation,
Opposition No. 91177475
16
there are also similarities because the dominant parts of
the marks are for the same basic terms in reverse order.
Therefore, we conclude that the marks are similar in their
entireties. Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design likely to be confused with CONCEPT for
hair care products). See also In re Dixie Restaurants,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(Federal Circuit held that, despite the addition of the
words “The” and “Cafe” and a diamond-shaped design to
registrant’s DELTA mark, there was a likelihood of
confusion).
The next factor we consider is whether the goods and
services of the parties are related. We must consider the
goods and services as they are identified in the
identification of goods and services. 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 [or
services] set forth in the application regardless of what
the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of goods
[or services] are directed”). Opposer’s goods include dog
Opposition No. 91177475
17
cookies and applicant’s services involve a pet food bakery
and pet store. In fact, applicant’s store sells dog
cookies. Ferguson dep. Ex. 2 (“Super Lucky Puppy $1.50 Pb
Cookie dipped in either carob or yogurt”).
The Federal Circuit has addressed the question of the
relatedness of goods and services in a case involving
furniture and a store selling furniture. It concluded that
these goods and services were related.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
principal use in connection with selling the goods and
(b) that the applicant’s services are general
merchandising -- that is to say selling -- services, we
find this aspect of the case to be of little or no
legal significance.

In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988). See also In re United Service
Distributors, Inc., 229 USPQ 237 (TTAB 1986)(design for
distributorship services in the field of health and beauty
aids held likely to be confused with design for skin cream)
and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB
1983) (STEELCARE INC. for refinishing of furniture, office
furniture, and machinery held likely to be confused with
STEELCASE for office furniture and accessories). In this
case, dog cookies, biscuits and treats and cat treats are
all products that would be sold in a pet bakery and store.
These goods and services are complementary. In re Opus One
Opposition No. 91177475
18
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (“[A]pplicant’s
‘restaurant services’ and registrant’s ‘wine’ clearly are
complementary goods and services which may be encountered
together by the same purchasers… The fact that applicant’s
restaurant serves the type of goods (indeed the actual
goods) identified in the cited registration is certainly
probative evidence which supports a finding under the second
du Pont factor that applicant’s services and opposer’s goods
are related”).
In addition, when we consider the channels of trade and
purchasers for these goods and services as opposed to just
their current marketing methods (Octocom, 16 USPQ2d at
1787), the purchasers of animal treats and patrons of a pet
food bakery and pet store at least overlap and the channels
of trade are similar inasmuch as opposer’s identified goods
would be sold in pet food bakeries and pet stores. The
purchasers would include ordinary purchasers buying
relatively inexpensive treats for their pets.
When we consider all the evidence of record, we
conclude that the goods and services are related and the
purchasers and channels of trade are overlapping. The
dominant portions of the marks are essentially the same
terms in reverse order. Their meanings and commercial
impressions are very similar, if not the same. Under these
Opposition No. 91177475
19
circumstances, opposer has met her burden of proof of
showing that there is a likelihood of confusion.
Decision: The opposition to the registration of
application No. 76657835 is sustained.