This Opinion is Not a
Precedent of the TTAB
Mailed: August 29, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re KellyToy (USA), Inc.
_____
Serial No. 86381176
_____
Mark B. Mizrahi of Wolf Rifkin Shapiro Schulman & Rabkin LLP
for KellyToy (USA), Inc.
Laura E. Fionda, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____
Before Cataldo, Lykos and Greenbaum,
Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
KellyToy (USA), Inc. (“Applicant”) seeks to register on the Principal Register the
mark WAGS & PURRS in standard characters for, as amended:1
“Beds for household pets” in International Class 20;
“Feeding vessels for pets, animal activated pet feeders” in International Class
21;
“Pet bedding in the nature of pet blankets” in International Class 24; and
1 Application Serial No. 86381176, filed August 29, 2014 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b) for International Classes 20, 21, and 24, and Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), for International Class 28.
Serial No. 86381176
- 2 -
“Pet toys containing catnip; pet toys” in International Class 28.
Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered mark on the Principal Register displayed below for “[t]he bringing
together, for the benefit of others, of a variety of goods and services, enabling
customers to conveniently view and purchase those goods and services from an
Internet web site particularly specializing in the marketing of the sale of goods and
services of others” in International Class 35, that when used on or in connection with
Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive.2
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney maintained the refusal and denied the
2 Registration No. 3837254, registered August 24, 2010, alleging April 16, 2001 as the date
of first use anywhere and in commerce; Section 8 accepted. The description of the mark is as
follows: “The mark consists of the stylized wording ‘TAIL WAGS’ appearing over the design
of a dog wearing a collar with a rolled paper in its mouth appearing to the left of the stylized
wording & appearing in the design of a heart appearing to the left of the design of a cat
wearing a collar over the stylized wording ‘PURRS’.” Color is not claimed as a feature of the
mark.
Serial No. 86381176
- 3 -
request for reconsideration.3 Thereafter, the appeal resumed and is now fully briefed.
For the reasons explained below, we affirm the refusal to register.
I. Motion to Strike
Applicant moves to strike the Examining Attorney’s appeal brief on the ground
that it does not contain an alphabetical index of cited cases and numbered pages.
Applicant contends that these deficiencies made it difficult for Applicant to prepare
its reply brief.
Applicant’s motion to strike the Examining Attorney’s brief is denied. While
Trademark Rule 2.142(b)(2) requires “an alphabetical index of cited cases” and
numbered pages, the required index and page numbering is for the Board’s
convenience, and we do not regard it as being so essential that the failure to comply
with the requirement should result in our not considering the brief. To the contrary,
not having the brief and benefit of the Examining Attorney’s arguments would impose
a burden on the Board. In addition, with the advent of TTABVUE, the Board’s
electronic docketing system, Applicants can easily refer to the electronically
designated page numbers. In any event, even if we were to regard the failure to
provide an index of cases and page numbers as a basis for not considering the brief,
we would still consider the appeal on the merits.
3 Applicant’s objection to the Examining Attorney’s evidence submitted with the denial of
Applicant’s request for reconsideration as late-filed is overruled. See Trademark Trial and
Appeal Board Manual of Procedure (“TBMP”) § 1207.04 (2016) (“When a timely request for
reconsideration of an appealed action is filed (with or without new evidence), the examining
attorney may submit, with his or her response to the request, new evidence directed to the
issue(s) for which reconsideration is sought.”) (citing In re Davey Products Pty Ltd., 92
USPQ2d 1198, 1201 (TTAB 2009) and In re Giger, 78 USPQ 1405, 1406-07 (TTAB 2006)).
Serial No. 86381176
- 4 -
II. Applicable Law
We now direct our attention to the substantive refusal before us. We base our
determination under Section 2(d) on an analysis of all of the probative evidence of
record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). 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, however, two key considerations are the
similarities between the marks and the similarities between the goods and services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
A. Comparison of the Marks
We consider the first du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
“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, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012). Our analysis cannot be predicated on dissection
of Applicant’s and Registrant’s marks. In re National Data Corp., 753 F.2d 1056, 224
Serial No. 86381176
- 5 -
USPQ 749, 751 (Fed. Cir. 1985). Rather, we are obliged to consider each mark in its
entirety. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). However, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 224 USPQ at 751.
Applicant argues that the marks are dissimilar in sound, sight, connotation and
commercial impression. In contrast to its standard character mark comprised solely
of two short monosyllabic words joined by an ampersand, Applicant notes that the
cited registration is a composite mark consisting of the words TAILS WAGS &
PURRS in a highly stylized format with prominent design elements – the depiction
of a dog on a mat, a cat licking his/her paw, and a heart shaped background for the
ampersand. In addition, Applicant contends that the word TAILS, as the first portion
of the cited mark, is the dominant element and projects an “unusual meaning”
because “one does not expect a tail to purr.” Applicant’s Brief, p. 5; 12 TTABVUE 10.
Applicant also maintains that the Examining Attorney discounts the significance of
the design elements in the cited mark.
We acknowledge the differences in the marks pointed out by Applicant, and
recognize that as a general proposition, consumers are inclined to focus on the first
part of a trademark. See Palm Bay Imports, Inc., 73 USPQ2d at 1692. That being
Serial No. 86381176
- 6 -
said, Applicant’s and Registrant’s marks each share the phrase “WAGS & PURRS.”
We disagree with Applicant’s contention that the additional word “tail” in the cited
mark results in a different connotation and commercial impression. Rather, the word
“tail” reinforces the common perception of the word “wags” as referring to a dog
wagging his/her tail. The record shows that consumers are accustomed to seeing the
words “tail” and “wags” together in this context. Note the following dictionary entries:
wag
v. wagged, wagging, wags
1. To move briskly and repeatedly from side to side, to and fro, up
and down. The dog’s tail wagged.4
wag
transitive verb
1. to swing to and fro or up and down especially with quick jerky
motions: …
…5
In addition, the design features in the cited mark are subordinate to the literal
elements. It is an often-recited principle that when a mark consists of a literal portion
and a design portion, the literal portion is usually more likely to be impressed upon
a purchaser’s memory and to be used in calling for the goods or services; therefore,
the literal portion is normally accorded greater weight in determining whether marks
are confusingly similar. See, e.g., In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d
1905, 1911 (Fed. Cir. 2012); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198,
4 The American Heritage Dictionary of the English Language (5th ed. 2015) at
www.ahdictionary.com (July 9, 2015 Office Action).
5 Merriam-Webster Dictionary at www.merriam-webster.com (July 9, 2015 Office Action).
Serial No. 86381176
- 7 -
200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB
2011). That is especially true here where the depiction in Registrant’s mark of the
dog wagging his/her tail and of the cat purring represent the literal elements of the
mark. And lastly we observe that the heart serves merely as a carrier for the
ampersand.
Applicant also contends that the marks are dissimilar because the wording in the
cited mark is depicted in a highly stylized font. This argument is unpersuasive.
Because the applied-for mark is in standard characters, Applicant could in theory use
its mark in the same stylization as the literal elements of Registrant’s mark. See
Trademark Rule 2.52(a). See also Trademark Manual of Examining Procedure
(“TMEP”) § 807.03(a) (April 2016) (“If the applicant files an application on paper that
includes a standard character claim, the applicant may depict the mark in any font
style; may use bold or italicized letters; and may use both uppercase and lowercase
letters, all uppercase letters, or all lowercase letters, since no claim is made to any
particular font style, size, or color.”) (emphasis in original). See also Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir.
2011).
For the foregoing reasons, we agree with the Examining Attorney that Applicant’s
and Registrant’s marks are similar in sound, connotation and commercial impression.
This first du Pont factor weighs in favor of finding a likelihood of confusion.
B. The Goods and Services
Next we compare Applicant’s and Registrant’s respective goods and services as
Serial No. 86381176
- 8 -
they are identified in the application and the cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that
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 our likelihood of
confusion analysis. That is, the issue is not whether consumers would confuse the
goods or services themselves, but rather whether they would be confused as to the
source of the goods or services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The
respective goods and services need only be “related in some manner and/or if the
circumstances surrounding their marketing [be] such that they could give rise to the
mistaken belief that [the goods and services] emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). See also 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).
Both Applicant and the Examining Attorney devote much of their briefs to
disputing the precise nature of Registrant’s services, which are identified as
[t]he bringing together, for the benefit of others, of a variety of goods and
services, enabling customers to conveniently view and purchase those goods
and services from an Internet web site particularly specializing in the
marketing of the sale of goods and services of others.
Applicant takes the position that Registrant’s services are “some sort of online
Serial No. 86381176
- 9 -
marketplace for goods like Amazon or eBay, presumably controlled and monitored by
the registrant.” Applicant’s Brief, p. 12; 12 TTABVUE 17. As Applicant contends,
entities like Amazon or eBay do not typically sell private labeled goods under the
Amazon or eBay brand names. The Examining Attorney disagrees, contending that
the wording is sufficiently broad to encompass online retail web sites selling both
private label goods as well as the goods of unrelated third parties. In support thereof,
the Examining Attorney submitted printouts from the websites of various online
retailers such as Petco, J & J Dog Supplies, L.L. Bean and Bass Pro that sell third-
party branded pet products as well as private label goods under their own brand
name. The Examining Attorney also submitted third-party registrations with
identifications commencing with the prefatory language “online retail store
services…”
We agree with Applicant’s characterization of Registrant’s identified services. For
this reason, the Examining Attorney’s evidence is of little probative value. However,
because the services in the registration involve the sale of “a variety of goods,” they
can encompass all types of goods, including the pet products identified by Applicant.
Relatedness is generally be recognized when the services clearly include or
encompass the goods in the identification. See, e.g., In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail
grocery and general merchandise store services and BIGGS and design for furniture
likely to cause confusion where applicant’s identified “general merchandise store
services” would include the sale of furniture). As such, Applicant’s contention that
Serial No. 86381176
- 10 -
the description of services in the cited registration fails to specify the selling of pet
products is misplaced.6 Thus, the second du Pont factor also weighs in favor of finding
a likelihood of confusion.
III. Conclusion
We have carefully considered all of the evidence of record and arguments
pertaining to the du Pont likelihood of confusion factors, including any evidence and
arguments not specifically addressed in this opinion. We treat as neutral any du Pont
factors for which there is no evidence of record. We find that the marks are highly
similar in sound, meaning and commercial impression such that consumers
encountering Registrant’s services branded as
are likely to assume that Applicant’s pet products
branded WAGS & PURRS emanate from the same
source.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.
6 To be clear, the Board is not adopting a “per se” rule regarding the relatedness of goods and
services as Applicant suggests. We are mindful of In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1087 (Fed. Cir. 2014) in which the Court of Appeals for the Federal Circuit
reiterated the principle that “[i]n situations … in which the relatedness of the goods and
services is obscure or less evident, the PTO will need to show ‘something more’ than the mere
fact that the goods and services are ‘used together.’” We do not think that to be the case here.
