Recot, Inc.v.M. C. Becton

Trademark Trial and Appeal Board

Sep 14, 2000

No. 91096518 (T.T.A.B. Sep. 14, 2000)

Paper No. 45
BAC
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF THE TTAB 9/14/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Recot, Inc.
v.
M. C. Becton
_____
Opposition No. 96,518
_____
On Remand From
The United States Court of Appeals For The Federal
Circuit
_____
Laurence R. Hefter of Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P. for Recot, Inc.
Mark H. Elovitz of Mark H. Elovitz, P.C. for M. C.
Becton.
______
Before Sams, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
In an order dated June 7, 2000, the United States
Court of Appeals for the Federal Circuit vacated the
Board’s December 4, 1998 decision dismissing the
opposition. In particular, the Court stated that “the
Opposition No. 96518
2
Board improperly discounted the fame of the FRITO-LAY
marks, did not consider all of the relevant evidence when
determining if the products were related, and improperly
dissected the marks.” The case was remanded to the Board
for a re-determination of the question of likelihood of
confusion.
As instructed by the Court, we now reconsider the
evidence of record in light of the relevant du Pont1
factors, giving each evidentiary element its due weight.
The similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and
commercial impression.
The marks FRITO LAY and FIDO LAY, when viewed in
their entireties, have a number of similarities in
appearance. Both marks consist of two words, the second
of which is “LAY.” The first word of each mark consists
of a word beginning with the letter “F” and ending with
the letter “O.” The two marks also have similarities in
sound. The first words of the two marks have the same
initial and concluding sounds. And both marks consist of
three syllables, with the same cadence when spoken.

1 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 96518
3
On the other hand, the connotations of the parties’
respective marks are dissimilar. FRITO is Spanish for
“fried,” whereas FIDO is a well-known name for a dog.
There is no evidence of record as to the origin of LAY
(or LAY’S)
in opposer’s marks, while applicant submitted evidence
that in relation to its mark LAY refers to a dog
command.
Having considered all the evidence of record on this
point, we find that the similarities in appearance and
sound between FRITO LAY and FIDO LAY outweigh the
dissimilarity in connotation, such that the overall
commercial impression conveyed by the two marks is
similar.
The similarity or dissimilarity and nature of the goods.
Applicant’s goods are “natural agricultural
products, namely, edible dog treats” (e.g., smoked bones,
pigs ears, turkey feet, cow hooves), and opposer’s goods
are various human snack foods (e.g., corn chips, potato
chips, pretzels, cakes, candy). While opposer’s witness
Paulette Kish testified that she was aware of at least
two companies that make both human food and pet food
(i.e., Ralston Purina, Quaker), there is no evidence of
Opposition No. 96518
4
record that such companies sell both products under the
same or similar product marks.
The record shows that, while both parties’ products
are sold in supermarkets, there is no evidence that
opposer’s FRITO LAY snack foods are sold in close
proximity to applicant’s FIDO LAY dog treats.
Opposer’s witness Paulette Kish also testified
regarding opposer’s plans to co-merchandise its products
with a movie company (Walt Disney, Inc.) in connection
with the release of the movie “101 Dalmatians.” At the
time of her deposition (August 8, 1996), the movie had
not been released. Thus, the co-merchandising had not
yet occurred, and there is no evidence as to the nature
and extent of the promotional efforts.
Having considered all the evidence concerning the
similarity or dissimilarity of the parties’ goods, we
find that there is not a close relationship between the
products. While both products are, generally speaking,
food items, they are different in essential character:
human snack foods vs. animal parts marketed as dog
treats. The strongest evidence of a relationship between
the goods is that there are at least two companies that
make both dog food and human food. But there is no
convincing evidence that dog food and human food products
Opposition No. 96518
5
are marketed together. The mere fact that opposer
arranged for a marketing tie-in between its snack foods
and a popular animated feature film about dogs is not
persuasive evidence that the public would be likely to
connect the source of FRITO LAY products with the source
of applicant’s FIDO LAY dog treats.
The conditions under which and buyers to whom sales are
made, i. e., “impulse” vs. careful, sophisticated
purchasing.
As we noted in our original decision in this case,
the evidence shows that both parties’ goods are
inexpensive and, therefore, are subject to purchase on
impulse. We note also that, in view of the Court’s
specific emphasis in its remand order that, when products
are inexpensive and subject to purchase on impulse, as in
this case, the likelihood of confusion increases, we
accord this evidentiary element more weight than we did
before in the balance of likelihood of confusion
evidence.
The fame of the prior mark.
Opposition No. 96518
6
In our original decision we found that opposer’s
FRITO LAY mark has become famous as the result of its use
in connection with snack foods. There is ample evidence
of record to support that finding, and applicant did not
argue otherwise. And we are particularly mindful of the
Court’s instruction, in its decision remanding this case
to us, that “the fame of the mark must always be accorded
full weight when determining the likelihood of
confusion,” and that the reasoning behind the broad scope
of protection afforded to famous marks “applies with
equal force when evaluating the likelihood of confusion
between marks that are used with goods that are not
closely related.” (emphasis added).
Having considered all the evidence of record, we
conclude that confusion is likely in the contemporaneous
use of FRITO LAY and FIDO LAY for the parties’ respective
goods.
We reach that conclusion by giving heaviest weight to the
following evidentiary elements: (1) the fame of the
FRITO LAY mark, (2) the similarity in overall structure,
appearance and sound of the two marks FRITO LAY and FIDO
LAY, and (3) the “impulse-purchase” nature of the
parties’ goods. The principal evidentiary element
favoring applicant, the dissimilarity of the parties’
Opposition No. 96518
7
goods, is insufficient to outweigh the evidentiary
elements favoring opposer. Or, to put the matter in
other words, the parties’ goods are not so fundamentally
disparate in nature as to make this evidentiary element
the determinative one on the issue of likelihood of
confusion.
Finally, we confess that we have at least some doubt
about our conclusion that confusion is likely. But, of
course, where there is any doubt on the question of
likelihood of confusion, it must be resolved against the
newcomer as the newcomer has the opportunity of avoiding
confusion, and is obligated to do so. See TBC Corp. v.
Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir.
1997); and In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The opposition is sustained, and
registration to applicant is refused.
J. D. Sams
P. T. Hairston
Opposition No. 96518
8
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board