Abbott Laboratoriesv.Pet-Ag, Inc.

Trademark Trial and Appeal BoardFeb 14, 2012

No. 91170148re (T.T.A.B. Feb. 14, 2012)

Mailed: February 14, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ Abbott Laboratories v. Pet-Ag, Inc. ________ Opposition No. 91170148 to applications Serial Nos. 76623502 and 76623503 _______ Request for Reconsideration _______ Robert M. Newbury, Joseph N. Welch II, Bradley L. Cohn, and Kristen S. Knecht of Pattishall Mcauliffe Newbury et. al. for Abbott Laboratories Robert E. Browne, Maurice E. Finnegan, III, and Luis M. Lozada of Neal Gerber & Eisenberg LLP for Pet-Ag, Inc. _______ Before Zervas, Wolfson, and Shaw, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: On December 22, 2011, applicant filed a request for reconsideration of our final decision in this proceeding, mailed on November 22, 2011, sustaining the opposition. Opposer filed a brief in response to applicant’s request. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Opposition No. 91170148 2 The purpose of a request for reconsideration is to show that, based on the evidence submitted and the prevailing authorities, the Board’s decision is erroneous and should be changed or modified. The request may not be used to introduce additional evidence, nor should it be devoted simply to a reargument of the points presented in the requesting party’s brief on the case. Rather, the request normally should be limited to a demonstration that, based on the evidence properly of record and the applicable law, the Board’s ruling is in error and requires appropriate change. (citations omitted) TBMP Section 543 (3d ed. 2011). We find that applicant has not shown that any portion of the Board’s ruling was in error. Specifically, applicant contends that with respect to the strength/fame of opposer’s mark, the Board ignored evidence showing that the term “-sure” is weak. Applicant merely reargues the points made in its main trial brief regarding the weight to be accorded the third-party uses and registrations of marks incorporating the term “-sure.” In determining, as it did, that opposer’s ENSURE mark is “commercially strong,” the Board gave due weight to the third-party marks as well as, inter alia, opposer’s 40-year use of its ENSURE mark and its strong showing of commercial sales and advertising. The mark ENSURE is entitled to a broad scope of protection, and the Board gave due consideration to applicant’s Opposition No. 91170148 3 arguments and evidence to the contrary in making this finding. Applicant further argues that in comparing the marks, the Board failed to analyze the marks in their entireties, and failed to consider the impact that its trade dress, an image of a dog or a cat next to the words DOGSURE or CATSURE on the product packaging, may project on a prospective purchaser. However, the Board considered the potential impact the overall trade dress of applicant’s mark as currently used on the packaging for the goods may have on prospective buyers. As we noted in our order, the terms “dog” and “cat” merely describe a feature of the goods, and the trade dress features simply reinforce this descriptive impression. Moreover, consumers do not compare marks side-by-side, and have imperfect recollections of other marks at the time of purchase. Finally, the images of the dog and cat are not part of the marks as they have been applied for, and the images may not always accompany the word marks as used on the goods. Applicant has not shown that the Board erred in its finding that the marks are similar in their entireties. Applicant asks us to consider the Board’s recent holding in Ahold Licensing SA v. Premium Nutritional Products, Inc., Opp. No. 91180170, (TTAB Nov. 7, 2011), Opposition No. 91170148 4 unpub’d., wherein the Board determined that a likelihood of confusion did not exist between the mark NATURE’S PROMISE, applied for “food for caged birds, pet food for small mammals, [and] hay” and NATURE’S PROMISE, registered for such disparate food products as, inter alia, “milk, eggs, applesauce, tofu, olive oil, tea, breakfast cereals, honey, pasta, rice, fresh vegetables, fruit juice, and soft drinks” and “retail store services, namely, a grocery store department featuring natural and organic foods.” According to applicant, the Board’s finding in Ahold Licensing that “human food and pet food are not competitive or complementary products”1 should be followed. Otherwise, the “incongruent decisions” will result in “a lack of certainty to trademark owners.”2 First, Ahold Licensing is not designated as precedent of the TTAB and as a consequence, the Board’s decision therein is non-binding. Secondly, Ahold Licensing addressed a different set of facts and a different evidentiary record. Unlike in the case at hand, opposer therein did not meet its burden “to show that the goods of the parties are related in some manner and/or the conditions surrounding the marketing of the products are 1 Ahold Licensing, p. 19. 2 Applicant’s Brief, p. 9-10. Opposition No. 91170148 5 such that [a likelihood of confusion would occur.”3 This was due to the fact that “there was no testimony or evidence regarding the similarity or dissimilarity of the goods and services.”4 Thus, the finding in Ahold Licensing that “human food and pet food are not competitive or complementary products” was based on the limited record therein, which showed that “the only similarity between pet food and human food is that they are both sold in grocery stores.”5 It is well established that the mere fact that both products may be sold in grocery stores does not compel the conclusion that the goods or services involved are related. See, e.g., Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 152-53 (CCPA 1978); and Federated Foods, Inc. v. Fort Howard Paper Company, 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In the case at hand, opposer has shown that beyond the fact that both parties’ goods are sold in grocery stores, applicant markets its products as being similar to dietary supplements used by seniors; opposer’s ENSURE supplement has been used in place of applicant’s supplement by some consumers for their pets; and that the goods are generally similar in formulation, and share common characteristics. 3 Ahold Licensing, p. 17. 4 Ibid. Opposition No. 91170148 6 Although applicant argues that the Board gave too much weight to the third-party comments that show pet owners feed their pets ENSURE supplements and to media references that point out the similarities in the make-up of the products, the record shows that several companies sell both pet food and human food, and that both parties’ goods are designed as a food supplement or meal replacement. Applicant merely reargues the weight to be accorded this evidence, which we have already considered. Finally, applicant argues that since the Board found that the trade channels differ, it improperly found that the classes of purchasers were the same. There is of course no mandate that both factors operate in tandem to favor only one party. Further, applicant’s argument that the Board relied on the evidence (that some veterinarians send ENSURE supplements home with their patients) to find the classes of purchasers similar, is misplaced. The Board duly considered all evidence of record in determining that the classes of purchasers for both parties include the general public and are therefore similar. The Board duly considered the relevant DuPont factors in making its determination of likelihood of confusion in this case. The decision in Ahold Licensing is not binding 5 Id. at 18-19. Opposition No. 91170148 7 on us and is distinguishable on its facts. In view of the foregoing, applicant’s request for reconsideration is denied, and the Board’s November 22, 2011 decision stands.