Critter Control, Inc.

Trademark Trial and Appeal Board

Mar 26, 2008

No. 76638760 (T.T.A.B. Mar. 26, 2008)

Mailed:
March 26, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Critter Control, Inc.
________

Serial No. 76638760
_______

Arnold S. Weintraub of The Weintraub Group, P.L.C. for
Critter Control, Inc.

Michele-Lynn Swain, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Hairston, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Critter Control, Inc. (applicant) has applied to
register the mark CRITTER CARDS in standard characters on
the Supplemental Register for services identified as
“providing greeting cards to be sent to others via a global
electronic network” in International Class 45.1 Applicant
has disclaimed “CARDS.” The Examining Attorney has finally

1 Application Serial No. 76638760, filed May 17, 2005, claiming
first use of the mark anywhere and first use of the mark in
commerce on November 30, 2004, in an amendment to allege use.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76638760
2
refused registration under Trademark Act Section 2(d), 15
U.S.C. 1052(d), based on a likelihood of confusion with
Registration No. 2612850 for the mark shown below on the
Principal Register for goods identified as “greeting cards”
in International Class 16.

The registration issued on August 27, 2002, and is active.
The registration claims both first use of the mark anywhere
and first use of the mark in commerce in January 1999.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion …” 15 U.S.C. § 1052(d).
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), the Court set forth the factors
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the
Serial No. 76638760
3
similarity of the marks and the similarity of the goods and
services of applicant and the registrant. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [and
services] and differences in the marks.”). Below we will
consider each of the factors as to which applicant or the
Examining Attorney have presented arguments or evidence.
The goods and services of applicant and the registrant
need not be identical to find a likelihood of confusion
under Trademark Act Section 2(d). They need only be
related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods and services originate
from the same source. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). See also
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Furthermore, in comparing the goods and services we
must consider the goods and services as identified in the
application and cited registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
Serial No. 76638760
4
legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods [and services] set forth in the
application [and registration] 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.”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
Applicant identifies its services as “providing
greeting cards to be sent to others via a global electronic
network”; the goods identified in the cited registration
are “greeting cards.” In its brief applicant argues that
its services are “an electronic transmission of a message
which contains pictures of animals.” Applicant’s Brief at
unnumbered page 4. Applicant notes that the cited
registration covers paper greeting cards and asserts that
the goods and services thus differ. Applicant also asserts
that it ”… has a very unique trade channel.” Id.
Applicant explains that it offers its services only online
through its website. On the other hand, the Examining
Serial No. 76638760
5
Attorney states, “The fact that the applicant provides
electronic greeting cards whereas the registrant provides
printed greeting cards is insignificant.”
We concur with the Examining Attorney without
hesitation. The goods and services in this case are
closely related. A greeting card is a greeting card
whether it is in printed or electronic form. Applicant’s
characterization of its service as merely a “message” is
inconsistent not only with its identification in the
application, but also with its specimen where the “message”
is explicitly identified as a “greeting card.” Applicant’s
service serves the same purpose and is directed to the same
class of purchasers as applicant’s goods. The Examining
Attorney has provided evidence showing that the goods and
services are related.
First, the Examining Attorney has provided copies of
several use-based, third-party registrations for marks
covering both printed and electronic greeting cards, for
example, Registration Nos. 2454901, 2489619, 2587936 and
3159387. See Attachments to Final Refusal. These
registrations serve to suggest that the services in the
application and the goods in the cited registration are the
types of goods and services which may emanate from the same
source. In re TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB
Serial No. 76638760
6
2002); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993). The Examining Attorney has also
provided evidence from the Internet showing that the same
party offers both printed and electronic greeting cards.
See, for example, a copy of pages from
americangreetings.com and hallmark.com. Id. This evidence
flatly contradicts applicant’s assertions that the goods
and services differ substantially and that the trade
channels are distinct.
Accordingly, we conclude that applicant’s services and
the goods identified in the cited registration are closely
related and that the channels of trade for those goods and
services are also closely related. Moreover, because the
goods and services are so closely related, and because
there are no restrictions as to the classes of purchasers
in the descriptions of goods and services, we find that the
classes of purchasers are the same.
We now turn to the marks. In comparing the marks we
must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties, it is
entirely appropriate to accord greater importance to the
Serial No. 76638760
7
more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “… in
articulating reasons for reaching a conclusion on the issue
of confusion, 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted). Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975) (internal citations omitted).
Serial No. 76638760
8
With regard to the marks, applicant states, “The
Applicant respectfully submits that the use of ‘Critter
Cards’ is only a minor and relatively insignificant portion
of the cited registration. The mark is dominated by the
picture of the raccoon’s head.” Applicant’s Brief at
unnumbered page 3. Applicant also argues that the
additional wording in the registered mark distinguishes the
marks. Applicant thus argues that the marks are not
similar. The Examining Attorney argues that the marks are
similar in spite of the presence of the design and
additional wording in the cited mark because CRITTER CARDS
still projects a distinct commercial impression within the
registered mark.
We concur with the Examining Attorney and conclude
that the marks, when viewed in their entireties, are
similar.
First, with regard to the design element in the cited
mark, the Board generally holds that when marks have both
literal and design elements, the literal elements are more
significant because purchasers use the literal elements in
identifying and requesting the goods or services. See In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997); CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983). In this case,
Serial No. 76638760
9
however, the design element is clearly a significant part
of the mark as evidenced by the size of the raccoon design
in comparison to the words. Nevertheless, we believe that
consumers will still use the term “CritterCards” to refer
to the registrant’s greeting cards.
Next, with regard to the respective literal elements,
while there are specific differences between the literal
elements in the marks, in particular, the inclusion of the
additional phrase PIXELS ‘N’ PAGES in the cited mark, the
differences are not sufficient to distinguish the marks.
Each of the two phrases in the cited mark conveys a
distinct connotation and creates a separate commercial
impression. PIXELS ‘N’ PAGES appears on a separate line
from CRITTER CARDS. In addition, each of the phrases
projects a distinct meaning. The phrases are not connected
in a way which would in any way alter the meaning,
connotation or commercial impression of CRITTER CARDS.
Neither dominates the other; each can serve independently
as a source indicator.
In the case of applicant’s mark, there is no other
element which would distinguish applicant’s mark from
CRITTER CARDS as used in the cited registered mark. Thus,
a potential purchaser encountering applicant’s mark is
likely to associate applicant’s mark, CRITTER CARDS, with
Serial No. 76638760
10
the cited mark, which also includes CRITTER CARDS as a
distinct element. This is particularly likely when, as
here, the marks are used on closely related goods and
services.
Therfore, we conclude that the marks, when viewed in
their entireties, are similar in connotation and commercial
impression. Furthermore, the differences in appearance and
sound are less significant than these similarities.
Consequently, we conclude that the marks are similar
overall.
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s CRITTER CARDS
mark when used in connection with “providing greeting cards
to be sent to others via a global electronic network” and
the cited PIXELS ‘N’ PAGES CRITTER CARDS and Design mark
when used in connection with “greeting cards.”
Decision: We affirm the refusal to register under
Trademark Act Section 2(d).