Durvet, Inc.

Trademark Trial and Appeal BoardJul 23, 2010

No. 77564911 (T.T.A.B. Jul. 23, 2010)

Mailed: July 23, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Durvet, Inc. ________ Serial Nos. 77564911 and 77584503 _______ William B. Kircher of Husch Blackwell Sanders LLP for Durvet, Inc. David S. Miller, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Bucher, Cataldo and Bergsman, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Durvet, Inc. filed an application1 for the mark NO BITE in standard characters, and an application2 to register the mark shown below, 1 Application Serial No. 77564911 was filed on September 8, 2008 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. 2 Application Serial No. 77584503 was filed on October 2, 2008 based upon applicant’s assertion of its bona fide intent to use the mark in commerce. In response to the examining attorney’s requirement, applicant submitted the following color statement and description of the mark: “The color(s) red, yellow, and white is/are claimed as a feature of the mark” and “The mark consists of the wording NO BITE in white with a small yellow THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser Nos. 77564911 and 77584503 2 both on the Principal Register for the following goods: “Flea and tick control products, namely, flea and tick control sprays, powders and aerosol foggers for premise applications; and carpet insecticides and fresheners” in International Class 5. The trademark examining attorney refused registration to both applications under Section 2(d) of the Trademark Act on the ground that applicant’s marks, as intended to be used in connection with applicant’s goods, so resemble the mark NO BITE ZONE, previously registered in standard characters on the Principal Register3 for “insect repellents,” in International Class 5, as to be likely to cause confusion. When the refusals were made final, applicant appealed. Applicant and the examining attorney have filed briefs on the matter under appeal. Proceedings Consolidated The issues raised by the above-noted appeals of the Section 2(d) refusals to register application Serial Nos. circle following the word "NO" and the entire mark appears on a red oval background.” 3 Registration No. 3043855 issued January 17, 2006. Ser Nos. 77564911 and 77584503 3 77564911 and 77584503 are identical. Further, the briefs and evidentiary record in both cases are essentially identical. Accordingly, the Board will address both appeals in a single opinion. Citations to the briefs refer to the briefs filed in application Serial No. 77564911, unless otherwise noted; however, we have, of course, considered all arguments and evidence filed in each case. Evidentiary Matters Before turning to the substantive ground for refusal, we note that in both appeals applicant submitted exhibits with its appeal brief therein. The exhibits, which were not previously submitted during prosecution of the appeals, consist of printed screenshots from applicant’s and registrant’s internet websites, a copy of registrant’s specimen submitted with the application underlying its cited registration, and printouts from the Trademark Electronic Search System (TESS). We agree with the examining attorney that these exhibits are untimely. See Trademark Rule 2.142(d) (the record in the application should be complete prior to the filing of an appeal). We note, however, that had we considered such exhibits in our determination of the issue on appeal, the result would be the same. Ser Nos. 77564911 and 77584503 4 Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Similarity of the Goods We begin by comparing applicant’s goods with those of registrant. In making our determination under the second du Pont factor, we look to the goods as identified in the involved applications 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 legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular Ser Nos. 77564911 and 77584503 5 channels of trade or the class of purchasers to which the sales of goods 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.”). Furthermore, it is not necessary for the goods to be directly competitive or move in the same trade channels to support a finding of likelihood of confusion. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (7TTAB 1978). In this case, registrant’s “insect repellents” are related to applicant’s “flea and tick control products.” We hereby take judicial notice of the following definition4 of “flea” - “any of numerous small, wingless bloodsucking insects of the order Siphonaptera, parasitic upon mammals and birds and noted for their ability to leap.”5 As such, registrant’s goods repel insects, which is a related function to that of applicant’s goods, which control, inter alia, fleas, which as defined above are insects. Furthermore, applicant’s “carpet insecticides” are related 4 The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 5 Random House Dictionary, Random House, Inc. 2010. Ser Nos. 77564911 and 77584503 6 to registrant’s “insect repellent” in that both are used to kill or repel insects. Thus, on the face of their respective identifications, applicant’s goods appear to be related to those of registrant in that both are used to control, repel and kill insects and arachnids. In addition, the examining attorney has made of record a number of use-based third-party registrations which show that various entities have adopted a single mark for goods that are identified in both applicant’s applications and the cited registration. The following examples are illustrative: Registration No. 1938075 for goods including insect repellents and chemical pest control products for controlling, inter alia, fleas; and Registration No. 3440284 for goods including flea and tick control sprays, powders, and aerosol foggers for premise applications, carpet insecticides and fresheners, and insect repellents for use on animals. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). In addition, the examining attorney submitted evidence from commercial internet websites in which the goods of the Ser Nos. 77564911 and 77584503 7 type identified by both applicant and registrant are available for sale. These websites include liquidfence.com (insect repellents and tick and flea repellents for pets); mq7.com (insect repellent and tick and flea repellents for pets); and bugrepel.com (product that serves as insect repellent and tick control spray as well as carpet spray). The foregoing evidence demonstrates that applicant’s goods are of a type that are related to or otherwise may be encountered with those of registrant, and this du Pont factor favors a finding of likelihood of confusion. Similarity of Trade Channels As indicated above, in determining the issue of likelihood of confusion in ex parte cases, the Board must compare applicant’s goods as set forth in its application with the goods as set forth in the cited registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In the present case, applicant’s goods are identified as being “for premise applications,” and also for carpets which may be presumed to fall within premise applications. However, registrant’s goods are identified as “insect repellents” without limitation as to trade channels. Where the goods in the cited registration and/or application are broadly identified as to their nature and type (as is the case herein with respect to the cited registration), such that Ser Nos. 77564911 and 77584503 8 there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. Id. Accordingly, we must presume that registrant’s goods include insect repellents for all applications, including the premise applications recited by applicant. Thus, the trade channels for registrant’s goods must be presumed to include those of applicant, and this du Pont factor further favors a finding of likelihood of confusion. Similarity of the Marks We turn then to the first du Pont factor, i.e., whether applicant’s marks and registrant’s marks are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall 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). We note initially that the test under the first du Pont factor is not whether the marks can be distinguished when subjected to a side-by-side Ser Nos. 77564911 and 77584503 9 comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, applicant’s marks, NO BITE and are similar to registrant’s mark, NO BITE ZONE, in that the first and most prominent portion of registrant’s mark, i.e., “NO BITE,” is identical to applicant’s marks in sound and highly similar in appearance. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897) TTAB 1988)(“it is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”). See also Palm Bay Imports, supra, 396 F.3d 1369, 73 USPQ2d at 1692 [”Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label]. Ser Nos. 77564911 and 77584503 10 In that regard, we note that applicant’s NO BITE mark in its application Serial No. 77564911 is wholly encompassed in the cited NO BITE ZONE mark. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. See In re Denisi, 225 USPQ 624, 626 (TTAB 1985)(PERRY’S PIZZA for restaurant services specializing in pizza and PERRY’S for restaurant and bar services); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); and In re South Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)(LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing). Further, because both appear in standard characters there are no differences between the displays of the marks. See 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”); and In re Cox Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)(“We must also consider that applicant’s mark, presented in typed or standard character form, is not limited to any special form or style as displayed on its goods”). Ser Nos. 77564911 and 77584503 11 The red oval background design in the mark in application Serial No. 77584503 does little to distinguish it from registrant’s mark. It is settled that when a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Thus, the wording NO BITE remains the dominant portion of this mark, and for the reasons discussed above NO BITE is highly similar to registrant’s NO BITE ZONE mark. Viewing the marks as a whole, we find that the wording in applicant’s marks is essentially subsumed within that of registrant. As a result, applicant’s marks are highly similar in appearance, sound and connotation to registrant’s mark and thus highly similar in overall commercial impression. Consumers familiar with registrant’s mark may simply conclude that applicant’s marks are an abbreviated version thereof, perhaps adopted in conjunction with a flea and tick control and carpet insecticide product line. In other words, consumers are likely to view the marks as variations of each other, but still identifying the same source. In view of the above, the factor of the similarity of the marks weighs in favor of likelihood of confusion. Ser Nos. 77564911 and 77584503 12 Summary Neither applicant nor the examining attorney has discussed any of the remaining du Pont factors. We note, nonetheless, that none seems to be applicable, inasmuch as we have no evidence with respect to them. In light of the foregoing, we conclude that consumers familiar with registrant’s goods sold under its above- referenced mark would be likely to believe, upon encountering applicant’s goods rendered under its marks that the goods originated with or are associated with or sponsored by the same entity. Lastly, to the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusals to register application Serial Nos. 77564911 and 77584503 are affirmed.