Kal Kan Foods, Inc.v.Hacht Sales and Marketing, Ltd.

Trademark Trial and Appeal Board

Sep 27, 1999

No. 91097609 (T.T.A.B. Sep. 27, 1999)

Oral Hearing: Paper No. 13
February 4, 1999 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 27,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Kal Kan Foods, Inc.
v.
Hacht Sales and Marketing, Ltd.
_____
Opposition No. 97,609 to application Serial No. 74/465,632
filed on December 6, 1993
_____
John A. Krause and Timothy J. Kelly of Fitzpatrick, Celia, Harper
& Scinto for Kal Kan Foods, Inc.
Mark A. Cantor & John S. Artz of Brooks & Kushman P.C. for Hacht
Sales and Marketing, Ltd.
______
Before Quinn, Hohein and Bucher, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Hacht Sales and Marketing, Ltd. has filed an
application to register the mark "PEDIGREE PARK" for "pet
supplies; namely, rawhide chews, animal leashes and collars".1
Kal Kan Foods, Inc. has opposed registration on the
ground that it "is and has been for many years a well known
manufacturer and seller of pet food and related pet products";

1 Ser. No. 74/465,632, filed on December 6, 1993, which alleges dates
of first use of July, 1984.
Opposition No. 97,609
2
that it "is the owner of numerous ... registrations for the
trademark PEDIGREE and variations thereof," including:
(1) the mark "PEDIGREE," as reproduced
below,
for "canned dog food";2
(2) the mark "PEDIGREE" for "pet food";3
(3) the mark "PEDIGREE MEALTIME" for
"dog food";4
(4) the mark "PEDIGREE" and design, as
illustrated below,
for "wall calendars sold by mail order
featuring large color photographs of various
breeds of dogs";5 and

2 Reg. No. 284,342, issued on June 23, 1931 and amended on May 28,
1996, which sets forth dates of first use of November 20, 1930; third
renewal.
3 Reg. No. 1,386,983, issued on March 18, 1986, which sets forth dates
of first use of February 28, 1985; combined affidavit §§8 and 15.
4 Reg. No. 1,521,182, issued on January 17, 1989, which sets forth
dates of first use of March 7, 1988; combined affidavit §§8 and 15.
5 Reg. No. 1,574,846, issued on January 2, 1990, which sets forth dates
of first use of October 13, 1990; affidavit §8.
Opposition No. 97,609
3
(5) the mark "PEDIGREE AWARD" and
design, as depicted below,
for "educational services; namely,
encouraging excellence among dog breeders by
compiling records of the winners of the best
of breed/variety honors at sanctioned dog
shows, and honoring those winners each year
with a special award;6
that opposer, "since a date long prior to the date on which
Applicant began using the mark which is the subject of the
instant application, and continuously to the present date, has
extensively used, promoted and advertised in interstate commerce
its PEDIGREE trademark"; that opposer’s "extensive use, promotion
and advertising has included use of the PEDIGREE trademark and
variations thereof on various goods related to dogs and dog food,
as well as on other goods related to pets and pet care"; that
"[a]s a result of this extensive use, sales, advertising and
promotion by opposer, the PEDIGREE trademark and the PEDIGREE

6 Reg. No. 1,718,960, issued on September 22, 1992, which sets forth
dates of first use of April, 1989; combined affidavit §§8 and 15. The
word "AWARD" is disclaimed.
Opposition No. 97,609
4
family of trademarks, have become exclusively associated with
Opposer"; that "the goods in connection with which Applicant uses
its mark are closely related to, travel in the same channels of
trade as, and are marketed to the same classes of consumers as
those on which Opposer has been and presently is using its
PEDIGREE trademarks"; and that, accordingly, applicant’s
"substantially similar" mark, when used in connection with
applicant’s goods, "is likely to cause consumers to be confused,
mistaken or deceived as to the source, origin or sponsorship of
Applicant’s goods, and to believe that Applicant’s goods emanate
from Opposer, or that Applicant is in some way related to
Opposer."
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. In addition, as
affirmative defenses, applicant alleges that it "is the owner of
canceled U.S. Registration No. 1,450,801 for the mark ’PEDIGREE
PARK’ for pet supplies; namely, rawhides, animal leashes and
collars"; that the parties "have used their respective marks
concurrently for at least eleven (11) years with no confusion";
that opposer "had actual and/or constructive knowledge of
Applicant’s canceled U.S. registration and its continuous use of
its ’PEDIGREE PARK’ mark and has inexcusably delayed in taking
action with respect thereto"; that "[a]s a result of Opposer’s
failure to act, Opposer has acquiesced in Applicant’s continuous
use of the mark ’PEDIGREE PARK’ for the goods identified, and is
further guilty of laches"; and that opposer "is estopped from
asserting its rights against Applicant at this time" because,
Opposition No. 97,609
5
"based upon Opposer’s inaction, Applicant relied to its detriment
and continuously used and marketed its products sold under the
mark ’PEDIGREE PARK.’"
The record includes the pleadings; the file of the
involved application; and, as part of opposer’s case-in-chief,
the testimony, with exhibits, of its external relations manager,
Alice Nathanson. Opposer, as the rest of its case-in-chief,
submitted a notice of reliance upon (i) certified copies of its
previously mentioned registrations, as well as certified copies
of registrations for the following:
(1) the mark "PEDIGREE" and design, as
shown below,
for (a) "pet food"7 and (b) "periodically
published journal pertaining to health care
of pets";8
(2) the mark "PEDIGREE" for "beds for
household pets";9 and

7 Reg. No. 1,631,808, issued on January 15, 1991, which sets forth
dates of first use of June, 1989; combined affidavit §§8 and 15.
8 Reg. No. 1,679,350, issued on March 17, 1992, which sets forth dates
of first use of March, 1989; combined affidavit §§8 and 15.
9 Reg. No. 1,709,352, issued on August 18, 1992, which sets forth dates
of first use of December 20, 1991. However, inasmuch as such
Opposition No. 97,609
6
(3) the mark "PEDIGREE EXELPET" and
design, as reproduced below,
for "toys for pets";10
which copies show, in each instance, that the registrations are
subsisting and owned by opposer,11 and (b) certified copies of
various assignment documents "reflect[ing] the assignment of U.S.
... Registration No. 284,342 to Opposer." Applicant, as part of
its case-in-chief, submitted the testimony, with exhibits, of its
president and founder, James R. Hacht.12 As the remainder of its
case-in-chief, applicant filed a notice of reliance on a
certified copy of its canceled Registration No. 1,450,801 for the
mark "PEDIGREE PARK" for "pet supplies--namely, rawhides, animal
leashes and collars" and a supplemental notice of reliance on (a)
opposer’s answers to applicant’s first set of interrogatories and
(b) a certified copy of "a transcript of a hearing dated July 25,

registration has been canceled pursuant to Section 8 of the Trademark
Act, it will not be given further consideration.
10 Reg. No. 1,917,355, issued on September 5, 1995, which sets forth
dates of first use of December 15, 1994.
11 Inasmuch as applicant, in its brief, concurs that opposer may rely
on registrations for marks which were not pleaded in the notice of
opposition as filed, the pleadings are hereby deemed to be amended to
conform to the evidence of record in accordance with Fed. R. Civ. P.
15(b). It is pointed out, however, that even if the pleadings were
not deemed to be so amended, the result in this case would still be
the same.
12 While opposer, in its main brief, has reiterated only the objections
which it raised at the deposition to applicant’s exhibits 5 through
12, such objections are plainly without any merit and are accordingly
overruled. Moreover, even if the exhibits objected to were to be
Opposition No. 97,609
7
1996, between the parties in a related lawsuit, now dismissed, on
Kal Kan’s Motion to Dismiss."13 Briefs have been filed and an
oral hearing, attended by counsel for the parties, was held.
Opposer’s priority of the marks which are the subjects
of its extant pleaded registrations is not in issue inasmuch as
the certified copies of such registrations show that the
registrations, as noted previously, are subsisting and owned by
opposer. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).14 In addition,
applicant has admitted in its brief that, "for purposes of this

excluded, their absence from the record would not change the outcome
of this case.
13 Although applicant, in its supplemental notice of reliance, also
sought to rely on its answers to opposer’s first set of
interrogatories, applicant subsequently withdrew its reliance thereon
in response to opposer’s motion to strike portions of the supplemental
notice of reliance. The Board, in its April 14, 1997 ruling on the
motion to strike, stated among other things that:
Insofar as the transcript of the hearing is concerned,
we agree that the transcript must be considered as falling
within the category of an official record, as provided for
under Trademark Rule 2.122(e), and not as testimony as would
be governed by [Trademark] Rule 2.122(f). Applicant has
failed, however, to comply with the requirements for
submitting an official record under a notice of reliance in
that the copy of the transcript which has been filed has not
been authenticated in accordance with the Federal Rules of
Evidence. Moreover, there is no statement in the notice of
reliance as to the relevance of the transcript to the
present proceeding.
Nevertheless, applicant was allowed time "to perfect its supplemental
notice of reliance by submitting a certified copy of the transcript,"
along with "a statement of its relevance," which requirements were
timely complied with by applicant. Thus, such transcript is of record
and, according to applicant, it is relevant in that counsel for
opposer "essentially admitted that there was no likelihood of
confusion between the parties[’] marks when he indicated that he had
no objection to Hacht’s use of the mark PEDIGREE PARK."
14 Thus, contrary to the assertions in applicant’s brief, this
proceeding is not subject to dismissal for failure of opposer to
establish priority of use of such marks.
Opposition No. 97,609
8
proceeding only, [it] does not contest that the parties’ goods
travel through the same channels of trade, [and] are marketed to
the same class of purchasers," although it does maintain that the
parties’ goods are otherwise unrelated. The only real issues to
be determined, therefore, are whether (i) applicant’s "PEDIGREE
PARK" mark, when used in connection with pet supplies, namely,
rawhide chews, animal leashes and collars, so resembles one or
more of opposer’s prior "PEDIGREE" and/or "PEDIGREE"-formative
marks for its pet foods and other pet products that confusion is
likely as to the source or sponsorship of the parties’ goods;15

15 Although opposer, as noted previously, has pleaded a family of
"PEDIGREE" marks and refers in its main and reply briefs to a family
of registered marks, we observe, in this regard, that as stated in J &
J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1891-92 (Fed. Cir. 1991):
A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks are
composed and used in such a way that the public associates
not only the individual marks, but the common characteristic
of the family, with the trademark owner. Simply using a
series of similar marks does not of itself establish the
existence of a family. There must be a recognition among
the purchasing public that the common characteristic is
indicative of a common origin of the goods. ....
Recognition of the family is achieved when the pattern
of usage of the common element is sufficient to be
indicative of the origin of the family. It is thus
necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.
While applicant, in its brief, has not challenged opposer’s
assertions of a family of registered "PEDIGREE" marks, it simply
cannot be said on this record that opposer has demonstrated the
existence of such a family. Nothing in the record evidences that
opposer’s marks have been promoted in a manner sufficient to create a
recognition or awareness among the purchasing public of the common
ownership thereof so that a family of marks, characterized by the term
"PEDIGREE" as its distinguishing element, in fact exists. See, e.g.,
La Maur, Inc. v. Bagwells Enterprises, Inc., 199 USPQ 601, 606 (TTAB
1978) and Polaroid Corp. v. American Screen Process Equipment Co., 166
USPQ 151, 154 (TTAB 1970). Furthermore, the mere ownership of a
Opposition No. 97,609
9
and (ii) if so, whether applicant has established its affirmative
defense of laches.16
According to the record,17 opposer is and has been a
manufacturer and distributor of pet foods and other pet products.
Since acquiring its "PEDIGREE" mark for canned dog food by
assignment from Strongheart Products, Inc. on July 16, 1985,
opposer has continuously used such mark "[s]ince about 1986" and
has expanded the use thereof into a line of pet foods and pet
products which it sells under its "PEDIGREE" and "PEDIGREE"-
formative marks. (Nathanson dep. at 11.) Specifically,
according to its witness, Ms. Nathanson, who as opposer’s

number of marks sharing a common feature, or even ownership of many
registrations therefor, is alone insufficient to demonstrate that a
family of marks exists. See, e.g., Hester Industries, Inc. v. Tyson
Foods, Inc., 2 USPQ2d 1646, 1647 (TTAB 1987); Consolidated Foods Corp.
v. Sherwood Medical Industries Inc., 177 USPQ 279, 282 (TTAB 1973);
Polaroid Corp. v. American Screen Process Equipment Co., supra; and
Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421
(CCPA 1965). Accordingly, inasmuch as opposer has not established its
assertions of a family of "PEDIGREE" marks, and since in any event it
also is obvious that opposer’s educational services are the least
related of its goods and services to applicant’s products, the issue
of likelihood of confusion must be determined by comparing applicant’s
mark for its goods with each of the marks for which opposer has
priority with respect to its various products.
16 Although applicant, as indicated earlier, pleaded a variety of
equitable defenses, it has not tried or argued in its brief any of
such defenses other than the affirmative defense of laches. In view
thereof, all of its equitable affirmative defenses are deemed to have
been waived except for laches.
17 While both the Nathanson and Hacht deposition transcripts have been
designated as confidential in their entireties, the only matters which
can be considered to be truly confidential are the dollar amounts of
sales and advertising figures disclosed therein. Plainly, for
instance, the parties’ advertisements and packaging materials have
been disseminated to the purchasing public and, like the other aspects
of the parties’ use of their respective marks, are not confidential
matters. Accordingly, and notwithstanding the fact that opposer’s
main brief discloses the actual amounts of its sales and advertising
as testified to by its witness, we have treated only the parties’
sales and advertising figures as confidential business information and
have set forth such information in this opinion in round numbers.
Opposition No. 97,609
10
external relations manager is responsible for developing and
managing its public relations, direct mail programs, media
advertising campaigns and trademark portfolio, opposer
principally sells dog food, dog snacks and dog toys. Opposer
markets such products primarily to dog owners and dog breeders.
Its various "PEDIGREE" pet foods "are sold nationally in grocery
stores, mass merchandising stores like K-Mart, Wal-Mart, club
stores, non[-]grocery stores like pet super stores, pet stores,
farm and feed stores, hardware stores, [and] drugstores." (Id.
at 13.) Opposer’s pet products, such as its "PEDIGREE EXELPET"
dog toys, are distributed "in non[-]grocery stores throughout the
country." (Id. at 53.) Opposer uses its marks on labels and
other packaging for its goods.
While opposer’s exact sales figures and advertising and
promotional expenditures are regarded as confidential, sales of
its "PEDIGREE" brand products for each of the eight years prior
to 1996 have averaged on the order of nearly half a billion
dollars per year. Annual sales have increased steadily. Its
advertising and promotional expenditures during the same eight-
year period have been steadily climbing and have averaged around
100 million dollars each year. Most of opposer’s advertising of
its "PEDIGREE" and "PEDIGREE"-formative marks, such as "PEDIGREE
MEALTIME," consists of national television commercials, print
advertisements in magazines and some radio ads, while its
promotional materials include freestanding newspaper inserts,
direct mail and point-of-sale fliers, in-store displays, coupons

Opposition No. 97,609
11
and local marketing activities such as newsletters and dog shows.
Opposer also uses its various "PEDIGREE" marks on sales brochures
which are presented to retailers of its products and, "for
several years," its "PEDIGREE" and ribbon design mark has
appeared in connection with its sponsorship of a stock racing car
"in the areas surrounding racetracks where Winston Cup Series--
NASCAR races are held." (Id. at 43.) In addition, opposer has
run an infomercial for its "PEDIGREE" puppy food, to which
189,000 people responded in 1996 to obtain literature and a free
sample of such food, and for the past eight years since 1996 has
published its Pedigree Breeder Forum magazine, which it
distributes quarterly to 30,000 dog breeders in its breeder
services program.
Opposer first heard of applicant’s "PEDIGREE PARK" mark
when, sometime subsequent to the publication thereof in the
Official Gazette on January 3, 1995, opposer’s "attorneys brought
to our attention [the fact] that an application for the mark had
been filed."18 (Id. at 68.) Opposer, until this proceeding, has
never asserted its rights in its "PEDIGREE" marks against
applicant because it claims not to have had actual knowledge of
applicant’s use of the "PEDIGREE PARK" mark. Moreover, according
to Ms. Nathanson, she has never seen applicant’s "PEDIGREE PARK"

18 However, in answer to applicant’s Interrogatory No. 5, Ms. Nathanson
indicated that "[i]n reviewing documents related to its registered
Pedigree trademark, Opposer found a reference to Pedigree Park in a
search report dated August 19, 1986" which "was set forth in the
’Common Law Library Search’ of a Thomson & Thomson search report"
requested by its attorneys, but in her testimony she was unable to
recall whether opposer knew about such in 1986 or otherwise provide
further details.
Opposition No. 97,609
12
products in the marketplace. Opposer also asserts that it "has
no record of any knowledge of the publication" in the Official
Gazette on May 12, 1987 of the application which matured on
August 4, 1987 into applicant’s now canceled Registration No.
1,450,801 for the mark "PEDIGREE PARK". (Answer to Applicant’s
Interrogatory No. 7.)
Opposer has not licensed or authorized any third
parties to use its "PEDIGREE" mark and the record does not reveal
any third-party use of marks which consist of or include the word
"PEDIGREE". In addition, opposer concedes that it is not aware
of any instances of actual confusion with respect to its
"PEDIGREE" brand products and applicant’s "PEDIGREE PARK" goods.
Opposer also acknowledges that, while it started selling dog toys
(e.g., squeaky toys, funny balls, and similar chew toys) under
its "PEDIGREE" mark in 1995, it does not sell rawhide chews for
dogs like applicant does. Instead, the chews which opposer sells
under its "PEDIGREE" mark are snack products for dogs, such as
biscuits and treats.
Applicant, which was founded by its president, James R.
Hacht, around 1980 as an importer of seasonal merchandise for
such occasions as Easter, Christmas and Halloween, subsequently
evolved, at a customer’s request for certain pet merchandise,
into a seller of pet supplies and products by the early 1980s.
The first of such products sold by applicant was a rawhide dog
chew, which applicant began offering about 1980 under the mark
"CANINE CHOICE". After selling such mark in the early 1980s,
applicant adopted and began using the mark "PEDIGREE PARK" for
Opposition No. 97,609
13
its rawhide dog chews at least as early as July, 1984. Although
applicant admits to becoming aware of opposer’s use of its
"PEDIGREE" mark by the late 1980s, Mr. Hacht was not aware of
opposer’s use of the "PEDIGREE" mark at the time applicant
adopted its "PEDIGREE PARK" mark. Applicant federally registered
such mark for "pet supplies--namely, rawhides, animal leashes and
collars," receiving Registration No. 1,450,801 on August 4, 1987.
However, due to an inadvertent failure to file an affidavit under
Section 8 of the Trademark Act, such registration was canceled.19
Applicant, despite the cancellation of its registration
for the "PEDIGREE PARK" mark, has continuously used such mark in
connection with rawhide chews for dogs and has also sold animal
leashes and collars under the mark. In fact, since 1984, Mr.
Hacht testified that the products sold by applicant under its
mark have included "[a]ll different pet supplies, rawhide chew
bones, rawhide chews in general, latex toys, rubber toys, [and]
cat toys. And more recently pork products, pig ears and pork
skin rawhides, the whole gambit of pet supplies ... [and] pet
products--collars and leads [sic]." (Hacht dep. at 20.)
Applicant markets its products "through a trade show, [and]
through representatives or direct contacts" and sells its goods
in drugstores, groceries, pet stores and mass merchandisers, such
as K-Mart. Applicant uses its mark by placing it on header cards

19 At the time the Section 8 affidavit was due, another company was
handling all bill payments, including legal fees, for applicant. Such
company, despite repeated and timely requests by applicant that its
attorneys be paid so that the Section 8 affidavit could be filed, by
the time the fee had been paid and was properly credited to
applicant’s account, its registration was canceled. At no time,
however, has applicant had any intent to abandon its subject mark.
Opposition No. 97,609
14
for the packaging of its products and on sales sheets distributed
to retailers.
Applicant distributes and sells its merchandise
nationally. Annual gross sales for the years from 1988 through
1995 of its "PEDIGREE PARK" products, although confidential, have
ranged from a high of over one and one quarter million dollars to
a low of under two hundred thousand dollars. Advertising figures
during such period, which include advertising allowances as well
as direct expenditures, have been meager, running from a high of
over ten thousand dollars to none at all in two separate years.
Applicant, however, claims that its mark has been continuously
advertised since July, 1984. Applicant does occasional media
advertising of its "PEDIGREE PARK" products by placing ads in
customers’ fliers and by giving certain of its customers a
percentage price break to use as an advertising allowance.
Like opposer, applicant is unaware of any incidents of
actual confusion with respect to the parties’ use of their
respective marks. Moreover, until this proceeding arose,
applicant had never received any objection to use of its
"PEDIGREE PARK" mark from opposer, a period spanning
approximately a dozen years. Nevertheless, Mr. Hacht essentially
conceded on cross-examination the closely related nature of dog
foods and rawhide chews, noting that the independent sales
representatives who sell its goods to retailers would typically
offer both products. Specifically, he testified that:

Opposition No. 97,609
15
Q Okay. .... Do any of the sales reps
that work with your company also work
for dog food companies?
A I’m sure they probably do.
Q Any idea what companies?
A No. That’s a guess on my part but it
would make sense that if a guy has a dog
food line he is also likely to have a
rawhide line and other things to go in
and show the same buyer ....
(Id. at 121.)
Finally, the record establishes that there has been no
detrimental reliance, or other material prejudice, experienced by
applicant as a result of opposer’s failure to sue applicant for
trademark infringement. In particular, when asked on cross-
examination if "you have any understanding that the nature of
this opposition proceeding is not that you would no longer as
Hacht Sales be able to use the name Pedigree Park, [but that] it
is strictly a question of the registration of the name Pedigree
Park" (id. at 127), Mr. Hacht replied, among other things, that:
I mean I’m not convinced - yes, I think
bottom line, I think that if they were to be
able to get away with it, yes, they would
sure try to stop me from using it, yes,
that’s what I really - I think - believe in
my heart that one step leads to another, ...
that they will keep pushing it as far as they
can. And I just think they’re out of line
because obviously ... I’ve had a registered
trademark on it. I mean you know that, they
know that. I think they’re just harassing me
and - well, I guess we’ll just let the chips
fall where they may.
(Id. at 129.)
Moreover, in a declaratory judgment action brought by
applicant against opposer during this proceeding, and in which
Opposition No. 97,609
16
applicant sought a finding of no likelihood of confusion between
the respective marks of the parties herein, such action was
dismissed on opposer’s motion as not justiciable in view of the
representation of opposer’s counsel that opposer presently had no
intention of suing applicant for trademark infringement.
Contrary to applicant’s contention that counsel for opposer
admitted that there is no likelihood of confusion, opposer’s
counsel actually told the Court that, in an attempt to settle
this opposition, opposer proposed the following covenant not to
sue:
MR. KRAUSE: Here’s what we offered him,
your Honor. We offered him this covenant in
an agreement to settle the opposition, and
counsel [for applicant] refused it and said
... it’s not broad enough. We said, well,
here’s a blank line. You fill in the rest of
the products you want to have in that
covenant, and we’ll be happy to entertain
that.
Here’s what the covenant proposed as a
settlement of the opposition:
"Kal Kan agrees not to object to Hacht
Sales’ use of the name Pedigree Park for pet
supplies; namely, rawhide chews, animal
leashes and collars ..." That’s what they
tried to register.
THE COURT: And that’s what they say in
their pleadings here.
MR. KRAUSE: And we say, "... provided
that such use corresponds to use shown in
Exhibit A," one of their own labels, "and
except that such use by Hacht shall not bear
the orange circle symbol."
So, your honor, we have agreed to let
them do exactly what they’re doing now.
Opposition No. 97,609
17
(Transcript of Hearing on Motion to Dismiss, Case No. 96-71525,
held in the United States District Court for the Eastern District
of Michigan, Southern Division, on July 25, 1996, at 10-11.)
Applicant’s counsel, however, advised the Court that
applicant did not desire to limit either the format in which it
would use its "PEDIGREE PARK" mark or the particular goods in
connection with which the mark could be used. Applicant’s
counsel also reiterated his belief that "my client, in the
position, they’re in, has a reasonable apprehension that if they
continue using Pedigree Park, at some point, they’re going to be
charged in an infringement case by Kal Kan". (Id. at 13.) The
Court noted and opposer’s counsel confirmed, however, that:
THE COURT: Well, Kal Kan’s already said
until, at least, the trademark and patent
office makes their ruling, they have no
intention of filing a lawsuit or taking any
other kind of legal action until they’ve
moved it over there; is that correct?
MR: KRAUSE: That’s correct, your Honor.
Based on what they’re doing now, that’s
absolutely correct. We have no intention of
suing them.
(Id. at 13.) The Court consequently dismissed the declaratory
judgment action for lack of an actual controversy, stating that:
THE COURT: Okay. In this matter ... I
just don’t think it’s ripe for the Court at
this point, that there is a good, adequate
remedy that’s probably much better than this
Court to decide the controversy, and there’s
no actual controversy in terms of lawsuits,
in terms of intimidation and so forth.
I understand ... there’s a lot to be
lost by the plaintiffs in this particular
matter, but I think that in terms of being
here, certainly, it belongs in the patent and
Opposition No. 97,609
18
trademark office and not here, and,
therefore, the Court will grant the motion.
Turning first to the issue of likelihood of confusion,
we find upon consideration of the pertinent factors set forth in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), that confusion as to source or affiliation
is likely to occur. As a starting point, it is plain that
applicant’s pet supplies, namely, rawhide chews, animal leashes
and collars, are closely related to opposer’s pet foods and other
pet products such as toys. The record establishes, as applicant
has conceded, that the parties’ pet supplies and products travel
through the same channels of trade, such as grocery stores, mass
merchandising stores like K-Mart, pet stores and drugstores, and
are marketed to the same class of purchasers, namely, ordinary
consumers. Moreover, the parties’ goods are relatively
inexpensive, impulse-type items which would usually be purchased
without the need for deliberation or careful attention. Clearly,
if such pet products were to be sold under identical or similar
marks, confusion as to the origin or affiliation thereof would be
likely to occur.
Applicant contends, however, that confusion is not
likely because its "PEDIGREE PARK mark is dissimilar in sound
from Opposer’s mark PEDIGREE." Specifically, applicant asserts
that its mark is two words while opposer’s "PEDIGREE" mark is
only one word and that, while both marks contain the same first
word, "the more dominant portion of Applicant’s mark is the word
PARK." We agree with opposer, however, that when considered in
Opposition No. 97,609
19
their entireties, the applicant’s "PEDIGREE PARK" mark is
substantially similar, in both sound and appearance, to each of
opposer’s "PEDIGREE" and "PEDIGREE"-formative marks. In
particular, we concur with opposer that "[t]he presence of the
’Park’ portion of Applicant’s mark is not sufficient to
distinguish the marks and avoid a likelihood of confusion". In
each instance, the word "PEDIGREE" is either the sole or dominant
portion of opposer’s marks, inasmuch as it would be utilized by
consumers in looking or asking for opposer’s goods, and such word
is also the dominant feature of applicant’s mark, since it is the
first and thus most significant portion thereof. Here, as
opposer persuasively points out, applicant "has appropriated the
entire source-identifying aspect of Opposer’s registered
trademarks," and, we find, the overall commercial impression
engendered by each of the parties’ marks is substantially
identical, notwithstanding the presence of the word "PARK" in
applicant’s mark. Consequently, the contemporaneous use of the
respective marks in connection with the parties’ closely related
goods would be likely to cause confusion as to the source or
sponsorship of their pet supplies and products.
Our conclusion in this regard is strengthened by the
fact that no other entities in the pet food and pet supplies
field utilize a mark which consists of or includes the term
"PEDIGREE". In addition, the evidence of sales and advertising
in the record supports, and counsel for applicant conceded at the
oral hearing, that opposer’s "PEDIGREE" marks are famous for dog
food. As such, opposer’s "PEDIGREE" dog food marks are strong
Opposition No. 97,609
20
marks which are entitled to a correspondingly broad scope of
protection from imitation. See Kenner Parker Toys Inc. v. Rose
Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992), cert. denied, 506 U.S. 862, 113 S.Ct. 181 (1992)
["The fifth duPont factor, fame of the prior mark, plays a
dominant role in cases featuring a famous or strong mark. Famous
or strong marks enjoy a wide latitude of legal protection"].
Moreover, even if opposer’s "PEDIGREE" marks and formatives
thereof are not regarded as famous, the record demonstrates that
opposer has had substantial nationwide sales of pet foods and
other pet products under such marks and has expended appreciable
amounts on advertising and promoting its marks over an extended
period of time. In view thereof, opposer’s "PEDIGREE" and
"PEDIGREE"-formative marks must, at a minimum, be considered to
be relatively well known marks which, having achieved a
substantial measure of strength and recognition as indicia of
source and quality for its goods, are therefore entitled to a
broad ambit of protection.
Finally, the fact that neither party is aware of any
instances of actual confusion does not undercut our conclusion
that ordinary consumers could reasonably believe, for example,
that applicant’s rawhide chews, animal leashes and collars, when
sold under its "PEDIGREE PARK" mark, are part of a new or
expanded line of pet supplies emanating from or sponsored by the
same entity which markets pet food and other pet products under
the "PEDIGREE" and "PEDIGREE"-formative marks. Although both
parties presented testimony that they have enjoyed nationwide
Opposition No. 97,609
21
sales of their respective goods, the record fails to reveal that
the volume of applicant’s sales, when considered along with its
meager advertising and promotional expenditures, has been so
extensive that, if confusion were likely, it would be expected to
have occurred. The lack of any incidents of actual confusion is
also not dispositive inasmuch as evidence thereof is notoriously
difficult to come by, particularly in the case of inexpensive
products,20 and in any event the test under Section 2(d) of the
Trademark Act is likelihood of confusion rather than actual
confusion. See, e.g., Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992) and cases cited therein.
This accordingly brings us to consideration of
applicant’s affirmative defense of laches.21 While neither party
has cited or otherwise discussed the following case, which was
not decided until eleven days after opposer filed its initial
brief, the Board in Aquion Partners L.P. v. Envirogard Products
Ltd., 43 USPQ2d 1371, 1373 (TTAB 1997), stated with respect to
the defense of laches that:
A prima facie defense of laches requires
a showing of (1) unreasonable delay in
asserting one’s rights against another, and
(2) material prejudice to the latter as a
result of the delay. Lincoln Logs Ltd. v.
Lincoln Pre-cut Log Homes, Inc., 971 F.2d
732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992).
In the context of a trademark opposition or
cancellation proceeding, this defense must be

20 See, e.g., Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618, 1623 (TTAB 1989).
21 Although not explicitly referred to as such in applicant’s brief,
applicant has repeatedly argued the facts constituting the defense in
its brief and, thus, we do not consider the defense to have been
waived.
Opposition No. 97,609
22
tied to a party’s registration of a mark
rather than to its use of the mark. National
Cable Television [Association, Inc. v.
American Cinema Editors, Inc., 937 F.2d 1572,
1580, 19 USPQ2d 1424, 1431 (Fed. Cir. 1991)]
... at 1432. The burden of proof is on the
party that raises the affirmative defense.
Although the burden of coming forward with
exculpatory evidence may shift to the other
party, the ultimate burden of proof does not
change. A.C. Aukerman Co. v. R.L. Chaides
Construction Co., 960 F.2d 1020, 1028, 22
USPQ2d 1321, 1333 (Fed. Cir. 1992) (en banc).
.... The mere passage of time does not
constitute laches. Advanced Cardiovascular
Systems v. SciMed Life Systems, 988 F.2d
1157, 26 USPQ2d 1038, 1041 (Fed. Cir. 1993).
With respect to the element of the period of delay, the
Board in Aquion Partners specifically noted that (footnotes
omitted):
As indicated in National Cable
Television, 19 USPQ2d at 1432, "laches begins
to run from the time action could be taken
against the acquisition by another of a set
of rights to which objection is later made."
In an opposition or cancellation proceeding,
where the objection is to the issuance of a
registration of a mark, laches starts to run
when the mark in question is published for
opposition. National Cable Television,
supra. Inasmuch as opposer has acted at its
first opportunity to object to registration
of applicant’s current RAINFRESH mark,
applicant might appear, at first blush, to
have no basis for a laches defense against
opposer respecting the application in issue.
However, under certain circumstances, a
laches defense in an opposition proceeding
may be based upon opposer’s failure to object
to an applicant’s earlier registration of
[the same or] substantially the same mark for
[the same or] substantially the same goods.
See, Lincoln Logs, 23 USPQ2d at 1703, citing
Copperweld Corp. v. Astralloy-Vulcan Corp.,
196 USPQ 585, 591 (TTAB 1971).
In the present case, we do not see any
inequity in allowing applicant to assert, and
attempt to prove, the defense of laches. The
Opposition No. 97,609
23
mark applicant now seeks to register was,
according to applicant’s pleading and ...
evidence, the subject of a prior registration
which existed from 1971 until 1991, when it
expired due to applicant’s inadvertent
failure to renew it. The important point is
that the mark applicant now seeks to register
was published for opposition in 1971 and
thereafter was registered for 20 years
without objections from opposer.
Id.
As to the additional element of material prejudice
which is required to establish laches, the Board in Aquion
Partners further pointed out that:
As noted above, mere delay in asserting
a trademark right does not constitute laches.
Rather, a party asserting laches must show
not only unreasonable delay but also
circumstances compelling enough to give rise
to an estoppel, that is, that the party
asserting the defense has relied upon the
delay to its detriment. Charrette Corp. v.
Bowater Communication Papers Inc., 13 USPQ2d
2040, 2043 (TTAB 1989); Weyerhauser Co. v.
Temporaries Inc., 222 USPQ 250, 252 (TTAB
1984); and Burroughs Wellcome Co. v. Warner-
Lambert Co., 203 USPQ 201, 209 (TTAB 1979).
Here, the only evidence offered by
applicant which bears on the issue of
material prejudice is the declaration of its
president, which attests, inter alia, to
applicant’s own use of its mark since 1980,
and furnishes applicant’s sales figures under
the mark from 1980 to 1995. An examination
of the sales figures shows that applicant’s
annual sales for each of the years from 1984
to 1995 were roughly half the amount of its
annual sales for each of the years 1981,
1982, and 1983. This evidence, without more,
is insufficient to show ... whether applicant
has been materially prejudiced by opposer’s
delay (if unreasonable delay is established)
in objecting to registration of the mark
RAINFRESH and design by applicant.
Id. at 1374.
Opposition No. 97,609
24
In the present case, even assuming that opposer’s
failure to object to the earlier application by applicant which
matured into its now canceled registration for the same mark for
the same goods during the life of such registration constitutes
an unreasonable delay in asserting opposer’s rights, applicant
has failed to demonstrate that it has detrimentally relied or
otherwise suffered material prejudice as the result of such
delay. To the contrary, the record reflects that applicant fully
expects opposer to continue to assert its rights in its
"PEDIGREE" and "PEDIGREE"-formative marks and there has been no
showing that applicant has altered its business activities, or
that its sales and/or advertising have been detrimentally
affected, as a result of opposer’s asserted delay. In
consequence thereof, applicant has failed to establish its
affirmative defense of laches.
Decision: The opposition is sustained and registration
to applicant is refused.
T. J. Quinn
G. D. Hohein
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board