Positioning Animals Worldwide, Inc.

Trademark Trial and Appeal BoardMay 17, 2012

No. 77689868 (T.T.A.B. May. 17, 2012)

Mailed: May 17, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Positioning Animals Worldwide, Inc. ________ Serial No. 77689692 Serial No. 77689868 _______ T. Robert Rhem, Jr. of Smith, Anderson, Blount, Dorsett, Mitchell & Jernigan, L.L.P. Hanno Rittner, Trademark Examining Attorney, Law Office 117 (James Brett Golden, Managing Attorney). _______ Before Taylor, Bergsman and Shaw, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Positioning Animals Worldwide, Inc. (“applicant”) filed intent-to-use applications to register the mark SPOTLIGHT, in standard character form (Serial No. 77689692), and SpotLight and design, shown below (Serial No. 77689868), THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77689692 Serial No. 77689868 2 both for the following goods and services: Electronic devices for animal locating and tracking programmed to use global positioning systems, in Class 9; and Tracking, locating and monitoring services for locating pets and service animals for recovery, in Class 45. The Trademark Examining Attorney refused to register applicant’s marks under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s marks are likely to cause confusion with the previously registered mark SPOTLIGHT, in typed drawing form, for “pet leashes,” in Class 18.1 Because the issue on appeal shares common questions of fact and law, we have consolidated the appeals. Reference to the record in this decision is to application Serial No. 77689868 unless otherwise indicated.2 Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1 Registration No. 2064006, issued May 20, 1997; renewed. 2 Although the Board denied applicant’s motion to reopen the time to file a reply brief in application Serial No. 77689692, we have considered the reply brief filed in application Serial No. 77689868. Moreover, as indicated below, we decide cases on the probative facts in evidence. Serial No. 77689692 Serial No. 77689868 3 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side Serial No. 77689692 Serial No. 77689868 4 comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In making this determination, we must consider the recollection of the average purchaser who normally retains only a general, rather than a specific, impression of the marks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the average purchaser is a pet owner and/or owner of a service animal. Registrant’s mark SPOTLIGHT, in typed drawing form, and applicant’s mark SPOTLIGHT, in standard character form, are identical. With respect to applicant’s mark SpotLight and design, the term SpotLight is the dominant element. While marks must be compared in their entireties, it is not improper to accord more or less weight to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). In the case of marks consisting of words and a design, the words are normally given greater Serial No. 77689692 Serial No. 77689868 5 weight because they would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). Thus, the term SpotLight is the dominant portion of applicant’s mark. There is no legal difference between registrant’s mark SPOTLIGHT, in typed drawing form, and the word portion of applicant’s mark SpotLight because registrant’s mark is in typed drawing form and, therefore, it may be presented in any format, font or size (e.g., SpotLight, Spot Light or SPOT LIGHT, etc.). In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). The marks have the same meaning and engender the same commercial impression. A “spotlight” is a “strong, focused light thrown upon a particular spot, as on a small area of a stage or in a television studio, for making some object, person or group especially conspicuous … to make conspicuous: call attention to.”3 The commercial 3 The Random House Dictionary of the English Language (Unabridged), p. 1845 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77689692 Serial No. 77689868 6 impression engendered by both marks is to make one’s pet (e.g., dog) conspicuous (i.e., a light on “Spot”). Applicant argues that the registrant’s pet leashes are, in fact, pet leashes with a spotlight and, therefore, registrant’s mark is inherently weak and should be accorded only a narrow scope of protection. Even if this is true, it does not negate the fact that SPOTLIGHT and SpotLight are virtually indistinguishable. In any event, even if we were to find, based on applicant’s evidence, that registrant’s mark is weak and entitled to a narrow scope of protection, that scope of protection is still broad enough to prevent the registration of a very similar mark for related goods. See In re Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971). In view of the foregoing, we find that the marks are similar in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the services described in the application and goods described in the registration, likely-to-continue trade channels and classes of consumers. Applicant has applied to register its SPOTLIGHT marks for pet tracking devices and locating services. The SPOTLIGHT mark in the cited registration is for “pet leashes.” Serial No. 77689692 Serial No. 77689868 7 It is not necessary that the respective goods and services be identical or even competitive in order to find that they are related for purposes of the likelihood of confusion analysis. The issue is not whether consumers would confuse the goods and services, but rather whether consumers would be confused as to the source of the goods and services. See In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The goods and services need only be sufficiently related that consumers would be likely to assume, upon encountering the goods and services under similar marks, that the goods and services originate from, are sponsored or authorized by, or are otherwise connected to the same source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this regard, the greater the degree of similarity between the marks, the less similarity between the goods and/or services is required to support a finding of likelihood of confusion. Where as here, the marks are virtually identical, there need be only a viable relationship between the goods and services to find that a likelihood of confusion exists. In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Serial No. 77689692 Serial No. 77689868 8 International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). With that premise in mind, we note that because applicant’s goods and services are on their face different from registrant’s pet leashes, it is incumbent upon the examining attorney to show that the goods and services of applicant and registrant are related. Autac Inc. v. Walco Systems, Inc., 195 USPQ 11, 15 (TTAB 1977). The evidence is summarized below. Applicant’s “electronic devices for animal locating and tracking programmed to use global positioning systems” is a “gps locator collar”4 “with an LED beacon visible from over 100 yards”5 used in conjunction with “‘24/7’ recovery assistance if the pet ever gets lost.”6 The TechBlips website refers to applicant’s SpotLight device and service as “GPS Pet Locator, GPS Dog Collar, GPS Pet Tracker.”7 That applicant’s GPS device is associated with a pet locator service is not unique. The examining attorney submitted two examples, listed below, of competitive GPS dog collars associated with location services: 4 June 8, 2009 Office action (pawsgps.com). 5 June 8, 2009 Office action (news.prnewswire.com). 6 Id. 7 June 8, 2009 Office Action (techblips.dailyradar.com). Serial No. 77689692 Serial No. 77689868 9 1. The Zoombak GPS Dog Protection Systems includes a GPS dog collar and a service plan providing “unlimited on- demand location requests via the internet, cell phone and Customer Care” and “unlimited continuous tracking via the web and Customer Care”;8 and 2. DogTracs “uses the latest GPS and wireless technology combined with an easy to use WebBased Control Center” to “notify you if your dog gets out and help you find him before he is lost.”9 Registrant’s pet leash is a retractable leash with a flashlight.10 The evidence identified below shows that leashes and GPS collars are sold by the same source or in the same channels of trade. 1. The LoveMyPetsgps.com website advertises the sale that company’s Love My Pets GPS dog collars, leashes and harnesses;11 2. The Dog-Spoiling-Made-Easy.com website posted “Dog Collars, Leashes and Harnesses A Guide,” an article regarding types of dog collars, including GPS collars, and dog leashes;12 and 8 June 8, 2009 Office action (healthypets.com). 9 July 28, 2010 Office action (DogTracs.com). 10 June 8, 2009 Office action (a1petsupply.com). 11 July 28, 2010 Office action. 12 June 8, 2009 Office action. Serial No. 77689692 Serial No. 77689868 10 3. The HealthyPets.com, Jeep.Maguireclan.net, RuffAroundTheHedges.com websites advertise the sale of a wide variety of pet products, including GPS dog protection systems, collars, and leashes.13 In analyzing the goods at issue, leashes and GPS devices, we find that they are complementary products because the GPS devices may be dog collars and dog collars and leashes are used together. Because GPS pet location devices are associated with pet locating systems, the services may also be associated with other pet supplies such as leashes. In addition, we find that the evidence is sufficient to show that the consumers for GPS dog collars, associated locator services, and leashes may be the same and that these products and services may be encountered under circumstances that could give rise to the mistaken belief that gps devices, leashes, and pet locator services identified by similar marks originate from or are in some way associated with the same source. In view of the foregoing, we find that the goods and services are related, 13 June 8, 2009 and July 28, 2010 Office actions. The RetailMeNot.com website in the July 28, 2010 Office action is a foreign website (U.K.) that advertises the sale of INNER WOLF brand pet products including, gps collars and leashes. Because it has a “.com” URL, it may be encountered by U.S. consumers. Serial No. 77689692 Serial No. 77689868 11 they move in the same channels of trade and are sold to the same classes of consumers. C. Balancing the factors. After considering all of the relevant du Pont factors, as discussed above, we find that applicant’s marks SPOTLIGHT and SpotLight and design for pet tracking devices and locating services are likely to cause confusion with the mark SPOTLIGHT for “pet leashes.” Decision: The refusal to register is affirmed.