TheZoological Society of San Diego, Inc. and Donald Borgenv.Helen Woodward Animal Center

Trademark Trial and Appeal Board

Feb 14, 2006

No. 91156728 (T.T.A.B. Feb. 14, 2006)

Mailed: February 14, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Zoological Society of San Diego, Inc. and Donald Borgen
v.
Helen Woodward Animal Center
_____

Opposition No. 91156728
to application Serial No. 78145860
filed on July 19, 2002
_____

Richard A. Clegg of Seltzer Caplan McMahon Vitek for The
Zoological Society of San Diego, Inc. and Donald Borgen.

Kristen E. Caverly of Henderson & Caverly LLP for Helen
Woodward Animal Center.
______

Before Hairston, Walters and Drost, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by the Helen Woodward
Animal Center (applicant) to register the mark CARS FOR
CRITTERS for services identified as “charitable fund
raising.”1
Registration has been opposed under Section 2(d) of the

1 Application Serial No. 78145860, filed on July 19, 2002, which
alleges a date of first use anywhere and in commerce of November
30, 2000.
THIS OPINION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91156728
2
Trademark Act by The Zoological Society of San Diego, Inc.
(Zoo) and Donald Borgen (Borgen). In support of its claim
of likelihood of confusion, the Zoo alleges that applicant’s
mark, when used in connection with applicant’s services, so
resembles the Zoo’s previously used and registered marks
CANS FOR CRITTERS for “fund raising for support of research
and educational endeavors in connection with improving the
health, wellbeing and breeding potential for near-extinct
wildlife,”2 and CELEBRATION FOR THE CRITTERS for “fund
raising services for zoological activities,”3 as to be
likely to cause confusion. In support of his claim of
likelihood of confusion, Borgen alleges that applicant’s
mark, when used in connection with applicant’s services, so
resembles Borgen’s previously used and registered mark CARS
FOR PETS for “charitable fund raising in the area of
donations of vehicles to be auctioned so that the proceeds
can be used for animal shelters in the care and adoption
placements of homeless animals,”4 as to be likely to cause
confusion.
Applicant, in its answer, denied the salient
allegations of the likelihood of confusion claims.

2 Registration No. 1,576,802 issued January 9, 1990; Sections 8
and 15 affidavits accepted and acknowledged, respectively.
3 Registration No. 2,320,780 issued February 22, 2000.
4 Registration No. 2,438,585 issued March 27, 2001.
Opposition No. 91156728
3
The record consists of the following: the pleadings;
the file of the involved application; the testimony
deposition of the Zoo’s witness Joanne Leidenberger; the
Zoo’s notices of reliance on status and title copies of its
pleaded registrations, and applicant’s responses to the
Zoo’s interrogatories and requests for admissions; the
testimony deposition of applicant’s witness Renee Resko; and
applicant’s notice of reliance on third-party registrations
of marks that include the term “CRITTER(S)”, the Zoo’s
responses to applicant’s interrogatories and requests for
admissions, and a dictionary excerpt for the term “critter.”
Briefs have been filed, but an oral hearing was not
requested.
The Parties
Joanne Leidenberger, associate director of development
for the Zoo, testified that the Zoo operates both the San
Diego Zoo and the San Diego Wild Animal Park. Ms.
Leidenberger stated that the Zoo launched the CANS FOR
CRITTERS fund raising program in 1981. The program is
focused primarily on elementary schools and scout troops.
The children (with the help of their parents) collect
aluminum cans for recycling and take them to their school or
scouting location. The collected cans are then taken to a
recycling center and redeemed for cash. Schools typically
have assemblies to kick off the CANS FOR CRITTERS program
Opposition No. 91156728
4
each year and the Zoo sometimes takes animals to the
assemblies. Students receive incentives based on the number
of cans they donate. Classrooms within a given school
compete against each other and schools compete against other
schools.
Each donor drive lasts for several months. The drive
is conducted in the San Diego area with approximately 20
schools and 250-300 scout troops participating. During each
drive, banners are hung at the participating schools, boxes
for collecting the cans are placed at or near school
entrances, and flyers are distributed to the students. All
of these materials bear the CANS FOR CRITTERS mark. At the
end of the donor drive, a check is given to the Zoo as a
donation for its Center for Reproduction of Endangered
Species. The donor drive culminates with a program at the
San Diego Zoo, with awards being presented to the top
collectors.
The children who participate in the program receive
t-shirts with the CANS FOR CRITTERS mark and various other
items (pens, rulers, etc.) that display the mark. Children
from scout troops also receive patches with the CANS FOR
CRITTERS mark. The Zoo advertises its CANS FOR CRITTERS
program in its “ZOONOOZ” publication and at its website.
The program has been featured on local television and radio
Opposition No. 91156728
5
and since its inception has generated approximately one-half
million dollars.
Insofar as the CELEBRATION FOR THE CRITTERS mark is
concerned, Ms. Leidenberger testified that the Zoo has used
this mark since 1981 in connection with an annual
fundraising event to benefit the Center for Reproduction of
Endangered Species. It is a ticketed, single event each
year, featuring food, beverages and musical entertainment
with approximately 3000 attendees. The Zoo advertises the
event at its website and in its “ZOONOOZ” publication, on
the radio, and in local newspapers. Ms. Leidenberger
testified that she was not aware of any instances of actual
confusion involving the Zoo’s and applicant’s marks.
We have no information about Borgen because he did not
take testimony or submit any other evidence in this case.
Renee Resko, applicant’s director of development,
testified that applicant’s animal center is located in San
Diego County, California. In addition to being a no-kill
animal shelter, applicant also provides other animal-related
programs, e.g., it has a “therapeutic” horseback riding
program for persons with disabilities, a pet outreach
program for people confined to institutions, and a traveling
classroom known as the “Animobile,” that goes to schools
throughout San Diego County. Applicant began using the CARS
FOR CRITTERS mark in 2000 in connection with its vehicle
Opposition No. 91156728
6
donation program. Applicant has advertised its CARS FOR
CRITTERS program at its website and in its newsletter, and
in local newspapers and the “San Diego Parent” magazine.
Since the program’s inception, it has generated
approximately $200,000. Ms. Resko, like the Zoo’s witness,
testified that she is unaware of any instances of confusion.
Standing and Priority
Because the Zoo has made of record certified copies
showing status and title of its pleaded registrations, and
because its likelihood of confusion claim is not without
merit, we find that the Zoo has established its standing to
oppose registration of applicant’s mark. See Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185 (CCPA 1982). Further, because the Zoo has made
its pleaded registrations of record, its priority is not an
issue in this case with the marks and services identified
therein. See King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
However, Borgen did not make of record a copy of his
pleaded registration; neither did Borgen take testimony or
submit any other evidence on his behalf. Having failed to
do so, we find that Borgen has no standing in this
proceeding.
Opposition No. 91156728
7
Accordingly, the only issue to be decided is whether
the Zoo has established that a likelihood of confusion
exists.
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. duPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Considering first the services of the parties, it is
the Zoo’s position that they must be considered legally
identical because the “charitable fund raising” services
identified in applicant’s application are broad enough to
encompass the specific fund raising services described in
the Zoo’s registrations.
Applicant, however, argues that the parties’ fund
raising services are different because they are directed to
Opposition No. 91156728
8
different causes; that is, the Zoo raises funds for near-
extinct wildlife and zoological activities, whereas
applicant raises funds for domestic animals. Further,
applicant argues that the Zoo’s CANS FOR CRITTERS program,
in particular, is directed to school children whereas
applicant’s CARS FOR CRITTERS program is directed to adults.
It is well settled that the issue of likelihood of
confusion in a proceeding such as this must be determined on
the basis of the identification of goods or services set
forth in opposer’s registrations vis-à-vis the
identification of services in applicant’s application,
regardless of what the evidence may show as to the specific
nature of the parties’ goods or services. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1738 (Fed. Cir. 1990); Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Because the identification of services in
applicant’s application reads “charitable fund raising,”
without any limitations as to the nature or purpose thereof,
we must presume for purposes herein that applicant uses its
mark for all types of fund raising activities, including the
types in the Zoo’s registrations, that is, for the support
of research and educational endeavors in connection with
improving the health, wellbeing and breeding potential for
near-extinct wildlife and for zoological activities.
Opposition No. 91156728
9
Further, in the absence of any limitations in
applicant’s application and the Zoo’s registrations, we must
presume for purposes herein that applicant and the Zoo
conduct their fund raising in all the usual manners and
target all the usual classes of potential donors. In other
words, for purposes of our likelihood of confusion analysis,
we must presume that the parties’ fund raising services are
identical and that the manners of fund raising (e.g., radio,
television, and newspaper advertising) and classes of
potential donors (e.g., the general public) are the same.
Turning then to the marks, we must determine whether
the Zoo’s marks and applicant’s mark, when compared in their
entireties are similar or dissimilar, in terms of sound,
appearance, connotation and commercial impression. Although
the marks must be considered in their entireties, it is well
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Furthermore, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their commercial impression that confusion as to
the source of the goods and/or services offered under the
Opposition No. 91156728
10
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). Also, we note that “when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
We compare first the Zoo’s mark CANS FOR CRITTERS and
applicant’s mark CARS FOR CRITTERS. These marks are nearly
identical in terms of appearance; the only difference being
a single letter. Further, the marks CANS FOR CRITTERS and
CARS FOR CRITTERS sound very similar, particularly in view
of the shared phrase FOR CRITTERS. In addition, we find
that the marks have a strong similarity in connotation in
that both marks connote the donation of an item “for
critters.” Accordingly, we find that the marks have similar
commercial impressions. Even though people will likely note
the difference between CANS and CARS, because the marks are
used on legally identical services, they are likely to
believe that the marks are variants of each other, and that
they identify services emanating from the same source.
Opposition No. 91156728
11
Further, we find that the Zoo’s mark CELEBRATION FOR
THE CRITTERS and applicant’s mark CARS FOR CRITTERS are
similar. Due to the shared words FOR (THE) CRITTERS, the
marks are similar in appearance and sound. Further, the
marks are similar in connotation in that both marks connote
an event/donated item “for (the) critters.” Accordingly, we
find that the marks have similar commercial impressions.
Again, even though people will likely note the difference
between a CELEBRATION and CARS, because the marks are used
on legally identical services, they are likely to believe
that these marks are variants of each other, and that they
identify services emanating from the same source. Donors
aware of the CELEBRATION FOR THE CRITTERS mark, as well as
the Zoo’s CANS FOR CRITTERS mark, who then encounter the
mark CARS FOR CRITTERS, also for charitable fund raising,
are likely to conclude that these services are associated in
some way.
Several arguments made by applicant require comment.
Applicant argues that marks consisting of or containing the
term CRITTER(S) are weak marks that are therefore entitled
to only a limited scope of protection. In support of its
argument, applicant submitted a large number of third-party
registrations of marks that include the term CRITTER(S). In
addition, applicant introduced during the testimony
deposition of its witness, Renee Resko, Internet printouts
Opposition No. 91156728
12
showing third-party uses of “Cans for Critters,” “Cash for
Critters,” and “Cans 4 Critters” in connection with
charitable fund raising.
Third-party registrations are not evidence of use of
the marks shown therein, nor are they proof that consumers
are familiar with the marks. Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1992). Moreover, a review of the third-party registrations
shows that none cover charitable fund raising services.
Third-party registrations may, however, be relied on to show
that a word common to each of the marks has a readily
understood and well-known meaning and that it has been
adopted by third parties to express that meaning. Ritz
Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1467 (TTAB
1990). In this case, they show that CRITTER(S) has a
descriptive connotation indicating “[a] domestic animal” or
“[a] living creature.” The American Heritage Dictionary of
the English Language (2d ed. 1982). However, this does not
help distinguish applicant’s mark from the Zoo’s marks. The
term CRITTERS, as used in both parties’ marks, conveys
virtually the same descriptive significance and the
additional wording in the respective marks does not change
the commercial impression of the marks. Here, applicant’s
mark CARS FOR CRITTERS is still very similar to the Zoo’s
Opposition No. 91156728
13
marks CANS FOR CRITTERS and CELEBRATION FOR THE CRITTERS in
appearance, sound, connotation and commercial impression.
Insofar as the Internet printouts are concerned, the
Board has in the past, in likelihood of confusion cases,
given weight to evidence of widespread and significant use
by third parties of marks containing elements in common with
the involved mark to demonstrate that confusion is not, in
reality, likely to occur. See, e.g., Miles Laboratories
Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445,
1462 (TTAB 1987). The justification, of course, is that the
presence in marks of common elements extensively used by
others unrelated as to source may cause purchasers not to
rely upon such elements as source indicators, but to look to
other elements as a means of distinguishing the source of
the services. In this case, however, the evidence provided
by applicant, through the testimony of Ms. Resko, is not
sufficient to show that the public has had such widespread
exposure. It consists simply of Internet printouts, and
there is no information as to the length of time or extent
of these third-party uses such that we can ascertain their
impact on the public.
Further, applicant argues that confusion is unlikely
because it and the Zoo always use their respective names in
connection with their fundraising activities and therefore
people will always know to which charity they are donating.
Opposition No. 91156728
14
It is common knowledge that many charitable contributions
are made by members of the public, who are not particularly
sophisticated. Moreover, there are many levels of
charitable contributions and levels of attention paid by
contributors to the nature of the receiving charity and what
affiliations it may or may not have. In short, we are not
persuaded by applicant’s argument that confusion is
unlikely.
In addition, applicant points out that neither it nor
the Zoo is aware of any instances of actual confusion
between their respective marks. In any event, the test is
likelihood of confusion, not actual confusion. See Weiss
Associated Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984). The fact that there is no
evidence of actual confusion does not persuade us to find
that confusion is not likely. Evidence of actual confusion
is not a prerequisite for finding likelihood of confusion.
Moreover, it is well recognized that evidence of actual
confusion is difficult to obtain. Given this, as well as
the relatively small amount of money (approximately
$200,000) applicant has generated with its vehicle donation
program and the limited time in which applicant has used its
mark, the lack of evidence of actual confusion does not show
that confusion is not likely to occur.
Opposition No. 91156728
15
Also, applicant argues that it adopted its mark in good
faith. Although an intent to deliberately trade on the mark
of another is strong evidence of a likelihood of confusion,
since it is presumed that such an intention is successful,
the converse is not true, i.e., good faith adoption does not
necessarily mean that confusion is not likely.
Finally, we note that applicant, in its brief, has
offered to amend the identification of services in its
application to “charitable fund raising, namely raising
funds through donation of vehicles, boats and RVs, for use
in promoting education regarding domestic animals and for
the care and maintenance of domestic animals.” Apart from
the fact that such an amendment should have been made prior
to trial (See TBMP Section 514.03 and cases therein), we
note that the Zoo has not consented thereto. Moreover, we
decline to accept the amendment because it would not avoid a
likelihood of confusion in this case. As we have already
found, applicant’s CARS FOR CRITTERS mark is similar to the
Zoo’s CELEBRATION FOR THE CRITTERS mark. The Zoo’s
CELEBRATION FOR THE CRITTERS mark covers fund raising
services for zoological activities. We judicially notice
that the word “zoological” is defined as “[o]f or relating
Opposition No. 91156728
16
to animals and animal life.”5 We must presume, therefore,
that the Zoo’s fund raising services are for all types of
animals and animal life, including domestic animals. Thus,
the Zoo’s fund raising services for zoological activities
offered under the mark CELEBRATION FOR THE CRITTERS would
still overlap with the services in applicant’s proposed
identification, i.e., charitable fund raising, namely
raising funds through donation of vehicles, boats and RVs,
for use in promoting education regarding domestic animals
and for the care and maintenance of domestic animals.
We conclude that persons familiar with opposer’s CANS
FOR CRITTERS mark for fund raising for support of research
and educational endeavors in connection with improving the
health, wellbeing and breeding potential for near-extinct
wildlife and/or CELEBRATION FOR THE CRITTERS mark for fund
raising services for zoological activities, would be likely
to believe, upon encountering applicant’s CARS FOR CRITTERS
mark for charitable fund raising, that such services emanate
from, or are sponsored by or affiliated with the same
source.
It is well established that one who adopts a mark
similar to the mark of another for the same or closely

5 The American Heritage Dictionary of the English Language (4th
ed. 2000).
Opposition No. 91156728
17
related goods or services does so at its own peril, and to
the extent that we have any doubt as to likelihood of
confusion, we must resolve that doubt against the newcomer
and in favor of the prior registrant. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988); and W.R. Grace & Co. v.
Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 1976).
Decision: Borgen’s opposition is dismissed; and the
Zoo’s opposition is sustained.