Treats Unleashed, Inc.v.Treats Unleashed, Inc.

Trademark Trial and Appeal Board

Dec 26, 2007

No. 92044770 (T.T.A.B. Dec. 26, 2007)

Mailed: December 26, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Treats Unleashed, Inc.
v.
Treats Unleashed, Inc.
_______

Cancellation No. 92044770
to Registration No. 2810061
issued on February 3, 2004
_______

Alpa V. Patel of Hiscock & Barclay for petitioner, Treats
Unleashed, Inc.

Annette P. Heller of Heller & Associates for respondent,
Treats Unleashed, Inc.
_______

Before Quinn, Walters and Bucher, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Treats Unleashed, Inc.1 (“petitioner”) filed its
petition to cancel the registration of Treats Unleashed,
Inc.2 (“respondent”) for the mark shown below for “retail
store services featuring pet food and gift products such as
tote bags, frames, stationery and jars; on-line retail store

1 A New York corporation.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92044770
2
services featuring pet food and gift products such as tote
bags, frames, stationery and jars,” in International Class
35.3 The registration includes a disclaimer of the
exclusive right to use "TREATS" and "BAKERY AND BOUTIQUE"
apart from the mark as shown.

As grounds for the petition, petitioner asserts that
respondent’s mark, when used in connection with respondent’s
services so resembles petitioner’s previously used mark
TREATS UNLEASHED for “retail store services and online
retail services promoting and selling pet supplies,
including pet foods, pet conditioning, handling and training
products, and a variety of gift products” (petition ¶2) as
to be likely to cause confusion, under Section 2(d) of the
Trademark Act.
Respondent, in its answer, denied the salient
allegations of the claim.
The Record
The record consists of the pleadings; the file of the
involved registration; the testimony deposition by

2 A Missouri corporation.
Cancellation No. 92044770
3
petitioner of Ann McClain, petitioner’s president and owner,
with accompanying exhibits; and petitioner’s notice of
reliance on printed publications that are also exhibits to
Ms. McClain’s testimony. Respondent filed no testimony or
other evidence. Both parties filed briefs on the case.
Findings of Fact
Petitioner incorporated as Treats Unlimited, Inc. in
May 1998 and opened its retail store selling pet products
and related items on December 18, 1998, in the Buffalo, New
York area. Petitioner’s first advertising and sales outside
of New York State were in 1999. In 2000, petitioner
established its website, located at www.treatsunlimited.com.
Respondent’s website is www.treats-unlimited.com.
Petitioner’s retail services have been continuous to at
least the time of trial. The products petitioner sells
include dog biscuits manufactured by petitioner, gifts for
people and pets, pet accessories, nationally-branded foods,
supplements and treats for pets; and tote bags, frames and
stationery.
In 1998, petitioner began advertising in local area
newspapers and, in 1999, in telephone books. Over the years
since 1998, petitioner’s advertising and promotions have
included at various times local newspaper advertising, local
phone book advertising, advertising at local colleges and

3 Registration No. 2810061, issued February 3, 2004, from an application
Cancellation No. 92044770
4
universities, attendance and booths at two to four
nationally attended dog shows per year, distribution of
business cards and fliers, and, recently, local advertising
on television. Petitioner has always used the mark TREATS
UNLIMITED in its advertising and on its website. At some
point after the launch of its website in 2000, petitioner
also began using a design mark incorporating TREATS
UNLIMITED on its website and in its advertising.
Petitioner’s sales are primarily to customers from the
local area, defined by petitioner’s president, Ann McClain,
as the Buffalo area, Ft. Erie, Niagara Falls and the closer
areas of Canada. However, petitioner receives orders by
phone or email from purchasers outside the local area and
outside New York State, including from Ohio, Michigan,
Pennsylvania, Virginia and West Virginia; and ships orders
to other states at least once or twice a week. These out-
of-state customers include people who visited petitioner’s
website, former local residents, acquaintances of
petitioner’s president, and people who met petitioner’s
president or visited petitioner’s booth at dog shows.
Petitioner has shipped or delivered products to customers in
other states since at least 1999. Petitioner uses its mark
in all advertising, invoices, business cards and on
packaging for its shipped goods.

filed November 5, 2002.
Cancellation No. 92044770
5
Since at least November, 2002, petitioner has
periodically received emails from consumers and vendors that
were clearly intended for respondent, as well as orders from
vendors that were clearly intended for respondent.
Parties’ Arguments
Petitioner contends that its mark is inherently
distinctive; that it has priority; that the distinctive
element of respondent’s mark is identical to petitioner’s
word mark and that the design element and font used in
respondent’s mark are very similar to petitioner’s design
mark; that the parties offer the same services; and that
actual confusion has occurred and has been ongoing since
respondent began its business. Petitioner also contends
that the trade channels and types of advertising for the
parties services are identical, noting that their web
addresses differ by only one character; that the products
both parties sell are relatively inexpensive and are
purchased without substantial consideration.
Respondent contends that due to the local nature of the
parties’ businesses, confusion is unlikely, especially in
view of the fact that consumers cannot purchase goods from
petitioner’s website and petitioner’s mark is not famous.
Respondent also contends that the evidence of misdirected
emails and vendor shipments demonstrates typographical or
human errors rather than actual trademark confusion.
Cancellation No. 92044770
6
Petitioner makes the following statements in its brief (pp.
9 and 5 respectively):
Although the marks are similar in appearance and
sound, and both marks are used in association with
similar services, there have been no verifiable
instances of actual confusion due to petitioner’s
limited and purely local use of its non-famous
mark over the past nine years.
. . .
Although there is no question that petitioner
received emails that were clearly intended for
[respondent], to characterize these consumers and
vendors as being confused is wholly without merit.

Analysis
In a cancellation proceeding, “a presumption of
validity attaches to a service mark registration, and the
party seeking cancellation must rebut this presumption by a
preponderance of the evidence.” West Florida Seafood Inc.
v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660, 1662
(Fed. Cir. 1994). See also Cerveceria Centroamericana S.A.
v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307,
1309 (Fed. Cir. 1989) ("[I]n a [trademark registration]
cancellation for abandonment, as for any other ground, the
petitioner bears the burden of proof. Moreover, the
petitioner's burden is to establish the case for
cancellation by a preponderance of the evidence"). As
discussed below, we hold that petitioner has met its burden.
Regarding its standing, because petitioner has properly
submitted evidence of its use of the mark TREATS UNLEASHED
in connection with retail and online services offering pet
Cancellation No. 92044770
7
products and gifts, and because petitioner’s likelihood of
confusion claim is not frivolous, we find that petitioner
has established its standing in this cancellation
proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
In order to establish its priority, petitioner must
first establish that its mark is inherently distinctive or
that it has acquired distinctiveness. If the latter, our
determination of priority is based on the date petitioner’s
pleaded mark acquired distinctiveness. Petitioner must
establish its priority by a preponderance of the evidence.
See Otto Roth & Co. v. Universal Foods Corp., supra.
We agree with petitioner that its mark TREATS UNLEASHED
is inherently distinctive and respondent does not contend
otherwise. In fact, respondent’s registration is on the
Principal Register and this portion of its mark is neither
disclaimed nor the subject of a claim under Section 2(f) of
the Trademark Act.
Regarding priority, the earliest date upon which
respondent can rely on this record is the filing date of its
underlying application, i.e., November 5, 2002. Petitioner
has established that it began using its mark in connection
with its noted retail services as early as December 18,
Cancellation No. 92044770
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1998, long before respondent’s application filing date.
Clearly, petitioner has established its priority.
Respondent’s arguments alleging that petitioner has not
engaged in selling its services beyond New York state and
that the parties operate in different regions of the country
are not only unsupported by the facts, but are legally
irrelevant to the issue of priority herein. First, a
petitioner is not required to use its mark in interstate
commerce in order to establish priority of use in a
cancellation proceeding. Second, respondent’s registration
is not geographically restricted and, thus, extends to the
entire United States.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Cancellation No. 92044770
9
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. In addition,
actual confusion is a relevant factor that we consider in
this case.
With respect to the services of the parties, we observe
that there is a substantial overlap in the services
identified in the subject registration and in connection
with which the mark is used by petitioner. Both parties
offer retail services through a bricks-and-mortar store
selling pet supplies and related products and gifts.
Respondent notes that prospective customers can actually
purchase items from its website, but they cannot do so from
petitioner’s website. However, this is an immaterial
distinction. Petitioner has established that it obtains
customers through its website who telephone or email their
orders to petitioner. Each party has a retail store and a
website through which they offer pet products and related
items. The evidence establishes that the parties even have
some of the same vendors. In other words, their services
are essentially identical.
Cancellation No. 92044770
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There is no evidence indicating any limitations as to
channels of trade (except that both have a retail store and
website through which their goods are offered) or classes of
purchasers. From the evidence of petitioner’s use and the
scope of respondent’s identification of goods, it is clear
that the parties’ channels of trade are the same, as are the
class of purchasers, i.e., the general consumer.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, 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.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
While petitioner has stated in its brief that it uses a
design mark in addition to its word mark, we focus herein on
the pleaded word mark, TREATS UNLEASHED. Considering
respondent’s design mark, we note that the fonts used are of
minimal design significance and the phrase TREATS UNLEASHED
is by far the central and predominant portion of the mark.
TREATS UNLEASHED is significantly larger than the other
wording and it is underlined. GOURMUTT BAKERY AND BOUTIQUE
Cancellation No. 92044770
11
appears in small letters below TREATS UNLEASHED and consists
of the descriptive and disclaimed wording BAKERY AND
BOUTIQUE. TREATS UNLEASHED is further emphasized in
respondent’s mark by the fact that the dog design is leaning
on the “T” in TREATS. While TREATS is descriptive of at
least some of the products offered by both parties, the
unitary phrase TREATS UNLEASHED is the dominant portion of
respondent’s mark and it is identical to petitioner’s mark
in its entirety. We find that the parties’ marks are
substantially similar in sight, sound, connotation and
overall commercial impression.
In conclusion, in view of the substantial similarity in
the commercial impressions of respondent’s mark and
registrant’s mark, their contemporaneous use on the
essentially identical services involved in this case is
likely to cause confusion as to the source or sponsorship of
such services.
Decision: The petition to cancel is granted.