United Industries Corporationv.OMS Investments, Inc.

Trademark Trial and Appeal Board

Sep 30, 2010

No. 91158240 (T.T.A.B. Sep. 30, 2010)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: September 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

United Industries Corporation

v.

OMS Investments, Inc.
_______

Opposition No. 91158240
to Application No. 76477706
filed December 23, 2002
_______

Oral Hearing: February 3, 2010
_______

Mark Sableman, Thompson Coburn LLP, for opposer.

Shari Mulrooney Wollman, Manatt, Phelps & Phillips, LLP, for
applicant.
_______

Before Cataldo, Mermelstein, and Ritchie, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant OMS Investments, Inc. seeks registration of
the mark ANT-STOP (in typed form) for “pesticides for
domestic use,” in International Class 5.1
Opposer United Industries Corporation, filed an
opposition to registration, alleging that applicant’s mark
“comprises a mark which so resembles marks registered in the

1 Based on the allegation of a bona fide intent to use the mark
in commerce, pursuant to Trademark Act § 1(b); 15 U.S.C.
§ 1051(b).
Opposition No. 91158240
2
United States Patent and Trademark Office by Opposer, as to
be likely when applied to the goods of Applicant, to cause
confusion, mistake or deception,” pursuant to Trademark Act
§ 2(d); 15 U.S.C. § 1052(d). By its answer, applicant
denied the salient allegations of the notice of opposition.2
We sustain the opposition.
I. Background and Issues
A. Background
Despite the very large record generated by this
proceeding, we find little controversy as to the factual
history of this dispute (as opposed to the interpretation of
it). The parties are in the business of selling consumer
household, lawn, and garden products, specifically as
relevant to this case, chemicals used for the control of
insects and other pests. Opp. Br. at 8-9; App. Br. at 13.
On March 2, 1993, Registration No. 1756016 issued to
applicant’s predecessor in interest for the mark ANT-STOP
(typed mark) as used on “pesticide for control and
eradication of household and garden pets.” On July 20,
1999, the USPTO accepted applicant’s affidavit of continuing

2 Applicant raised three “affirmative defenses” in its answer,
Answer ¶¶ 8-10, none of which is actually an affirmative defense.
All three are essentially denials of a likelihood of confusion,
an issue for which the plaintiff bears the burden of proof. See,
e.g., H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1718, n.2
(TTAB 2008); Order of Sons of Italy in Am. v. Profumi Fratelli
Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995). The assertion in
¶ 9 of applicant’s answer is discussed more specifically below.
See n.11, infra, and accompanying text.
Opposition No. 91158240
3
use, pursuant to Trademark Act § 8, and acknowledged the
filing of applicant’s declaration of “incontestability,”
pursuant to Trademark Act § 15. Nonetheless, applicant did
not timely file for renewal of its registration pursuant to
Trademark Act § 9 (or file its 10-year Trademark Act § 8
affidavit), and on December 6, 2003, applicant’s ‘016
Registration was deemed expired under § 9 and cancelled
under § 8 (for the sake of brevity, we refer to it simply as
“expired”).
On December 23, 2002, prior to the cancellation of
applicant’s ‘016 Registration (but within the time permitted
to file for renewal of that registration), applicant filed a
new application for registration, Serial No. 76477706, the
subject of this proceeding. The subject application is for
the mark ANT-STOP, for use on “pesticides for domestic use,”
and is based on applicant’s stated intent to use the mark in
commerce, pursuant to Trademark Act § 1(b), 15 U.S.C.
§ 1051(b).
At the time applicant’s now-expired ‘016 Registration
was issued, opposer’s predecessor in interest had already
owned Registration No. 1196097 (WEED STOP) for nearly eleven
years. That Registration issued in 1982, for the mark WEED
STOP (typed mark), as used on “weed preventer.” During the
time applicant’s ANT-STOP mark was registered, and after its
expiration, opposer applied for and was granted several more
Opposition No. 91158240
4
registrations, including those for BUG STOP (typed mark) for
“insect repellent, insecticide and pesticide for
domestic/household use,” issued in 1999; MOLE STOP (and
design) for “rodent repellents and rodenticides for domestic
household lawn and garden use,” issued in 2001; and GRUB
STOP (typed mark) for “insecticide for application to
household lawn and garden,” issued in 2004.
There is little dispute as to the foregoing facts. On
the other hand, the parties disagree sharply on the reason
for applicant’s failure to renew its ‘016 Registration and
whether applicant has abandoned use of its ANT-STOP mark, as
well as the consequences of the answers to those questions
for this proceeding.
B. Issues
Opposer begins its reply brief with the following
observation:
It is clear from the parties’ respective
Briefs that the crux of the present
opposition lies in whether OMS has made
continuous bona fide use of the ANT STOP
trademark for over 15 years (as OMS
contends) or whether OMS abandoned the
ANT STOP mark (as United contends). Put
simply, if OMS has had continuous viable
trademark use of ANT STOP from 1992 to
the present, United will lose this
opposition. Conversely, if OMS
abandoned its prior ANT STOP rights
during the period when it “discontinued”
its ANT STOP products, then neither its
prior registration nor its prior common
law rights will bar this opposition,
which will then be decided on the issue
of whether OMS’s proposed ANT STOP mark
Opposition No. 91158240
5
conflicts with United’s STOP family of
marks.

Reply Br. at 5.
On the contrary, it is apparent to us that both parties
misapprehend many of the legal principles involved in this
proceeding. This resulted in the unfortunate complication
of this case, and the submission of a great deal of
unnecessary (and irrelevant) evidence. We begin by
discussing the issues at hand.
This is an opposition against an intent-to-use
application, in which opposer alleges a likelihood of
confusion under Trademark Act § 2(d). Not. of Opp. ¶ 5.
Opposer has pleaded and proved its ownership of four valid
trademark registrations. There are no counterclaims
challenging the validity of opposer’s registrations.3
Pursuant to long-standing precedent, an opposer
asserting a Principal registration against an application
need not prove priority of use. E.g., King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974) (“Section 2(d) says an applicant can
register, unless his mark is likely to cause confusion with
a mark [1] ‘registered in the Patent [and Trademark] Office
or ... [2] previously used...’” (numbering and emphasis

3 Applicant attempted to amend its answer to assert counterclaims
to cancel three of opposer’s four pleaded registrations, but its
motion was denied as untimely. Order at 7 (Mar. 26, 2008).

Opposition No. 91158240
6
added)). Here, because opposer is asserting marks which are
“registered in the Patent and Trademark Office,” Trademark
Act § 2(d), it need not prove the disjunctive condition,
i.e., that its registered marks were “previously used”
(emphasis added).
This is true regardless of whether the opposed
application is based on use or an intention to use, or even
whether applicant can prove that it in fact began use of the
applied-for mark prior to the opposer. In an opposition,
the only way that an applicant can raise the issue of the
priority of an opposer’s registration is by seeking to
cancel it. Trademark Rule 2.106(b)(2)(ii); see e.g.,
Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998). As there are no pending counterclaims or petitions
for cancellation of opposer’s marks, priority is simply not
an issue, notwithstanding any evidence of applicant’s use of
its mark prior to opposer’s use or registration. The
parties’ extensive evidence and argument regarding priority
and applicant’s alleged abandonment are therefore largely
irrelevant. For this purpose, it makes little difference
whether defendant, as an intent-to-use applicant, has
continuously used its mark for many years without
Opposition No. 91158240
7
interruption or whether it has not yet made use of it at
all.4
While applicant recognizes this principle, it suggests
that the rule is rooted in policy considerations which are
inapplicable here, and that we may thus ignore it in this
case. App. Br. at 33, n.10. On the contrary, King Candy is
a construction of the controlling statute by the predecessor
to our primary reviewing court. Even if we were inclined to
agree in principle with applicant’s “policy” arguments, we
must still follow binding precedent. Khan v. State Oil Co.,
93 F.3d 1358 (7th Cir. 1996).
We also note that the parties spent a great deal of
effort arguing the significance of applicant’s prior
registration and the reason for its demise. Although
applicant previously owned a registration5 for the same
mark, that registration – for whatever reason – was not

4 Priority of use might matter with respect to opposer’s “family
of marks” argument, by which opposer essentially alleges
confusion with its unregistered family “surname” mark (even
though in this case the members of the asserted family are
registrations). In order to prevail, the proponent of a “family
of marks” argument must prove that its family was established
prior to the defendant’s first use of the applied-for mark. But
as discussed below, we need not reach the question of family
priority in this case.
5 Applicant emphasizes that its now-cancelled prior registration
was “incontestable,” urging that the present case is not about “a
routine ITU application.” App. Br. at 11, 14. Incontestability,
which is the subject of Trademark Act § 15, 15 U.S.C. § 1065,
refers to when and on what grounds the right to use a registered
mark may be challenged. See In re Best Software Inc., 63 USPQ2d
1109, 1112 (TTAB 2002). But Section 15 is inapplicable in a case
before the Board because we decide only the right to register (as
opposed to the right to use) a mark.
Opposition No. 91158240
8
maintained, and has expired. It is well-established that an
expired or cancelled registration is evidence of nothing but
the fact that it once issued. Sunnen Prods. Co. v. Sunex
Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987). In particular,
such a registration is not entitled to the presumptions
under Trademark Act § 7(b), that the registration was valid,
that registrant was its proper owner, or that registrant had
the exclusive right to use the previously-registered mark.
See Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178
USPQ 46, 47 (CCPA 1973).
Although Trademark Act § 14, 15 U.S.C. § 1064, might
have barred an attempt to cancel applicant’s previous,
expired registration, it cannot be raised as a defense in an
opposition to a new application, as Section 14 applies only
to “[a] petition to cancel a registration of a mark.”6
Trademark Act § 14 (emphasis added). The failure of
applicant to renew its previous registration might have been
an unfortunate error. But the filing of a new application

6 To the extent applicant is arguing that the subject mark must
be considered strong because its prior registration of it was
once incontestable, the Board has rejected the theory that
incontestability per se has any effect on an analysis of
registrability. Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031,
1035-36 (TTAB 2010) (“[T]he fact that opposer’s federally-
registered trademark has achieved incontestable status means that
it is conclusively considered to be valid, but it does not
dictate that the mark is ‘strong’ for purposes of determining
likelihood of confusion.”). To that extent, Trademark Act §§ 14
and 15 are similar in this respect – they provide procedural bars
to challenges (to registration and use, respectively) on certain
grounds, but do not change the substantive analysis of otherwise
permissible claims.
Opposition No. 91158240
9
does not restore applicant to the status quo ante. Having
allowed its original registration to expire, applicant is
now in much the same position it would have been had the
prior registration never issued, and it makes no difference
at all whether its failure to renew the registration was
intentional due to applicant’s abandonment (as opposer
claims) or the result of mistake or negligence (as applicant
claims).7
For similar reasons, applicant’s Morehouse defense, see
Morehouse Mfg. Corp. v. J. Strickland & Co., 150 USPQ 688
(TTAB 1966), asserted for the first time in its brief, also
fails.8 When the applicant’s prior registration is no
longer valid, Morehouse does not apply:

7 While it does not affect the outcome, we cannot agree with
opposer’s suggestion, Opp. Br. at 7-8, 13, 15, that applicant’s
failure to maintain its registration is evidence that applicant
ceased using its mark in commerce. Federal registration is not
required to acquire or maintain a trademark, and the failure to
maintain a registration does not imply abandonment of use or the
rights with flow from such use.
Likewise, opposer argues that applicant’s current application,
which was filed under the “intent-to-use” provisions of Trademark
Act § 1(b), 15 U.S.C. § 1051(b), is evidence that applicant is
not now (or was not at the time of filing) using its mark in
commerce. Opp. Br. at 7, 17, 20–21. Again, we disagree; the
declaration of an intent to use is not inconsistent with actual
use. Cf. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536,
1539 (TTAB 2007) (ITU applicant may rely on its use prior to
application for purposes of priority, citing Corporate Document
Svcs. Inc. v. I.C.E.D. Mgmt. Inc., 48 USPQ2d 1477, 1479 (TTAB
1998)). The filing of an intent-to-use application is in no way
an admission of non-use.
8 In any event, we sustain opposer’s objection, Reply Br. at 18,
on the ground that Morehouse, which is an affirmative defense,
was not pleaded, and as such, cannot be considered. H.D. Lee Co.
v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (citing
Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313,
Opposition No. 91158240
10
The proposition for which the Morehouse
case stands is that, as a matter of law,
an opposer cannot be damaged, within the
meaning of Section 13 of the Trademark
Act, by the issuance to an applicant of
a second registration when applicant
already has an existing, unchallenged
registration of the same mark for the
same goods. See O-M Bread, Inc. v. U.S.
Olympic Comm'n, 65 F.3d 933, 36 USPQ2d
1041, 1045 (Fed. Cir. 1995); and TBMP
§ 311.02(b) (2d ed. rev. 2004). The
prior registration or Morehouse defense
is an equitable defense, “to the effect
that if the opposer can not be further
injured because there already exists an
injurious registration, the opposer can
not object to an additional registration
that does not add to the injury.” O-M
Bread, 36 USPQ2d at 1045 (emphasis
added). Because the injury contemplated
under the Morehouse doctrine is injury
not from a party's prior use of a mark
but rather from the party's ownership of
a registration for the mark, it
necessarily follows that the
registration must be in existence in
order to form the basis for the claim of
damage, and that an expired registration
may not form the basis of a valid
Morehouse defense. Cf. Action Temporary
Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.
Cir. 1989) (“It is well established
that, pursuant to section 22 of the
Lanham Act, a registration provides
constructive notice for all use during
the existence of the registration.
However, a canceled registration does
not provide constructive notice of
anything.”)(internal citations omitted).

169 USPQ 513, 527-28 (1971)); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP), §§ 311.02, 314 (2d ed. rev. 2004)).
Opposition No. 91158240
11
Land O’ Lakes v. Hugunin, 88 USPQ2d 1957, 1958-59 (TTAB
2008) (emphasis added).9
Likewise, we do not find that laches is an issue in
this case, because it was not pleaded. Trademark Rule
2.106(b)(1); United States Olympic Comm. v. Bata Shoe Co.,
Inc., 225 USPQ 340, 341 (TTAB 1984). In its brief, App. Br.
at 27, n.7, and at oral argument, applicant pointed to the
following “defense” in its answer as support for a laches
defense:
There is no likelihood of confusion as
evidenced by the fact that there was no
actual confusion between any of
Opposer’s cited marks and Applicant’s
prior registration for the mark “ANT-
STOP,” Reg. No. 1,756,016, issued March
2, 1993 during the period of that mark’s
use.

Answer ¶ 9.
To prevail on a laches defense,10 a defendant must
plead and prove two elements: (1) that the plaintiff

9 Strangely, applicant cites Land O’ Lakes in its brief for
precisely the opposite premise. App. Br. at 26 (“Where defendant
failed to object to a prior registration which, despite continued
use, expired due to applicant’s error, the Board has consistently
excused the error and determined that the Morehouse defense
nonetheless applies, so long as there is continuous use.”
(emphasis added)). As is perfectly clear from the quotation
above, Land O’Lakes says no such thing. Nor do the other cases
applicant cites in support of this proposition; they concern
laches, not the Morehouse defense, which is clearly a different
legal doctrine.
10 Unlike the Morehouse defense, laches might have been properly
pleaded under the circumstances of this case. Laches is not
usually available as a defense in an opposition, because the
delay is measured from the date the mark is published for
opposition, not the date the opposer learned of applicant’s use.
See Nat’l Cable Television Ass’n Inc. v. Am. Cinema Editors Inc.,
Opposition No. 91158240
12
unreasonably delayed in asserting its rights and (2) that
such delay resulted in material prejudice to the defendant.
Lincoln Logs Ltd. v. Lincoln Pre-cut Log Homes, Inc., 971
F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992).
In this case, applicant’s answer was not sufficient to
put opposer on notice that laches was asserted because
applicant did not allege facts supporting either element of
the defense, nor did it even mention the elements or the
term “laches.”11 Rather, Paragraph 9 appears to us to
merely put forward the often-asserted (and almost as often
unsuccessful) argument that the absence of evidence of
actual confusion is evidence that there is no likelihood of
confusion.12 See Nina Ricci S.A.R.L. v. E.T.F. Enters.
Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989).

19 USPQ2d 1424, 1432 (Fed. Cir. 1991). Given the brief period
allowed for filing an opposition, see Trademark Rule 2.101(c),
laches would be all but impossible to prove. But “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 substantially the same mark for
substantially the same goods.” Aquion Partners L.P. v.
Envirogard Prod. Ltd., 43 USPQ2d 1371, 1373 (TTAB 1997).
11 We do not mean to imply that a proper pleading must use the
name of the asserted legal doctrine. Nonetheless, doing so might
have helped to remove any doubt as to the nature of the defense,
if applicant’s intent was indeed to assert laches.
12 As noted above, see supra n.2, unlike laches, this argument is
not an affirmative defense at all. “The nature and extent of any
actual confusion” is one of the factors to be considered in
deciding whether confusion is likely. In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(factor #7). Thus, although applicant may submit evidence or
argument on the issue, the extent of actual confusion (if any) is
part of opposer’s case, rather than an affirmative defense for
which applicant bears the burden of proof.
Opposition No. 91158240
13
But laches isn’t about confusion (actual or likely), or the
lack of it; laches is about the plaintiff’s unjustified
delay and the resulting prejudice to the defendant.
Applicant urges that pleadings are to be construed
liberally under the Federal Rules. App. Br. at 27. But
even construed liberally, there is simply nothing in
applicant’s answer which can be fairly construed as raising
the issue of laches. We agree with opposer, Opp. Br. at 18,
20, that applicant’s answer was plainly insufficient to put
opposer on notice that applicant was asserting laches,13 and
we will accordingly not further consider the defense.
To summarize, we have before us a relatively
straightforward case under Trademark Act § 2(d). In
opposition to registration of the subject application,

13 Even if laches had been properly pleaded, it was not proved.
Applicant does not even discuss the “material prejudice” prong of
the test, barely mentioning it in passing, App. Br. at 27, 28,
despite the fact that it bears the burden of proof on an
affirmative defense. The “material prejudice” element of the
laches defense requires more than that the defendant would have
to contest a proceeding on the merits which would otherwise be
barred. Where laches is successfully asserted, the defendant
typically shows that it continued to invest substantial resources
in the mark and built goodwill associated with the mark during
the plaintiff’s delay, such that it would be inequitable to allow
a dilatory suit to proceed. Applicant made no such showing here.
See Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83
USPQ2d 1762, 1766 (TTAB 2007) (“respondent has not demonstrated
that any economic prejudice resulted from petitioner's delay”).
As far as we can tell, the record does not reflect any such
prejudice to applicant resulting from opposer’s delay. Indeed,
in connection with its misbegotten theory of abandonment, opposer
cites considerable evidence that applicant’s investment in and
sales under the mark were less than robust for a considerable
period prior to commencement of this proceeding. Opp. Br. at 41-
49.
Opposition No. 91158240
14
opposer has asserted that registration of applicant’s mark
would give rise to a likelihood of confusion with several
marks, which it has registered and used. Not. of Opp. at 1-
2. For the most part, we find little or no relevance in the
parties’ arguments and evidence regarding applicant’s prior
registration, whether applicant had abandoned its use of the
mark at some point prior to the current application,
priority, laches, or the Morehouse defense. We have
considered and weighed the evidence on these issues
accordingly.
II. Record
A. Evidence
The parties stipulated that any discovery depositions
may be introduced by either party as testimonial evidence,
Consent Mot. (Nov. 13, 2007), and that all documents
produced in this matter are authentic and may be relied upon
by either party, Consent Mot. (Nov. 16, 2007). See Order
(Nov. 30, 2007) (approving stipulations).
Pursuant to Trademark Rule 2.122(b), the record in this
case includes the pleadings and the file of the subject
application. In addition, the parties have submitted the
following:14

14 In several instances, the parties submitted notices of reliance
on the same evidence. This was not necessary. Once evidence is
properly submitted by one party, it may be used by the other for
any purpose. In addition, although they were submitted under
notices of reliance, we have listed the parties’ testimony (and
Opposition No. 91158240
15
• Testimony of Jim Guard, opposer’s Senior Marketing
Director for Spectrum Industries:

o December 14, 2007,

o May 2, 2007,

o January 22, 2008;

• Testimony of Tiffany Peoples, Director of Marketing for
Grass Seed for Ortho:

o June 14, 2007,
o January 16, 2008;
• Testimony of Scott Hanley, Marketing Director, Scott’s
Miracle-Gro, October 31, 2007;

• Testimony of Richard Foster, Vice President of Marketing
for Scott’s Ortho division15:

o January 23, 2008,

o September 26, 2008;

• Testimony of Christine Brown, a litigation paralegal for
applicant’s law firm, January 24, 2008;

• Testimony of Ed Billmaier, Senior Director of
Relationship and Interactive Marketing, for Scotts
Miracle-Gro:

o July 10, 2008,

o September 23, 2008;

discovery depositions treated as testimony) separately. It is
not necessary to submit testimony under a notice of reliance,
although doing so is harmless error. Syngenta Crop Protection
Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 (TTAB 2009).
15 Opposer originally noted its intention to rely on Mr. Foster’s
deposition from another proceeding (Opp. No. 91162042, June 13,
2007 deposition), Opp. Supp. Not. of Reliance at 3, and filed a
motion for leave to do so. Although the Board granted opposer’s
motion (subject to certain requirements), the requirements were
not met, and opposer ultimately withdrew its reliance on this
deposition. See Opp. Second Supp. Not. of Reliance at 5. We
have given this evidence no consideration.
Opposition No. 91158240
16

• Opposer’s Notices of Reliance:

o November 30, 2007. In addition to other materials,
opposer submitted the following registrations:

Reg. No. Mark Goods Reg. Date Disclaimer
1196097 WEED STOP Weed preventer May 5, 1980 WEED
2270338 BUG STOP Insect repellent, insecticide and pesticide
for domestic/household use
Aug. 17, 1999 BUG
2432006

Rodent repellents and rodenticides for
domestic household lawn and garden
use
Feb. 27, 2001 MOLE
2841439 GRUB STOP Insecticide for application to household
lawn and garden
May 11, 2004 GRUB
2936701 MOSQUITO STOP Insecticides for domestic use Mar. 29, 2005 MOSQUIT
O

o March 7, 2008,

o October 16, 2008;

• Applicant’s Notices of Reliance:

o January 29, 2008,

o October 16, 2008.

B. Evidentiary Objections
Both parties filed extensive objections to the
testimony16 and evidence submitted by the other (including

16 Many objections are waived if not asserted when the evidence is
proffered. See generally, TBMP § 707.03(a). Yet, the parties
seem to have taken this principle to extremes in this case. Much
of the testimony is marked by objections to virtually every
question and answer. Counsel would do well to remember that our
proceedings are not tried before lay juries which might be easily
confused or prejudiced. And while the Federal Rules of Evidence
do apply, so does common sense. “Notice will not be taken of
merely formal or technical objections which shall not appear to
have wrought a substantial injury to the party raising them....”
Trademark Rule 2.123(j). Many of counsels’ objections appear to
fall into this category, as the parties appear to concede; with
few exceptions, objections to testimony were not maintained in
the parties’ evidentiary objections at final briefing, and are
therefore waived, rendering the original objection pointless.
Opposition No. 91158240
17
objections to the objections17). Opp. Stmt. of Evid.
Objections (Feb. 2, 2009); App. Stmt. of Evid. Objections
(Mar. 9, 2009). Applicant responded to opposer’s
objections, App. Resp. to Opp. Stmt. of Objections (Mar. 9,
2009), but opposer did not respond to applicant’s. We note
that the Board previously denied opposer’s motion to strike
documents which were allegedly not produced during
discovery. Order at 9-11 (Mar. 26, 2008).
We begin by referring to our earlier discussion of the
issues in this case. As previously noted, a good deal of
the evidence proffered by both parties is of little or no
relevance. Thus, we will not belabor any of the objections
to such evidence (which includes all of opposer’s

17 Applicant argues that opposer’s objections are not in
compliance with 37 C.F.R. § 11.50(e), and that they are in
violation of the Board’s prohibition against filing further
motions in this case without prior leave. App. Stmt. of
Objections at 7. Applicant is wrong on both counts. The rule
cited by applicant applies specifically to the conduct of
investigations and disciplinary proceedings involving those
engaged in practice before the USPTO. See 37 C.F.R. § 11.19, et
seq. Such proceedings are conducted by the USPTO’s Office of
Enrollment and Discipline and have nothing to do with the conduct
of Board inter partes proceedings.
Moreover, we do not consider opposer’s statement of objections
to be a “motion” filed without prior leave. See Order at 7 (Apr.
25, 2008). To avoid waiver, objections must be raised either in
a party’s brief, or in a separate statement (which does not count
toward the page limit of the brief). Hard Rock Café Int’l (USA)
Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000). The
separate statements of objections filed by both parties here were
not motions, but part of the briefing of the case (although not
part of the briefs themselves), and were thus not subject to the
Board’s order.
Opposition No. 91158240
18
objections).18 We briefly consider the remaining
objections:
• Applicant objects to consideration of opposer’s
registration of MOSQUITO STOP, because (1) the mark was not
pleaded as a basis for opposition; (2) the mark is allegedly
abandoned; and (3) the evidence is misleading, prejudicial,
and confusing. App. Stmt. of Evid. Objections at 2
(unnumbered). Despite opposer’s statement that it ceased
using this mark in 2005, Opp. Br. at 11, we do not consider
this registration to be abandoned; absent a counterclaim,
applicant cannot attack the validity of opposer’s
registration. Trademark Rule 2.106(b)(2)(ii). Moreover, we
are not misled, prejudiced, or confused by it.
Nonetheless, we agree that the MOSQUITO STOP
registration was not pleaded as a bar to registration under
Trademark Act § 2(d), see Notice of Opp. ¶ 2 (Oct. 10,
2003), and we accordingly give it no consideration for that
purpose. See Sunnen Prods. Co. v. Sunex Int’l Inc., 1
USPQ2d 1744, 1746 (TTAB 1987); United States Shoe Corp. v.
Kiddie Kobbler Ltd., 231 USPQ 815, 817 (TTAB 1986); Long
John Silver's, Inc. v. Lou Scharf Inc., 213 USPQ 263, 266

18 Opposer’s objections are directed entirely to evidence produced
in support of applicant’s “‘administrative error’ defense,” Opp.
Stmt. of Evid. Objections (Feb. 2, 2009), which was itself
asserted in response to opposer’s charge that applicant abandoned
its mark. But as explained above, abandonment is not a
significant issue in this case, and the reason for applicant’s
failure to renew its ‘016 Registration is irrelevant.
Opposition No. 91158240
19
(TTAB 1982).
• Applicant objects to Opposer’s 2003 Spectracide
Brands Awareness & Usage Tracking Study Final Report Draft,
and the testimony of Jim Guard, which introduces and
discusses the study, as “misleading” on the grounds that the
survey question “is not a legally sufficient basis for
establishing consumer recognition or strength of the
marks.”19 App. Stmt. of Evid. Objections at 3 (unnumbered),
citing Carefirst of Maryland, Inc. v. FirstHealth of the
Carolinas, Inc., 77 USPQ2d 1492 (TTAB 2005), aff’d 479 F.3d
825, 81 USPQ2d 1919 (Fed. Cir. 2007). But applicant’s
citation of Carefirst is itself somewhat misleading, because
the Board did not say in that case that aided awareness
studies are “not ... legally sufficient.” What the Board
said was that

19 We note that the Brand Awareness Study was introduced by Jim
Guard’s testimony, although it was clear that Mr. Guard did not
conduct, design or direct the survey, nor was he able to answer
questions about it. Indeed, Mr. Guard testified that he had
never seen the study before his testimony. Guard Dep. at 42 (May
2, 2007).
Arguably, opposer’s study is either hearsay or a proper
foundation was not laid for its admission. Piper Aircraft Corp.
v. Wag-Aero, Inc., 741 F.2d 925, 223 USPQ 202, 206 (7th Cir. 1984)
(“We agree with the suggestion in McCarthy's treatise that the
testimony of a survey director alone can establish the foundation
for the admission of survey results.”); see McDonough Power
Equip., Inc. v. Weed Eater, Inc., 208 USPQ 676, 684 (TTAB 1981)
(survey held admissible where it was offered (with all supporting
data) through the testimony of the expert who conducted it).
Nonetheless, applicant did not object to the study on this
ground, and we consider the objection waived. Alberto-Culver Co.
v. F.D.C. Wholesale Corp., 16 USPQ2d 1597, 1600 (TTAB 1990).
Opposition No. 91158240
20
[t]he brand awareness studies give
little assistance to opposer's claim of
fame. We agree with applicant that, in
analyzing these studies in the context
of the legal factor of fame, it is
unaided awareness that is most
significant. If a mark were “famous,”
as contemplated under the law, among the
class of relevant customers and
potential customers, it would, in all
likelihood, garner much higher numbers
on unaided brand awareness than did
opposer's mark.... One should not be
permitted to so heavily rely on aided
awareness, that is, awareness after the
brand has been prompted, to show fame
(e.g., “Have you ever heard of
CAREFIRST?”). See generally, J.T.
McCarthy, McCarthy on Trademarks and
Unfair Competition, § 32:173 (4th ed.
2004).

Carefirst, 7 USPQ2d at 1507 (emphasis added). The Board did
not find Carefirst’s aided brand-awareness study to be
legally flawed or misleading, and the study was apparently
admitted and considered (along with other evidence),
although because of its design, it was not considered to be
very significant. We accordingly deny applicant’s objection
as to admissibility, but as was the case in Carefirst, we
give this evidence very little weight. Harjo v. Pro-
Football, Inc., 50 USPQ2d 1705, 1717 (TTAB 1999)(flaws in
survey go to its probative value, not its admissibility),
rev’d on other grounds, 284 F. Supp. 2d 96 (D.D.C.
2003)(subsequent history omitted).
• Applicant objects to “[d]eposition testimony
discussing purported advertising of Opposer's insecticide,
Opposition No. 91158240
21
herbicide and rodenticide products” on the ground that
opposer did not show, inter alia, that the advertising was
actually made, how much was spent on the marks at issue,
where the advertising was run, and in what media.
In Mr. Guard’s testimony, e.g. Guard Depo. 82-88 (Dec.
14, 2007), and in opposer’s brief, Opp. Br. at 13-14,
opposer points to an agreement with one of the large
retailers which carry opposer’s goods. Under the agreement,
the retailer is provided an allowance which it is supposed
to spend on advertising opposer’s products. Based on this,
Mr. Guard estimated in his testimony the amount allegedly
spent by the retailer on advertising opposer’s goods. But
as applicant notes, opposer has no proof that this retail
distributor (or any other) actually spent the required
amount, Guard Depo. at 87-88 (Dec. 14, 2007); Peoples Depo.
at 69 (Jan. 16, 2008) (stating that opposer does not track
such advertising). No advertisements which were actually
circulated by the retailer were submitted, and even if we
accept opposer’s estimate of what the retailer should have
spent on advertising as the amount actually spent, the
figure would apparently be an aggregate amount spent on
advertising all of opposer’s products, not necessarily just
the ones sold under the brands at issue here. We agree with
applicant that this testimony is highly speculative and
lacking in foundation.
Opposition No. 91158240
22
• Similarly, applicant objects to “[a]ll mention of,
reference to or reliance upon the contract with the retailer
which purportedly required it to advertise all of the United
products it carried ... to establish advertising amounts for
its marks relied on for this opposition.” App. Stmt. of
Evid. Objections at 5 (unnumbered). Again, we do not view
the contract as establishing that the retailer actually
spent the required amount on advertising or what percentage
of any amount that was spent, was spent in advertising
opposer’s asserted trademarks.
But even if we assume that some unknown amount was
spent by the retailer under the contract (and that a portion
of that sum was spent in advertising opposer’s pleaded
marks), we have no evidence by which to determine the
effectiveness of the advertising – i.e., whether it was
likely to have resulted in stronger consumer recognition of
opposer’s marks (or family of marks). Such evidence would
include the advertisements themselves, the geographic scope
of the advertisements, the media used, and the circulation
data. We will not strike the contract itself (or mention of
it), but it clearly does not demonstrate that any particular
amount was actually spent in the advertising of opposer’s
marks or that such sums were effective in creating strong
awareness of opposer’s marks in the minds of its consumers.
It thus has little or no value in proving the fame of
Opposition No. 91158240
23
opposer’s marks or establishing its “family of marks.”
• Applicant objects to opposer’s use of a “purported
agreement with a vendor to prepare marketing materials,” see
Opp. Not. of Rel. at 5 (Nov. 30, 2007); Opp. Br. at 14, “for
which it claims to have expended” a significant sum.20 App.
Stmt. of Evid. Objections at 6 (unnumbered). We essentially
agree with applicant – there is no record evidence that
these marketing materials were finally completed according
to the agreement, what the marketing materials ultimately
comprised (i.e., what mark or marks were included in the
advertising), whether they were ever publicly distributed,
or to whom. As such, this evidence has virtually no
relevance. It shows only a first step or attempt to engage
in this type of advertising, with no indication of any
results thereof.
• Lastly, applicant objects to opposer’s reliance on
the testimony of Jim Guard as to other advertising materials
and strategies. App. Stmt. of Evid. Objections at 7
(unnumbered); see Guard Depo. at 120 (May 2, 2007); Opp. Br.

20 We refer to this evidence in the most general terms because it,
and a large amount of other evidence in this case, was submitted
under seal. We are puzzled as to how the existence and contents
of advertising materials which opposer uses to support its
“advertising and promotion of its STOP family of marks,” Opp. Br.
at 13, could be considered confidential. For most purposes
(including those opposer advances here), advertising materials
are only relevant if, and to the extent that, they are publicly
circulated.
Opposition No. 91158240
24
at 14.21 Applicant’s objection is overruled as to the
admissibility of this testimony, but we note that the very
brief mention of this promotional activity (without
testimony or other evidence of its contents and circulation)
is of very little value.
II. Discussion
A. Standing
Applicant argues at length that opposer cannot prove
that it has a reasonable belief in damage from the possible
issuance of the subject application, essentially contending
that opposer does not have superior rights, and thus cannot
be “damaged.” App. Br. at 51-54. Applicant’s arguments
rest primarily on a conflation of the requirement for
standing and the grounds for opposition.
Standing is a relatively low threshold requirement, and
it is generally sufficient to show that the plaintiff in a
Board proceeding is not a “mere intermeddler.” E.g., Herbko
Int’l Inc. v. Kappa Books Inc., 64 USPQ2d 1375, 1378 (Fed.
Cir. 2002). It would be illogical to construe standing to
require a Board plaintiff to show that it would win on the
merits before we find that it has sufficient interest in the
proceeding to contest the case on the merits. On the
contrary,

21 Again, this testimony and the discussion of it in opposer’s
brief were submitted under seal, although we cannot see any
possible justification for having done so in this instance.
Opposition No. 91158240
25
[s]tanding requires only that the
petitioner have a “real interest” in the
cancellation proceeding. Int'l Order of
Job's Daughters v. Lindeburg & Co., 727
F.2d 1087, 1092, 220 USPQ 1017, 1020
(Fed. Cir. 1984). In most settings, a
direct commercial interest satisfies the
“real interest” test. Cunningham[ v.
Laser Golf Corp., 222 F.3d 943, 945, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000)].

Herbko Int’l, 64 USPQ2d at 1377 (emphasis added).
Opposer here has pleaded and proved its registration
and use of several trademarks, and opposer alleges that
registration of applicant’s mark would cause a likelihood of
confusion with its registrations. Regardless of the outcome
of opposer’s claims on the merits, opposer clearly has a
real or direct commercial interest in this matter, and that
is sufficient to establish standing.22 See Cunningham, 55
USPQ2d at 1844; Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).

22 Applicant also argues that opposer cannot establish “damage”
because “[a] refusal by the U.S. Patent and Trademark Office to
register a mark does not preclude the owner of the mark from his
right to use it.” App. Br. at 53-54. Applicant is correct that
this proceeding is about its right to register a mark, not its
right to use it. But if applicant is correct in grafting this
principle onto the requirement for standing, it would not be
possible to establish standing in any Board proceeding in which
the defendant is using its mark, because we could never enjoin
such use. On the contrary, whether an applicant could or would
continue to use its mark notwithstanding a Board judgment that it
is not entitled to registration has nothing to do with whether an
interested party has standing to oppose the mark in the first
place. The “damage” at issue in an opposition is that arising
from the prospective registration, not use, of the mark. See
Nat’l Cable Television Ass’n, 19 USPQ2d at 1432 (Fed. Cir. 1991)
(“In an opposition or cancellation proceeding the objection is to
the rights which flow from registration of the mark.” (citations
omitted)).
Opposition No. 91158240
26
B. Priority
As discussed above, because opposer’s pleaded
registrations are of record, priority is not an issue with
respect to the goods set out therein. King Candy Co., 182
USPQ at 110.
C. Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See du Pont, 177 USPQ 563; Palm Bay Imp.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); In re Dixie Rests. 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 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 In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
1. Opposer’s Family of Marks Argument
We first consider what marks are at issue. In its
notice of opposition, opposer set out a claim that
Opposition No. 91158240
27
registration of the subject application would give rise to a
likelihood of confusion with four of opposer’s registered
marks (for WEED STOP, BUG STOP, MOLE STOP and design, and
GRUB STOP). Notice of Opp. ¶ 2. During trial, opposer
submitted evidence of its ownership of these pleaded
registrations, as well as its registration for an additional
mark (for MOSQUITO STOP), although we have sustained
applicant’s objection to consideration of the unpleaded
registration. Opposer’s pleaded registrations23 which have
been made of record are as follows:
Reg. No. Mark Goods Filing Date/
Reg. Date
Disclaimer
1196097 WEED STOP Weed preventer May 5, 1980
May 5, 1982
WEED
2270338 BUG STOP Insect repellent, insecticide and pesticide
for domestic/household use
Nov. 24, 1997
Aug. 17, 1999
BUG
2432006

Rodent repellents and rodenticides for
domestic household lawn and garden use
Apr. 21, 1998
Feb. 27, 2001
MOLE
2841439 GRUB STOP Insecticide for application to household
lawn and garden
Jan. 29, 2001
May 11, 2004
GRUB

Although not pleaded,24 opposer asserted in its briefs
that an issue for decision in this case is “[w]hether
[a]pplicant[’s] ... registration of its ANT STOP mark ...

23 In the case of each listed registration, opposer has made
appropriate filings under Trademark Act §§ 8 and 9, and has filed
an affidavit under Trademark Act § 15.
24 In order to be considered, a claim of a likelihood of confusion
with a “family” of marks must usually be pleaded as a ground for
opposition. Sunnen Prods. Co., 1 USPQ2d at 1746-47, n. 12 (TTAB
1987). Nonetheless, any potential objection to an unpleaded
family of marks claim is waived where – as here – applicant fails
to raise such an objection, and in fact, argues the merits of the
issue in its brief. 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1719, n. 37 (TTAB 2007). Because applicant waived its objection,
we consider the merits of opposer’s unpleaded “family” claim.
Opposition No. 91158240
28
would create a likelihood of confusion with [o]pposer’s
family of STOP marks.” Opp. Br. at 8.
“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.” J&J Snack Foods
Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1891 (Fed. Cir. 1991). Because opposer’s family mark is not
itself the subject of a registration, opposer bears the
burden of proving that it owns the mark, i.e., that the
relevant segment of the public views the common
characteristic of the family – i.e., the family “surname”
shared by the “members” of the family – as a source
indicator. “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.” Id; Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d
1334, 1337-38 (TTAB 2006) (citing Am. Standard, Inc. v.
Scott & Fetzer Co., 200 USPQ 457, 461 (TTAB 1978)).
Upon consideration of the record evidence, we find that
opposer has not established ownership of a family of STOP
marks. Opposer has not presented evidence that it has
advertised and promoted its four pleaded stop registrations
Opposition No. 91158240
29
“in such a manner as to create public recognition coupled
with an association of common origin predicated on the
‘family’ feature,” see Land-O-Nod Co. v. Paulison, 220 USPQ
61, 65-66 (TTAB 1983), or that such public perception has in
fact resulted.
In its reply brief, opposer summarizes its evidence and
argument regarding the establishment of its family of marks:
(1) Opposer owns four25 “STOP registrations” and offers a
number of products under those brands; (2) national sales of
opposer’s STOP branded products have been substantial; (3)
opposer’s “STOP branded products are sold in the same 20
foot lawn and garden aisle of each retailer, and ...
[opposer’s] STOP family of marks are the only STOP branded
products found in the lawn and garden aisle of large
national retailers...”; (4) and opposer’s STOP marks share a
common construction.26 Reply Br. at 21-22.
But mere ownership of a group of similar marks is not
enough to establish the existence of a family of marks.
Opposer must point to evidence demonstrating that “the
purchasing public recognizes ‘that the common characteristic

25 Opposer actually stated that it owns five such marks, including
its MOSQUITO STOP mark, although as discussed above, we have
granted applicant’s objection to consideration of that
registration.
26 “[E]ach [of opposer’s] STOP brand[s] is consistently made up of
two words where the first descriptively identifies the target of
the control product and the second suggests that the product will
put an end to the consumer's issues with the target.” Reply Br.
at 21-22.
Opposition No. 91158240
30
is indicative of a common origin of the goods.’” Han Beauty
Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1559 (Fed. Cir. 2001) (quoting J&J Snack Foods, 18 USPQ2d at
1891) (emphasis added). Opposer argues that its evidence is
sufficient, citing J&J Snack Foods v. McDonald’s Corp. for
“finding existence of a family where Opposer had extensive
usage and promotion of various marks using a common
formative.” But opposer is not McDonald’s, which in the
cited case
showed extensive usage and promotion of
various marks using the “Mc’ formative,
in association with the McDONALD'S mark,
in advertising and at McDonald's
restaurants. McDonald’s showed that in
1987 it operated 7,600 outlets in the
United States with sales of over $14
billion; [and] that it engaged in
extensive nationwide advertising,
spending $405 million in 1987....

J&J Snack Foods, 18 USPQ2d at 1892.
In this case, opposer has considerably less in sales
than did McDonald’s, and we have comparatively little
evidence of the amount and kind of advertising that has been
done in promotion of its family members. The nature of any
advertisement of the family members is particularly
important because it may well reveal whether the marks were
promoted as a family, i.e., in such a way that we can infer
public recognition of the family, or whether they were
Opposition No. 91158240
31
simply promoted as individual marks which happen to share a
common characteristic.27
Opposer is correct that it is not required to take a
survey in order to prevail on this issue. Reply Br. at 22.
But it does bear the burden of establishing that the
relevant purchasers recognize opposer’s family of marks.
While direct evidence of consumer perception (such as a
well-conducted survey) may be particularly relevant,
consumer perception can be inferred when appropriate. But
an inference must rest on evidence, not conjecture. As
discussed earlier, it is speculative to assume that
opposer’s retailers spent what they were supposed to have
done in advertising opposer’s marks; it is even more so to
assume that any sums so expended were spent in promoting

27 Attention to the nature and extent of any advertisement
involving the marks may be particularly important where – as here
– the putative family surname appears somewhat suggestive of the
goods, because a family feature must be distinctive:
[I]f the asserted family feature is
descriptive or highly laudatory or commonly
used in the trade it cannot serve as the
basis for a family of marks, at least in the
absence of a showing of distinctiveness.
However, this is not to say that a suggestive
portion or term cannot function as a family
feature. Such a determination would depend
on whether the common feature would be
recognized by the relevant public, so that
the public would ascribe a common origin to
marks containing the common feature, and this
determination would depend on the particular
fact situation.
Marion Labs. Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215,
1219 (TTAB 1988).
Opposition No. 91158240
32
opposer’s marks as a family, and that the advertising was
effective in doing so.
We conclude that on this record, opposer has not met
its burden to demonstrate that it is the proprietor of a
“family” of –STOP formative marks. We therefore consider
opposer’s marks individually. However, for our analysis of
the likelihood of confusion, we have chosen to focus on the
most relevant registration pleaded by opposer, Registration
No. 2270338, for BUG STOP, since it covers the most relevant
mark and the most relevant goods. If we find a likelihood
of confusion with applicant’s goods and services vis-à-vis
this mark, then the analysis will be moot as to opposer’s
other pleaded marks. Likewise, if we do not, then we would
not find it for the others.
2. The Fame of the Prior Mark – Sales,
Advertising, Length of Use

We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s marks. Fame, when established, is
entitled to great weight in a likelihood of confusion
analysis. See Bose Corp. v. QSC Audio Prod. Inc., 293 F.3d
1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton,
214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); Kenner Parker
Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
Opposition No. 91158240
33
Fame of an opposer’s mark or marks, if
it exists, plays a “dominant role in the
process of balancing the DuPont
factors,” Recot, 214 F.3d at 1327, 54
USPQ2d at 1456, and “[f]amous marks thus
enjoy a wide latitude of legal
protection.” Id. This is true as
famous marks are more likely to be
remembered and associated in the public
mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark
… casts a long shadow which competitors
must avoid.” Kenner Parker Toys, 963
F.2d at 353, 22 USPQ2d at 1456. A
famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp., 63 USPQ2d at 1305.
Although opposer does not use the word “fame” in its
briefs, it has proffered evidence relevant to the fifth
duPont factor, and argues that its marks are “strong.”28
E.g., Opp. Br. at 29, 39-40; Reply Br. at 21. (Although
opposer’s arguments concern mainly the strength of its
family of marks, we consider whether this evidence supports

28 Applicant posits that “Ortho [under which Applicant’s ANT-STOP
mark was and is marketed] is a much stronger brand, which [sic]
much higher consumer recognition than Opposer’s Spectracide brand
[under which products bearing the United marks were marketed].”
App. Br. at 19. Applicant’s point is not clear. It may be
possible that a house mark (like applicant’s ORTHO brand and
opposer’s SPECTRACIDE brand), which is itself very well-known,
may pull a lesser-known product mark (like the parties’ involved
marks) along on its coattails, providing the product mark with
some measure of renown. However, the issue here is not the fame
of the parties’ house marks, but the fame of opposer’s pleaded
product marks. But more importantly, the fame of applicant’s
mark is not an issue at all in this context. The relevant duPont
factor is “The fame of the prior mark....” duPont, 177 USPQ at
567 (emphasis added). Fame under this duPont factor is not a
race, with the prize going to whichever party is more well-known
at the time of trial. A junior party gains no advantage over its
opponent when its fame eclipses that of the prior user.
Opposition No. 91158240
34
opposer’s case based on its individual pleaded
registrations.)
Opposer provided information on its sales under its
respective marks covering the years 2000 – 2007. See Opp.
Br. at 15 (and supporting evidence). (This evidence was
submitted under seal, so we discuss it only in general
terms.) We conclude that opposer’s sales of goods branded
with its pleaded marks were significant, particularly with
respect to opposer’s BUG STOP goods, although opposer
provided little context for its sales figures. Bose Corp.
v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309
(Fed. Cir. 2002). However, as noted above, we find
opposer’s reliance on advertising figures based on its
retailers’ obligation to spend a percentage of its total
sales on advertising, Opp. Br. at 13-14, to be highly
speculative, and of little worth, and we likewise give
opposer’s Brand Awareness Study very little weight.
“Because of the extreme deference that we accord a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove
it.” Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594,
1597 (TTAB 2009). We are unable to find on this record that
Opposition No. 91158240
35
any of opposer’s marks are famous, although we keep in mind
opposer’s significant sales under the BUG STOP mark.
Although we conclude that opposer has not demonstrated
that its marks are famous, its sales of BUG STOP goods favor
a finding of likelihood of confusion somewhat.
3. The Similarity or Dissimilarity and Nature of
the Goods

Applicant’s goods are identified as “pesticides for
domestic use.” The goods in opposer’s BUG STOP registration
are identified as “insect repellent, insecticide and
pesticide for domestic/household use.”
Opposer argues that its goods are all included in a
category of “control products,” recognized by the industry,
to which applicant also belongs. In response, applicant
contends that opposer “continues its pattern of overreaching
in its discussion of [the] goods,” App. Br. at 42, stating,
for instance, that “consumers are not likely to confuse MOLE
STOP rodent repellant products or GRUB STOP insecticides
with an ANT-STOP ant control product,” App. Br. at 44, and
that “[c]ustomers who are looking for a product to kill ants
in their home are likely to read the product labels and
purchase an ant control product rather than an all-purpose
insecticide,” App. Br. at 20.
But applicant’s arguments compare the wrong goods:
The issue in an opposition is the right
of an applicant to register the mark
depicted in the application for the
Opposition No. 91158240
36
goods identified therein. 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 channels of trade or the
class of purchasers to which sales of
the goods are directed.

Octocom Sys. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Because
applicant’s “pesticides for domestic use” are not limited to
any particular type of pesticide, we cannot construe them to
be an “ant control product,” as applicant argues. App. Br.
at 20 (“ANT STOP is a single purpose insect control
product.”), 44. Rather, we consider applicant’s goods to
include all types of pesticides, limited only by the
requirement that they be for “domestic use.” The fact that
in the marketplace, applicant only sells “ant control
products” under its ANT-STOP mark, is not relevant when
considering the scope of the goods in the subject
application.29
We accept as reasonable applicant’s proffered
definition of a pesticide as “an agent used to destroy

29 Similarly, to the extent opposer relies on its registrations as
a basis for its opposition, we must consider the goods as
identified in those registrations, and not as evidence may
otherwise show them to be in the marketplace. In re La Peregrina
Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008). Accordingly, opposer’s
“rodenticides” are not limited to those used for killing moles,
Opposition No. 91158240
37
pests.” See App. Br. at 43 (citing MERRIAM-WEBSTER ONLINE
DICTIONARY, www.m-w.com). We take judicial notice of other
definitions from the same dictionary and others30:
pest (noun)
* * *
2: something resembling a pest in
destructiveness; especially: a plant or
animal detrimental to humans or human
concerns (as agriculture or livestock
production)

MERRIAM-WEBSTER ONLINE DICTIONARY, www.merrriam-webster.com (last
visited Sept. 28, 2010).
pes·ti·cide
* * *
–noun
a chemical preparation for destroying
plant, fungal, or animal pests.

DICTIONARY.COM UNABRIDGED (based on the Random House Dictionary
(2010)), www.dictionary.reference.com (last visited Sept.
28, 2010).
pesticide
* * *
— n
a chemical used for killing pests, esp
insects and rodents

COLLINS ENGLISH DICTIONARY (online)(unabridged 10th ed. 2009),
www.dictionary.reference.com (last visited Sept. 28, 2010).

opposer’s “insecticides” are not limited to those for killing
“grubs,” or “bugs.”
30 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in
printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Opposition No. 91158240
38
These definitions show that a “pesticide” is understood
as something used to destroy “pests,” and that “pests”
include insects, rodents, and even plants. Accordingly,
“pesticide” is a broad term, which encompasses a variety of
agents used to kill, for example, insects, rodents, and
plants, i.e., insecticides, rodenticides, and herbicides.
Thus construed, the goods identified in the subject
application encompass (and to that extent are legally
identical to) some of the goods recited in opposer’s ‘338
Registration (BUG STOP), namely, “insecticide and pesticide
for domestic/household use.”
This factor strongly favors a finding of a likelihood
of confusion with respect to the ‘338 Registration.
4. Trade Channels and Classes of Consumers

Unless explicitly limited to particular channels of
trade, we construe goods identified in an application and
registration to move in all normal channels of trade for
such goods. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956,
119 USPQ 139 (CCPA 1958). Further, to the extent that
opposer’s goods are legally identical to those in the
subject application (e.g., “insecticide and pesticide for
domestic/household use,” we must likewise assume that the
purchasers and channels of trade are also identical for such
goods. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
Opposition No. 91158240
39
2003); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”31).
To the extent the parties’ goods are partially
identical (‘338 Registration), we find that the parties’
potential customers and channels of trade are likewise
identical. We note applicant’s argument that its goods and
those of the opposer would be segregated from each other due
to their different nature. App. Br. at 20. But this
argument relies at least in part on applicant’s incorrect
assumption that its goods (and those of the opposer) are
considerably narrower than a proper reading of the
application and registrations would support. Again, we do
not construe applicant’s pesticides to be limited to “ant
control” products, and instead consider them to broadly
comprise any “pesticides for domestic use,” including those
similar or identical to opposer’s “insecticide and pesticide
for domestic/household use.” The evidence suggests that the
identified goods are likely to be sold to the general
public, in the same or similar retail outlets, and in

31 Opposer made this same point, to which applicant takes
exception, arguing that the class of goods is “immaterial.” App.
Br. at 44-45. Applicant is mistaken – opposer’s (correct)
comment was about the “class of purchasers,” not the
classification of goods. The former is an element of the
likelihood of confusion analysis under duPont, while the latter
Opposition No. 91158240
40
relatively close proximity to each other, even if the
specific products are not sold side by side.
These factors also favor a finding of likelihood of
confusion.
5. Sophistication of Consumers

Applicant argues that purchasers of its goods and those
of opposer are sophisticated. For instance, applicant’s
witness, Richard Foster, who opined32 that such customers
are sophisticated because they read the product labels,
which are “their primary information source” about the
product. Foster Depo. at 17 (Jan. 23, 2008). For its part,
opposer elicited testimony that purchasers of such products
“are not knowledgeable about control products, and are
generally confused.” Opp. Br. at 9-10 (and cited evidence).
We think both parties miss the point. Very
occasionally, we have found that the level of sophistication
associated with purchases of the goods and those who
purchase them tends to mitigate the likelihood of confusion
to some extent. But as we have noted far more often, merely

is indeed an administrative determination that has no bearing on
the likelihood of confusion analysis.
32 Opposer objected to this testimony as speculative, lacking in
foundation, and calling for an opinion, but did not preserve its
objection at briefing. Nonetheless, although we have considered
testimony that, for instance, purchasers of pesticides read the
product labels, we give little weight to Mr. Foster’s opinion as
to their “sophistication.” Indeed, it is hard to tell what basis
Mr. Foster had for his opinion, or how he defined the term
“sophisticated” in this context. See Foster Depo. at 91-92
Opposition No. 91158240
41
because the goods are expensive or purchased after careful
deliberation does not mean that the purchasers are
sophisticated, or that confusion would therefore be avoided.
Even consumers who exercise a high degree of care are not
necessarily knowledgeable regarding the trademarks at issue,
and therefore immune from source confusion. In re Wilson,
57 USPQ2d 1863, 1865-66 (TTAB 2001); In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988)(“Being knowledgeable and/or
sophisticated in a particular field does not necessarily
endow one with knowledge and sophistication in connection
with the use of trademarks.”).
Pesticides such as applicant’s and opposer’s goods are
not impulse purchases, although they may be purchased
without lengthy deliberation and at a relatively low price.
See Opp. Br. at 12 (most of the goods sold under opposer’s
marks retail for less than $15.00). It seems clear that
consumers do not purchase pesticides on a whim, but rather
to resolve an infestation. As Mr. Hanley dryly testified:
Q. [C]an you tell me anything about
the consumers purchasing Ant Stop
products from Scotts?

A. Yes.

Q. What can you tell me about them?

A. They had ants and they wanted them
dead.

(Sept. 26, 2008) (opposer’s counsel attempting to explore these
issues).
Opposition No. 91158240
42

Q. Do you have any other information
or knowledge about those consumers?

A. Yes.

Q. What information do you have?

A. They wanted to buy a product that
worked.

Hanley Depo. at 54 (Oct. 31, 2007).

The evidence does not indicate (and we think it
unlikely) that purchases of these products are the subject
of the of the kind of prior education, in-depth research,
and careful consideration that might dispel any potential
confusion as to the source of the goods. These goods are
sold to the general public, and there is no evidence that
such group as a whole is particularly knowledgeable about
pesticides or, more importantly, about the pesticide
industry. And while it is quite possible that pesticide
purchasers do read the label information, the testimony
seems to indicate that such information is primarily about
the suitability and use of the product, not its source. In
Mr. Hanley’s words, “[t]hey had ants and they wanted them
dead.” Any care taken in such purchases is likely focused
on whether the product will resolve the infestation, rather
than on whether the source of the product is clear.
We conclude that the identified goods are of a type
which are purchased with an ordinary degree of care.
Therefore, we find this factor neutral in our analysis.
Opposition No. 91158240
43
6. The Similarity or Dissimilarity of the Marks
in their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he 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 overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result.” H.D. Lee Co., 87
USPQ2d at 1727 (TTAB 2008). In comparing the marks, we keep
in mind that “[w]hen marks would appear on virtually
identical goods..., as is the case here, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010), citing Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
Applicant’s mark is ANT-STOP. Opposer alleges a
likelihood of confusion with its registered mark BUG STOP
(and others). Applicant’s mark, as well as opposer’s BUG
STOP mark are in “typed” form, and are therefore “not
limited to any particular rendition of the mark and, in
particular, are not limited to the mark as it is used in
Opposition No. 91158240
44
commerce.” Cunningham v. Laser Golf Corp., 55 USPQ2d at
1847. In evaluating likelihood of confusion based on a
typed or standard character registration, one must consider
“all reasonable manners” in which the mark could be
depicted. INB National Bank v. Metrohost Inc., 22 USPQ2d
1585, 1588 (TTAB 1992). In other words, we must construe
the subject application to cover use of marks which are
similar or identical to those within the scope of the
registration.
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks, and the Board
often begins a comparison of compound marks by determining
which (if any) element is dominant. As the Court of Appeals
for the Federal Circuit observed, “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. Indeed,
this type of analysis appears to be unavoidable.” In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
In this regard, we note that opposer has disclaimed the
descriptive term “BUG” in its respective pleaded
Opposition No. 91158240
45
registration. While we do not ignore disclaimed matter
(which remains part of the mark), disclaimed terms are often
somewhat less significant in forming a commercial
impression, because they are descriptive or generic. In re
N.A.D. Inc., 57 USPQ2d 1872, 1973 (TTAB 2000). We conclude
that the term “STOP” is the dominant portion of opposer’s
BUG STOP registration.
Similarly, applicant’s mark – ANT-STOP – is comprised
of two elements. Although applicant was not required to
submit a disclaimer of the term “ANT” during ex parte
prosecution of its application,33 is quite apparent that the
term “ANT” in applicant’s mark is descriptive of the
identified goods. Applicant ubiquitously describes the
goods it sells under the mark as an “ant control product,”
and one intended for use in killing ants.34 Similar to our
analysis of opposer’s marks, we give the descriptive
component of applicant’s mark somewhat less weight. As with
opposer’s pleaded marks, we conclude that “STOP” is the
dominant element of applicant’s mark.

33 We presume that a disclaimer was not required because the terms
form a “unitary” mark, being physically joined by a hyphen. See
TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1213.05(a)(ii) (6th ed. rev. 2
2010)(Compound Words Formed with Hyphen or Other Punctuation).
34 While applicant’s identification of goods is more broadly
worded, including pesticides for all purposes, a term need not
describe all of the identified goods in order to be descriptive.
E.g., In re Microsoft Corp., 68 USPQ2d 1195, 1200 (TTAB 2003).
Opposition No. 91158240
46
Nonetheless, applicant argues that opposer’s marks “are
at best suggestive of their attendant goods, namely,
products which stop weeds, moles, bugs, and grubs.
Accordingly, Opposer’s marks are at best, weak marks
entitled only to a very narrow scope of protection.” App.
Br. at 39. Applicant does not apply the same analysis to
its own mark, although the comparison is obvious.
Applicant’s mark shares a similar construction to that of
opposer, and if opposer’s marks are suggestive of “products
which stop weeds, moles, bugs, and grubs,” applicant’s mark
is likewise suggestive of products which stop ants.
We generally agree with applicant, to the extent that
we find both parties’ marks to be suggestive, and possibly
not entitled to the widest scope of protection. But
applicant considerably overstates its case in suggesting
that opposer’s marks are “entitled to little if any
protection.” App. Br. at 38. Opposer’s registrations are
presumed valid, Trademark Act § 7(b); 15 U.S.C. § 1057(b),
and absent a counterclaim for cancellation, applicant may
not be heard to argue that they afford opposer no protection
at all. Trademark Rule 2.104(b)(2)(ii). And while strong
marks are entitled to a broader scope of protection than
weak ones, it has often been emphasized that even weak marks
are entitled to protection against confusion. King Candy,
182 USPQ at 109 (“likelihood of confusion is to be avoided,
Opposition No. 91158240
47
as much between ‘weak’ marks as between ‘strong’ marks, or
as between a ‘weak’ and ‘strong’ mark.”).
Applicant also argues that “the STOP feature is
commonly used in the trade among third parties. ... This
plethora of trademark registrations permitted registration
for related goods indicates that the Trademark Office does
not consider the word component STOP to be a protectable
term in this field.” App. Br. at 21-22, 42. We have
considered applicant’s evidence, but find it unconvincing of
the conclusion that the term “STOP” is unprotectable.
First, “third-party registrations relied upon by applicant
cannot justify the registration of another confusingly
similar mark.” In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987) (quoting Plus Products v. Star-Kist Foods,
Inc., 220 USPQ 541, 544 (TTAB 1983)). Moreover, such
registrations are not evidence of use of
the marks shown therein. Thus, they are
not proof that consumers are familiar
with such marks so as to be accustomed
to the existence of similar marks in the
marketplace, and as a result are able to
distinguish between the ... marks based
on slight differences between them.

In re Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB 2006).
In addition, many of the third-party “STOP” registrations
cited by applicant are for significantly different marks or
significantly different goods.35 While applicant did

35 We also note that Registration No. 2438008, for PESTOP, was
cancelled under Trademark Act § 8 in 2007.
Opposition No. 91158240
48
introduce some evidence of third-party use of “STOP” marks,
see Brown Depo. (Jan. 24, 2008), the evidence did not
demonstrate that the extent of such third party use was of
such a high volume and extent as to render “STOP” an
unprotectable term.
Comparing applicant’s mark to opposer’s, we recognize
that the dominant portion of each of the marks is the
identical – albeit suggestive – term “STOP.” Moreover, this
term has the same connotation in both applicant’s mark and
opposer’s, namely, that the product will “STOP” the named
pest – a bug in the case of opposer’s BUG STOP mark.
Of course, as noted previously, we must consider the
marks in their entireties. Even descriptive and disclaimed
matter can form part of the overall impression of the mark,
so it cannot be ignored. Am. Home Prods. Corp. v. B.F.
Ascher & Co., Inc., 473 F.2d 903, 176 USPQ 532, 533 (CCPA
1973). This may be especially the case where no element of
the involved marks is highly distinctive. Western Union
Telegraph Co. v. Graphnet Sys., Inc., 204 USPQ 971, 976
(TTAB 1979). The marks as a whole obviously differ in that
applicant’s mark includes the term “ANT,” while opposer’s
mark includes the term “BUG.”
Nonetheless, in comparing ANT-STOP with opposer’s BUG
STOP mark, we find significant similarities. While the term
“BUG” formally identifies “a hemipterous insect,”
Opposition No. 91158240
49
DICTIONARY.COM UNABRIDGED (based on the Random House Dictionary
(2010)), www.dictionary.reference.com (last visited Sept.
28, 2010), it is also used “loosely” to refer to “any insect
or insectlike invertebrate.” Id. (second definition). The
colloquial definition of bug would include insects like
ants, and the marks would thus have a very similar
impression – that of something stopping an insect on the one
hand (BUG STOP), and something stopping an ant (which is a
kind of insect) on the other. Although the marks are
clearly not identical, “[w]hen 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 Am., 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
This factor weighs in favor of a finding of a
likelihood of confusion as to opposer’s ‘338 Registration
for BUG STOP.
III. Conclusion
We have carefully considered all of the parties’
evidence and argument, including that which we have not
specifically discussed. We conclude that registration of
applicant’s ANT-STOP mark for the identified goods is likely
to cause confusion with opposer’s registered BUG STOP mark
pursuant to Trademark Act § 2(d). In doing so, we note in
Opposition No. 91158240
50
particular that the goods, channels of trade, and potential
purchasers relevant to the subject application and opposer’s
‘338 Registration are identical in part, and that the marks
are similar in their wording, construction, and connotation.
While we have also taken into account the inherent weakness
of the marks, we do not find that such weakness eliminates
in this case the likelihood that similar marks used on
identical goods would cause confusion.

Decision: The opposition is SUSTAINED, and registration to
applicant is refused.