William Coden

Trademark Trial and Appeal Board

Mar 26, 2012

No. 77899687 (T.T.A.B. Mar. 26, 2012)

Mailed: March 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re William Coden
________

Serial No. 77899687
Filed December 22, 2009
_______

Brad M. Behar, Brad M. Behar & Associates, PLLC, for
applicant.

Gene V.J. Maciol II, Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_______

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

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant William Coden has applied to register
FIDO’S FENCES (in standard characters) for “batteries,” in
International Class 9, and “installing pet containment
systems,” in International Class 37.1 The examining
attorney has issued a final refusal to register applicant’s
mark in view of the prior registration of FIDO-SHOCK

1 Based on allegations of first use and use in commerce as of
December 14, 2009 (Class 9) and August 1, 1989 (Class 37).
Applicant has complied with the examining attorney’s requirement
to disclaim the exclusive right to use “FENCES” apart from the
mark as shown.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77899687

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(typed) for “pet deterrent electric fences,”2 and the
examining attorney’s determination that registration of
applicant’s mark would be likely to lead to confusion with
it. Trademark Act § 2(d); 15 U.S.C. § 1052(d). Applicant
appeals from the examining attorney’s final refusal.
We affirm.
I. Applicable Law

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. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also 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.”

2 Registration No. 1260835, issued December 13, 1983; filings
under Trademark Act §§ 8, 9, and 15, accepted, granted, and
acknowledged.
Serial No. 77899687

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Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
II. Discussion

A. 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. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). 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. “[I]n 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
Serial No. 77899687

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unavoidable.” In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). While our ultimate
decision must be based on the marks in their entireties, we
begin by addressing a number of arguments regarding various
aspects of them.
As noted, applicant’s mark is FIDO’S FENCES (in
standard characters). During examination, the examining
attorney required applicant to submit a disclaimer of
FENCES with respect to applicant’s International Class 37
services (“installing pet containment systems”) because it
was alleged to be descriptive of applicant’s services:
The wording ... immediately identifies the nature of
the services provided. Applicant installs a form of
electronic fence known as a pet containment system.
... Because other entities have a commercial need to
be able to use the wording “Fences” in marketing of
similar services, no single trademark owner may
appropriate exclusive rights to the descriptive
wording.

Ofc. Action at 4 (April 1, 2010). Applicant complied with
this requirement without argument, submitting a disclaimer
of the exclusive right to use “FENCES” apart from the mark
as shown. Resp. to Ofc. Action (Sept. 30, 2010).
Although we construe applicant’s disclaimer as
applying to its International Class 37 services only,3 we

3 In his brief, the examining attorney characterizes this as a
“disclaimer of ‘fences’ for all classes....” Ex. Att. Br. at 2.

Serial No. 77899687

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nonetheless find “FENCES” to be (at least) highly
suggestive when used in connection with applicant’s Class 9
“batteries.” The specimen submitted in support of
applicant’s Class 9 goods indicates that the identified
“batteries” are specifically suited for and sold as
“replacement batter[ies]” for “pet containment” systems
such as the “R21, R51, Microlite® [and] Invisible Fence®
Brand.” “FENCES” is thus (at least) highly suggestive of
the specific purpose for which applicant’s batteries are
designed and sold, i.e., for use with electronic fence

We disagree. Applicant was specifically required to enter a
disclaimer only with respect to its Class 37 services. Ofc.
Action (April 1, 2010). In its next communication with the
Office, applicant proffered a disclaimer “[i]n response to the
Office Action dated April 1, 2010....” Resp. to Ofc. Action
(Sept. 30, 2010). While applicant’s disclaimer was not
explicitly limited to Class 37, neither was it clear that it was
intended to be anything more than what was required in the
previous Office action in response to which it was filed, i.e., a
disclaimer with respect to Class 37. The examining attorney
accepted the disclaimer without comment – and specifically
without noting that he construed it to apply to both classes.
Under the circumstances, we think it is reasonable to construe
the amendment as applying to Class 37 only. While it would have
been better practice for applicant to have been explicit in
submitting a disclaimer intended to apply to only one class,
there is no indication in this case that applicant intended to
offer a disclaimer broader than what was required, and we see no
reason why it would have done so. While it was not unreasonable
for the examining attorney to construe this facially unrestricted
disclaimer as applying to both classes, that should have been
made clear upon accepting the disclaimer. Instead, that
construction only became clear after the examining attorney filed
his brief, which is generally too late for applicant to submit a
corrective amendment. See Trademark Rule 2.142(d). Given the
facts at hand, we find it appropriate to construe applicant’s
disclaimer as limited to what was required, i.e., a disclaimer of
“FENCES” with respect to applicant’s class 37 services only.
Serial No. 77899687

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systems. We thus agree with the examining attorney, and
find that the term “FENCES,” as used in applicant’s mark,
holds little source-identifying capacity. See Ex. Att. Br.
at 4. In other words, purchasers of applicant’s goods and
services are likely to give “FENCES” relatively little
weight in distinguishing applicant’s mark from those of
others, and instead are likely to look to other elements of
the mark as primarily indicating the source of the
identified goods and services.
Likewise, the examining attorney argues that “SHOCK,”
as a component of the cited registrant’s mark, FIDO-SHOCK,
is also weak: “‘Shock’ describes a feature of Registrant’s
electric deterrent fences ... namely, [that] they
activate/impart an electric shock upon the pet or animal.”
Id. Applicant does not dispute the meaning of the term
“SHOCK” as used in relation to the cited registrant’s
goods, and we again agree with the examining attorney and
find that this term is a weak source-identifier for the
registrant’s goods.4

4 Unlike the “FENCES” in applicant’s mark, “SHOCK” was not
disclaimed in the registrant’s FIDO-SHOCK mark. “When a compound
word is formed by hyphenating two words or terms, one of which
would be unregistrable alone, no disclaimer is necessary.”
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1213.05(a)(ii) (8th
ed. 2011). Accordingly, because the prior registrant’s mark is a
compound word formed with a hyphen, the absence of a disclaimer

Serial No. 77899687

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Considering the weakness of “FENCES” and “SHOCK,” the
examining attorney argues that “FIDO” or “FIDO’S” is the
dominant element of both applicant’s mark and that of the
prior registrant. Applicant disagrees, arguing that the
examining attorney has both dissected the mark and has
given too much weight to “FIDO” or “FIDO’S.”
Applicant argues that a likelihood of confusion
analysis must be predicated upon consideration of the marks
as a whole, and that it is error to ignore any part of
either mark, App. Br. at 9-10, and that “[t]o summarily
conclude that FIDO’S FENCES and FIDO-SHOCK have similar
commercial impressions because they share variations of the
same word ‘FIDO’ while ignoring the remainder of each mark
is incorrect.” We agree with the principles applicant
recites. We disagree, however, that the examining attorney
has made a “summar[]y conclu[sion],” and more importantly,
we do not do so either.
It is hardly necessary to cite cases for the
proposition that marks need not be identical to find a
likelihood of confusion, and that the presence in one, the
other, or both marks of elements which are not common to

in the cited registration is not an indication that “SHOCK” is
not descriptive with respect to the registrant’s “pet deterrent
electric fences.”
Serial No. 77899687

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both does not preclude such a finding. Moreover, as
explained by the examining attorney, Ex. Att. Br. at 6,
while the analysis must ultimately rest on a comparison of
the marks in their entireties, “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....” In re Nat’l Data Corp., 224 USPQ at 751.
Here, the examining attorney has established – and we
agree – that the terms “FENCES” in applicant’s mark and
“SHOCK” in the cited registrant’s mark are descriptive or
highly suggestive, and thus entitled to less weight in
comparing the marks. In doing so, the examining attorney
has not impermissibly “dissected” the mark, but has simply
concluded that, “for rational reasons,” less weight should
be given to these elements in considering the marks.
Nonetheless, those terms have not been “ignored” as
applicant contends.
Applicant also argues that the examining attorney gave
too much weight to the terms FIDO and FIDO’S, arguing that
“FIDO is not arbitrary, distinctive or dominating,
Serial No. 77899687

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particularly for pet related products.”5 App. Br. at 11.
To the contrary, we assume that the term FIDO’S in
applicant’s mark is distinctive, as there is simply no
evidence to the contrary.6 We assume that applicant means
that FIDO is suggestive as a mark for pet-related goods and
services (because FIDO “is a common nickname for a pet
dog,” and that FIDO is a component of the marks in “other
applications and pet related products,” App. Br. at 12).
But even assuming the suggestiveness of FIDO (or FIDO’S),
that fact is hardly dispositive of the question of
likelihood of confusion:
The description of marks as “weak” or “strong,” and
references to the “breadth of protection” to be given
a mark, have served as a convenient type of shorthand
in the literature of opinions concerned with
likelihood of confusion.... Such expressions,

5 Applicant’s citation of In re Sweet Victory Inc., 228 USPQ 959,
961 (TTAB 1986), is inapposite. In that case, we reversed a
refusal to register the applicant’s GLACÉ LITE (stylized) mark in
view of the prior registration of GLACE CONTINENTAL (stylized),
both for goods including “sherbet.” The Board found that GLACÉ
in applicant’s mark and GLACE in the cited registration were both
merely descriptive, and that when the marks were considered as a
whole, confusion was not likely. By contrast, in the case at bar
it is not the common wording that is descriptive, but the wording
that is not common to both marks.
6 According to applicant, the “examiner has pointed out” that
“FIDO is a traditional name for a pet dog...,” and that “‘FIDO’
... is a common nickname for a pet dog....” App. Br. at 11, 12.
What the examining attorney actually said was: “‘Fido’ is not
synonymous with dog. Instead,‘Fido’ is a name.” Ex. Att. Br. at
5. We agree with the examining attorney. Even if FIDO is a name
for a dog, that fact does not demonstrate that it is descriptive
or otherwise lacks distinctiveness for the goods and services at
issue here.
Serial No. 77899687

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however, should not obfuscate the basic issue.
Confusion is confusion. The likelihood thereof is to
be avoided, as much between “weak” marks as between
“strong” marks, or as between a “weak” and a “strong”
mark.

King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
Finally, we note applicant’s argument that its mark,
which includes the possessive term “FIDO’S,” differs from
the cited registration, which comprises the term “FIDO.”
App. Br. at 11; Reply Br. at 1-2 (“Surely there can be no
dispute that ... there is some legal difference between a
mark in singular form and possessive form.”). While we
will not ignore any part of the marks at issue, the fact is
that there is very little difference between a term and its
possessive form. As in most such cases, the terms here
(FIDO vs. FIDO’S) look and sound nearly identical, and
their meaning is very close; both conjure up the idea of
FIDO, the only difference being that in the case of the
possessive, FIDO owns something, in this case, “fences.”
The court of appeals faced a very similar argument in
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004). Applicant had argued that “the Board
improperly dissected the two marks in violation of the
anti-dissection rule,” in part because it gave little
weight to the fact that its mark included the term GASPAR,
Serial No. 77899687

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while the cited registration used the possessive GASPAR’S.
The court disagreed:
After discounting any commercial impression of
JOSE and GOLD, Chatam is left with GASPAR as the
dominant feature of its mark. In comparison, the
dominant feature of the registered mark is
GASPAR'S, which is simply the possessive form of
the surname GASPAR. Viewed in their entireties
with non-dominant features appropriately
discounted, the marks become nearly identical.
That is, the dominant feature of Chatam's mark,
GASPAR, is also the dominant feature of the
registered mark, GASPAR'S, albeit in possessive
form. Thus, the Board correctly perceived that
GASPAR and GASPAR'S convey a similar appearance,
sound, connotation, and commercial impression.

Id. at 1946-47. See also, Hunt Foods & Indus., Inc. v.
Gerson Stewart Corp., 367 F.2d 431, 151 USPQ 350 (CCPA
1966) (likelihood of confusion found between HUNT and
HUNT’S, used on significantly different goods); In re
Binion, 93 USPQ2d 1531; 1534 (TTAB 2009) (finding BINION
and BINION’S “virtually identical”); Georgia-Southern Oil
Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990) (“The
marks are virtually identical, differing by only a
possessive letter ‘s’ in user's mark.”); In re Curtice-
Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding
McKENZIE and McKENZIE’S nearly identical).7 Consistent with

7 Similarly, it has long been held that the difference between
plural and singular word forms is of little consequence in
comparing marks under Trademark Act § 2(d). E.g., Wilson v.
Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); Chicago

Serial No. 77899687

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the cited cases, we conclude that there is, in fact,
virtually no difference between “FIDO’S,” as used in
applicant’s mark and “FIDO,” as it appears in the cited
registration.
In sum, we find that the dominant element of
applicant’s mark – FIDO’S – is virtually identical to the
dominant element of the cited registrant’s mark – FIDO – in
appearance, sound, meaning, and commercial impression.
Moreover, we find that the other wording in both marks –
FENCES in applicant’s mark and SHOCK in the cited
registrant’s – is either descriptive or highly suggestive
of the relevant goods, and thus of relatively little
trademark significance.
Considering the marks in their entireties, we find
applicant’s mark, FIDO’S FENCES, to be significantly
similar to the cited registrant’s FIDO-SHOCK mark, and that
the similarities between the marks outweigh their
differences. While we recognize that the marks are not
identical, potential customers generally do not have the

Bears Football Club v. 12th Man/Tenn. LLC, 83 USPQ2d 1073, 1077
(TTAB 2007). Likewise, the possessive (or plural) form is of
little or no consequence when considering whether a mark is
primarily merely a surname, In re I. Lewis Cigar Mfg. Co., 205
F.2d 204, 98 USPQ 265, 267 (CCPA 1953), nor was it found
sufficient to change the meaning of a mark refused as scandalous,
In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996).
Serial No. 77899687

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luxury of making side-by-side comparisons, relying instead
on their imperfect recollections of marks. Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corp., 206 USPQ 255, 259 (TTAB 1980). We find that given
the marks at issue here, customers are likely to find
FIDO’S or FIDO to be the dominant elements of these marks,
and to remember that term as the salient feature of them.
This factor supports a finding of likelihood of
confusion.
B. The Similarity or Dissimilarity and Nature of the
Goods or Services

The goods and services identified in the subject
application are “batteries” and “installing pet containment
systems.” The goods in the cited registration are “pet
deterrent electric fences.” Relying on specimens of use
from the file of the cited registration, applicant argues
that “[r]egistrant’s product is an above ground electrified
metal wire fence intended for use primarily on large farm
animals,” and notes that the “[r]egistrant identifies
itself as ‘Leaders in Cattle Fencing,’ ‘Leaders in Equine
Fencing,’ and ‘Leaders in Deer Exclusion’ ....” App. Br.
at 5. By contrast, applicant explains that the systems
which are the subject of its installation services (and
Serial No. 77899687

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presumably the systems for which its batteries are
intended) are meant to contain or restrict pets and
utilize a radio signal, a transmitter typically
connected to a hidden or buried wire, and a
remote receiver attached to the dog’s collar.
The buried wire is not electrified and does not
cause shock upon contact with it. Rather, the
wire is used to transmit a harmless radio signal
in a loop using the transmitter. The receiver is
used to detect the presence and strength of the
radio signal to teach the pet to stay within the
area defined by the loop of wire.

App. Br. at 6.
While applicant may be correct in its description of
the registrant’s actual goods and its own goods and
services, this argument misses the point. Applicant seeks
a trademark registration covering the goods and services
recited in its application. Because the application
defines the scope of the registration which applicant
seeks, we must consider the goods and services set out in
it, and not the more particular or different goods and
services in connection with which applicant claims to
actually use its mark, and the same goes for our
consideration of the registrant’s goods.8 See, e.g.,
Octocom Sys. Inc. v. Houston Computers Svcs. Inc., 918 F.2d

8 While specimens of use can be helpful in understanding many
things about the relevant goods and services, they do not limit
the goods and services set out in an application or registration.
Meyer Chem. Co. v. Warner-Lambert Pharm. Co., 263 F.2d 344, 120
USPQ 483, 484 (CCPA 1959).
Serial No. 77899687

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937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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.”); In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986).
Accordingly, we cannot consider applicant’s extraneous
evidence and argument about the nature of the respective
goods and services as limiting those goods and services.
We therefore construe the registrant’s goods to include all
types of “pet deterrent electric fences,” not merely those
which are above ground or those which “electrocute, [or]
‘shock,’ the pet” (and we do not consider at all any such
fences intended for livestock or wild animals, which are
not “pets”). App. Br. at 5. Likewise, we are constrained
to consider applicant’s services to include the
installation of all types of “pet containment systems,”
including those which are not installed underground, or use
radio signals to activate a receiver on the pet’s collar.9

9 Applicant offered in its brief to amend its services to
“installing pet containment systems utilizing radio signals,
transmitters and receivers,” if doing so “would help to overcome

Serial No. 77899687

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Thus construed, it is clear that applicant’s installation
services could be rendered for goods identical, or at least
very closely related to, the cited registrant’s goods.
Applicant argues that the registrant’s goods “deter” pets
and the systems applicant installs “contain” pets, although
we see little difference for the most part. Applicant’s
containment systems could certainly deter pets from
entering some areas, or deter them from leaving their area
of confinement. Likewise, the registrant’s deterrent
fences would include those used to contain deter pets from
leaving or entering an area.
We further find that applicant’s class 9 batteries are
closely related to the registrant’s “pet deterrent electric
fences.” As noted, we consider the registrant’s goods to

the refusal.” App. Br. at 6-7. The examining attorney has not
accepted the amendment, stating that it would not alleviate the
likelihood of confusion. Ex. Att. Br. at 15-16.
Applicant’s proposed amendment should have been made in a
separate paper, with a request to remand the application to the
examining attorney for consideration (and with the requisite
showing of good cause for a remand). See TRADEMARK BOARD MANUAL OF
PROCEDURE (“TBMP”) § 1203.01 (3d ed. 2011). Although the
examining attorney should have alerted the Board to applicant’s
amendment, TBMP § 1205.01, the issue is academic at this point,
and we decline to remand the application for entry and
consideration of the proffered amendment. Applicant has not
shown good cause for a remand at this late juncture, and its
failure to propose this amendment earlier or to follow the proper
procedure for requesting a remand on appeal have required the
expenditure of time and effort in briefing and considering the
appeal, would delay this matter further, and may require
rebriefing if we remanded the application. We accordingly give
applicant’s proposed amendment no further consideration.
Serial No. 77899687

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include systems identical or highly similar to those
applicant installs, i.e., those for which applicant’s
batteries are designed and sold. Such a battery is clearly
related to the system in which it is used, and for which it
is designed and sold.
While the goods and services at issue are not
identical, we find that, properly construed, they are
closely related. Applicant installs and sells batteries
for systems identical or closely related to the
registrant’s electric fences. While installation is
clearly not the same thing as selling goods, it is apparent
that at least some purchasers of such goods will hire
someone such as applicant to install them, and such
purchasers are likely to assume a connection between such
goods and installation services when sold under similar
marks.
This factor supports a finding of likelihood of
confusion.
C. Channels of Trade; Classes of Purchasers

Applicant argues that its channels of trade and class
of customers “are significantly different” from those of
the cited registrant. E.g., App. Br. at 1. This argument
is doomed to fail for the same reasons as its argument
regarding the goods; the channels of trade and classes of
Serial No. 77899687

18

purchasers are determined by the goods and services as
identified in the application:
[W]here the goods in a cited registration are
broadly described and there are no limitations in
the identification of goods as to their nature,
type, channels of trade or classes of purchasers,
it is presumed that ... the identified goods move
in all channels of trade that would be normal for
such goods, and that the goods would be purchased
by all potential customers.

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)). Because neither the cited registration nor
the application at bar are limited as to their channels of
trade or intended customers, and because the electric
fences sold by the registrant overlap with the deterrent
systems installed by applicant, we must consider that
applicant’s installation (and battery) customers could
include those who bought electric fences from the
registrant.
Further, while goods and installation services are not
by necessity offered in the same channels of trade, the
record shows that they are in this case. The examining
attorney has submitted evidence showing that purveyors of
pet containment systems also provide installation services.
See, e.g., Invisible Fence http://www.invisiblefence.com/
product_solutions/outdoor/professional_installation/
Serial No. 77899687

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index.asp (April 1, 2010); Pet Stop http://www.dogfenceky
.com/ (April 1, 2010); Stay Dog Family Pet Specialists
http://www.staydog.net/ (April 1, 2010); Dog Guard
http://www.dogguardofsc.com/ (April 1, 2010). This
evidence demonstrates that purveyors of pet fencing systems
often offer installation services, and that such goods and
services are sold in the same channels of trade.
This factor also supports a finding of likelihood of
confusion.
D. Applicant’s Prior Registration
Applicant complains that the examining attorney has
“dismissed and not given due weight to” a now-cancelled
previously owned by him. App. Br. at 4. Applicant was the
owner of a registration for FIDO’S FENCES for related
services, namely, “retail outlet services in the field of
electronic dog containment fencing systems.”10 Applicant’s
prior registration was cancelled on December 22, 1998, for
failure to file a declaration of continuing use under
Trademark Act § 8. Applicant notes that his prior
registration issued notwithstanding the existence of the
same registration which is cited against it now, and that

10 Reg. No. 1695106 (FENCES disclaimed), filed July 8, 1991,
issued June 16, 1992. Cancelled December 22, 1998.
Serial No. 77899687

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the two registrations coexisted on the Principal register
for six years.
While it is unfortunate that applicant’s prior
registration was not maintained, our precedent is clear; a
cancelled or expired registration has no probative value
other than to show that it once issued. Sunnen Prods. Co.
v. Sunex Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
Importantly, the presumptions which benefit a subsisting
registration on the Principal Register, see Trademark Act
§ 7(b), die with the registration. Anderson, Clayton & Co.
v. Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA 1973)
(“Whatever benefits a registration conferred upon appellee
were lost by him when he negligently allowed his
registration to become canceled.”); In re Hunter Publ’g
Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation “makes the
question of registrability ‘a new ball game’”). Contrary
to applicant’s argument, his prior registration is not
evidence that his mark was in use when it registered (or
that it has been in use since then), that it was validly
registered, or that there was no likelihood of confusion
Serial No. 77899687

21

with the mark in the cited registration at the time of
applicant’s prior registration, or now.11
Finally, to the extent applicant argues that the USPTO
must take applicant’s old registration favorably into
consideration when examining its new application, see Reply
Br. at 3, we simply disagree. A determination of the
registrability of each application must be made on its
merits, based on the evidence of record in that
application. Circumstances change and the examining
attorney may have access to different evidence than was
previously available. Additionally, the services
identified in the prior registration differ from the goods
and services identified in the instant application. We
acknowledge that, had applicant maintained his prior
registration, he would now have a registration similar to
the one he seeks. However, that did not happen, and the
Office must apply the same standard to the examination of

11 Applicant also notes that the cited registrant could have
opposed his prior application, or could have sought cancellation
of it when it was registered but that the registrant “did nothing
of the sort.” App. Br. at 9. This argument might be appropriate
as a defense in an inter partes proceeding, but it cannot be
considered in an ex parte matter in which the registrant cannot
be heard. See In re Nat’l Distillers & Chem. Corp., 297 F.2d
941, 132 USPQ 271, 276 (CCPA 1962) (“the clear intent of Congress
was that [Trademark Act §] 19 be limited to inter partes
proceedings, and this for the very sound reason that the
equitable principles of laches, estoppel and acquiescence are
based on facts and should not be applied either in favor of or
against one not a party to the proceeding”).
Serial No. 77899687

22

applicant’s new application as it applies to any other
application. Applicant is not entitled to favorable
treatment because it inadvertently allowed its prior
registration to be cancelled.
E. Lack of Actual Confusion
Applicant argues that he has been using his mark
concurrently with the cited registrant for over twenty
years without actual confusion, and that this indicates
that confusion is not likely. App. Br. at 7-9. The
examining attorney disagrees.
As applicant correctly notes, the issue before us is
whether there is a likelihood of confusion, not whether
there is actual confusion. But while evidence of actual
confusion is highly probative of whether confusion is
likely, the lack of actual confusion rarely indicates quite
so clearly that confusion is not likely. It is true that
in an appropriate situation, the lack of actual confusion
can be a factor in the analysis. See Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1259-60 (Fed. Cir. 2011). But such circumstances are
infrequent, and rarely, if ever, arise on an ex parte
record. In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003) (citing J.C. Hall Co. v.
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23

Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA
1965)).
The problem is one of proof. The lack of actual
confusion is only relevant if and to the extent that
confusion – if it were likely – would have both occurred
and become known. But evidence of actual confusion is
typically hard to come by; even when it occurs, some
customers won’t know they’ve been confused, some are
reluctant to complain, and still others may be happy with
the goods or services they have received and feel no reason
to complain. Moreover, when the relevant parties make only
regional or otherwise limited use of their marks, or if
either one (or both) have low sales or engage in little
advertising, there may be few opportunities for actual
confusion to come to light, even if confusion would be
likely were the parties to engage in robust trade in the
same markets (a circumstance we must assume). Therefore,
the lack of known instances of actual confusion is not
usually considered a significant mitigating factor unless
there is evidence of prolonged and significant market
opportunities for confusion to arise. E.g., Citigroup, 98
USPQ2d at 1259 (lack of actual confusion a factor where
there was no evidence of confusion despite concurrent use
in same geographic markets since 1975, with nineteen
Serial No. 77899687

24

branches in close vicinity, and renown and heavy
advertising of opposer’s marks).
Here, applicant claims to have used his mark
concurrently with the cited registrant for more than twenty
years without confusion. Nonetheless, there is no
significant evidence showing the duration,12 regional area,
or the nature and extent of applicant’s use or that of the
cited registrant, and “uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value.” In re Majestic Distilling, 65 USPQ2d
at 1205 (citing In re Bissett-Berman Corp., 476 F.2d 640,
177 USPQ 528, 529 (CCPA 1973)). Applicant points to a few
pages in the record from his website and that of the cited
registrant in arguing that this record does include
“evidence pertaining to the nature and extent of the use by
applicant and registrant [from which we may] ascertain[]
whether there has been ample opportunity for confusion to
arise.” App. Br. at 8. To the contrary, the meager
evidence in this record does not reveal, for instance, the
regions in which applicant and the registrant operate,

12 Applicant’s reliance on the asserted dates of use in his now-
cancelled registration is misplaced. Those dates are not proof
of such use, even for a live registration, and as noted above,
applicant’s cancelled registration is not competent evidence of
anything.
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25

whether they sell their goods and services through brick-
and-mortar stores (and if so, how many and where), whether
they engage in advertising other than via their web sites
(and if so, of what nature, through what media, in what
area, and with what penetration), the levels of sales each
has maintained over the years, and the degree of public
renown each mark has garnered. While applicant may have
been able to supply some of this information, the analysis
in which he asks us to engage clearly requires significant
information that is in the hands of the registrant, who is
not a party to this proceeding (and who may have some
questions of its own).
Absent evidence that applicant and the cited
registrant have made prolonged and significant use of their
marks concurrently in the same marketplace without
confusion, we cannot conclude that the lack of known
confusion is probative of whether confusion is likely. As
is usually the case in ex parte proceedings, the record
here does not support such a finding. In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984).
We find this factor to be neutral in our analysis.
Serial No. 77899687

26

F. The Number and Nature of Similar Marks in Use on
Similar Goods

Applicant has submitted evidence of the registration
of a number of marks comprising the term FIDO.13 Applicant
argues that “[i]f evidence establishes that the consuming
public is exposed to third-party use of similar marks or
similar goods, this evidence ‘is relevant to show that a
mark is relatively weak and entitled to only narrow scope
of protection.’” App. Br. at 13 (quoting Palm Bay, 72
USPQ2d at 1693 (Fed. Cir. 2005)).
Applicant is, of course, correct on the law. As
quoted, the Federal Circuit was discussing the sixth
du Pont factor, “the number and nature of similar marks
in use on similar goods.” Du Pont, 177 USPQ at 567
(emphasis added). But the registrations applicant
submitted for this purpose do not prove his point. We
first point out that none of the registrations is for pet
containment systems, electric fences, installation
services, batteries, or related goods. Moreover, this
factor concerns third-party marks which are in use. If the
marks are not in commercially significant use, the public

13 Applicant says he submitted “over fifty” such registrations; we
count thirty-six attached to applicant’s September 30, 2010,
response, although the exact number is not particularly
important.
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27

is not exposed to them, and we have no basis to presume
that the public views them as weak. As the court noted in
Palm Bay, “[t]he probative value of third-party trademarks
depends entirely upon their usage.” 72 USPQ2d at 1693
(citing Scarves by Vera, Inc. v. Todo Imp., Ltd., 544 F.2d
1167, 192 USPQ 289, 294 (2d Cir. 1976)).
Here, applicant has introduced no evidence to show
whether and to what extent the marks in the cited third-
party registrations are in commercially significant use.
As the court of appeals noted (in response to a complaint
that the Board “fail[ed] to give weight to a number of
third-party registrations ... in which the dominant words
are Lily, Lilly, or Lilli”):
All that the third-party registrations
demonstrate is that their owners believe the term
“LILLY” to be appropriate for a trademark for
women's dresses. The question still remains
whether the marks viewed as a whole are
confusingly similar. The existence of third-
party registrations of similar marks has very
little weight on this question. As pointed out
in In re Helene Curtis Indus., Inc., 305 F.2d
492, 134 USPQ 501 (CCPA 1962), the existence of
these registrations is not evidence of what
happens in the market place or that customers are
familiar with their use. Moreover, as the court
held there, the existence of confusingly similar
marks already on the register will not aid an
applicant to register another confusingly similar
mark.

Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406, 407 (CCPA 1967) (citation revised); see also AMF
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28

Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269-70 (CCPA 1973) (third-party registrations are not
evidence that such marks are in use or that consumers are
familiar with them); In re Hub Distrib., Inc., 218 USPQ
284, 286 (TTAB 1983) (“third party registration evidence
proves nothing about the impact of the third-party marks on
purchasers in terms of dilution of the mark in question or
conditioning of the purchasers as to their weakness in
distinguishing source”).
Because applicant’s third-party registration evidence
does not demonstrate that the registered marks are in
commercially significant use, or that the public is aware
of them, and because they are not for similar goods or
services, they are of little help in determining likelihood
of confusion.
We consider this factor neutral.
III. Conclusion
We have fully considered all of the evidence and
argument of record, including any matters which we have not
specifically noted. For the reasons discussed, and
considering both marks in their entireties, we find
applicant’s mark significantly similar to that in the cited
registration, and we find applicant’s goods and services to
be substantially related to the registrant’s goods. We
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29

further find that the channels of trade for such goods and
services overlap. In light of these findings, we conclude
that applicant’s mark, used on or in connection with the
identified goods and services, would give rise to a
likelihood of confusion in view of the mark and goods in
the cited registration. Trademark Act § 2(d). We have
considered applicant’s arguments and evidence concerning
his prior registration, the lack of actual confusion, and
third-party registrations, but find that they do not merit
a different result.

Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.