Test Your TTAB Judge-Ability On This Section 2(d) Refusal of "EZ DOG & Design" for Animal Toothbrushes
The Examining Attorney refused registration of the mark EZ DOG & Design (shown immediately below) for "toothbrush, namely, for animal use," finding it likely to cause confusion with the registered mark EZEEDOG & Design shown next below, for various goods including "brushes for pet care." The Examining Attorney submitted a single third-party registration that included both animal brushes and toothbrushes. So what do you think? Are the goods and marks too close? In re Benedent Corporation, Serial No. 77666733 (March 14, 2011) [not precedential].
The Examining Attorney maintained that the marks are highly similar and (focusing on brushes) the goods overlapping but otherwise closely related. Applicant bristled, and argued otherwise.
According to the Examining Attorney, the term "brushes for pet care" is broad enough to cover "toothbrushes for animal use." The Board disagreed:
A toothbrush is a specific item that is called a "toothbrush"; the term "brushes for pet care" has a different meaning, identifying brushes used in grooming the coats of animals. Certainly nothing in the record leads us to conclude that the term "brushes for pet care" would ever be presumed to include toothbrushes for animals.
Alternatively, the Examining Attorney contended that third-party registrations demonstrate that pet brushes and toothbrushes may emanate from a single source. But the Board found that the EA was barking up the wrong tree. Of the four registrations submitted, only one includes both toothbrushes for animals and brushes for pets. The Board refused to consider one registration "as indicative of what is occurring in the marketplace."
As to channels of trade, the PTO's evidence again fell short. It included pages from the websites of two national pet-supply chains, but as to one, the products do not appear side-by-side on the same screen, and as to the other, the two products are sold under different trademarks.
Turning to the marks, the Board agreed with Applicant that the differences are "significant" and that the "stark dissimilarities in appearance engender quite different commercial impressions."
[T]he degree of stylization in applicant's entire mark pushes it toward a gray region between pure design marks, which cannot be vocalized, and word marks which are clearly intended to be vocalized. That is, although applicant’s mark contains letters that one eventually recognizes as "EZ DOG," in many ways it has more the feeling of a design mark. We conclude that this visual character of applicant's mark dominates the commercial impression conveyed by the mark.
By contrast, while the cited registered mark is a composite mark having a prominent design feature, it is still primarily a word mark.
Therefore, although the literal portions of the marks are phonetically equivalent, that fact is not determinative.
Unlike some types of consumer goods (e.g., children's toys), animal toothbrushes do not seem to be the kind of item that persons recommend by brand. Instead, consumers may simply peruse the store aisle containing health and dental products for animals. The pet owner in search of such a device is likely looking for a particular design of pet toothbrush – e.g., one having a single set of bristles, dual ended, three separate heads, plastic finger toothbrush, etc.
In the context of the marketing of the subject goods, "the strong dissimilarities in the visual appearances of the marks and the consequent differences in commercial impressions outweigh the similarity in pronunciation and meaning of the words contained within the marks."
And so the Board reversed the refusal.
TTABlog comment: What do you think of the Board statement about how consumers are likely to go about shopping for animal toothbrushes? Is this something that falls within the realm of judicial notice? Should the Board have relied on this point without evidence to support it?
Text Copyright John L. Welch 2011.