Finding Cat, Dog, and Human Supplements Related, TTAB Sustains ENSURE Opposition to CATSURE and DOGSURE
In December 2010, more than four years into the matter, the parties to this Section 2(d) opposition opted for the Board's ACR procedure, which yielded a decision eleven months later. The Board sustained Abbott's opposition to registration of CATSURE and DOGSURE for food supplements for cats and dogs, respectively, finding the marks likely to cause confusion with the registered mark ENSURE for nutritional products and supplements. Evidence that the involved products are "comparable," and that people substitute ENSURE products for CATSURE or DOGSURE supplements proved to be crucial. Abbott Laboratories v. Pet-Ag, Inc., Opposition No. 91170148 (November 22, 2011) [not precedential].
Family of Marks: Abbott feebly argued that it owns a family of "-sure" marks (ENSURE, PEDIASURE, NEOSURE, and PROSURE), but that dog wouldn't hunt. Abbott stipulated that it never used those marks together in any advertisement or brochure, and it provided no direct evidence that it promoted the marks as a family or that the public perceives a family of marks.
Fame of ENSURE?: As to inherent strength of the ENSURE mark, the Board found that the mark is "at worst somewhat suggestive." Pet-Ag argued that the mark is weak because of its similarity to the common word "insure," but the Board could find no connection between the meaning of "insure" and the ENSURE product. As to commercial strength, Abbot proved sales of more that $6 billion from 1972 to 2006, but there was no evidence regarding market share. Advertising expenditures were large, but there was no direct evidence of brand recognition by the general public. The Board therefore found the proofs insufficient to establish fame for Section 2(d) purposes, but it did find the mark to be "commercially strong."
Strength of ENSURE: Pet-Ag contended that widespread us of the suffix "-sure" for food supplements weakened the ENSURE mark; it offered 70 third-party registrations for such marks, with proof of use for all but 16. Not surprisingly, the Board found the probative value of the 16 use-less registrations to be minimal. As to the rest, however, the Board agreed that they have probative value, but only 17 were in the field of animal supplements and only three of those appeared to cover pet food supplements. Nonetheless, the Board found that this factor favored Pet-Ag.
The Marks: The Board deemed the marks to be "closer in their overall similarities than in their differences," and "sufficiently similar in terms of their overall commercial impression" that confusion is likely.
The Goods: Although similar in their intended usages, the involved goods are meant for different users: feline and canine, on the one hand, human on the other. Media references called the involved products "comparable," and although Abbott does not promote its ENSURE brand products for use with pets, the evidence included many consumer comments indicating that "people use ENSURE supplement or meal replacement for their dogs or cats or consider ENSURE to be 'like' CATSURE or DOGSURE." The Board consequently found that the involved goods are related for purposes of the du Pont analysis:
We conclude from these postings that some people appear to believe that ENSURE products are sufficiently beneficial for their pets that ENSURE supplements may be substituted for applicant's DOGSURE and CATSURE supplements. Others appear to believe that the goods are equivalent. These references corroborate the similarity of the goods.
Trade Channels and Customers: Although the products of the parties are sold in the same grocery and drug stores, they appear in different sections of the stores. And though some consumers view the products as interchangeable [hopefully, in only one direction - ed.], the trade channels are different. However, the products are relatively inexpensive consumer products, a factor that favored Abbott.
Applicant's Intent: Pet-Ag's intent in adopting its marks is relevant under the 13th du Pont factor. The evidence showed that Pet-Ag was aware of Abbott's concern regarding the two marks, but that fact alone does not compel a conclusion that Ag-Pro intended to play off the goodwill of the ENSURE mark. In view of the conflicting evidence, the Board deemed this factor neutral.
Balancing the du Pont factors, the Board found confusion likely and it sustained the opposition.
TTABlog comment: I think the evidence regarding the relatedness of the goods was not all that convincing, since it was not clear just how many customers feed ENSURE supplements to their pets, or whether they thought the sources of the products were the same. The consumers could well have appreciated that the goods come from different sources.
Text Copyright John L. Welch 2011.