Thursday, February 16, 2012

Test Your TTAB Judge-Ability: Are Pet Treats and Pet Boarding Services Related for Section 2(d) Purposes?

The USPTO refused registration of the mark LUCKY PAWS for "pet treats, namely, organic material to be mixed with other organic material and microwaved," finding the mark likely to cause confusion with the registered mark LUCKY PAWZ for "pet boarding services; pet day care services." Of course the marks are real close, but what about the goods/services? How would you rule? In re Lucky Paws, LLC, Serial No. 77929696 (February 3, 2012) [not precedential].

There was no evidence that any company that manufactures pet treats also renders pet day care services. The record included only one third-party registration that included both "pet treats" and "boarding and daycare for private pets." [As opposed to public pets? -ed.]. The record evidence failed to show "that pet boarding and day care services and pet treats are intrinsically related." End of story, right? Wrong.

There was evidence that companies rendering pet boarding and day care services "provide food and treats to the pets albeit not under the same marks." The Board therefore concluded that "organic pet treats are a type of product that is offered in conjunction with pet boarding and day care services, they move in the same channels of trade, and are sold to the same classes of consumers."

The Board found confusion likely and it affirmed the refusal to register.

TTABlog comment: Well, how did you do, Judge Wanna-be? Were you surprised by the outcome?

Text Copyright John L. Welch 2012.


At 10:11 AM, Anonymous Mark Donahey said...

This result is surprising. Yes, pet treats, which are goods sold through retail stores, are routinely offered to pets in the course of providing boarding services, but this hardly amounts to identical channels of trade. This is akin to finding that automotive dealership services are related to tire goods because new cars come with tires already on them. Compare In re Hyundai Motor America, Serial No. 78889340 (September 14, 2009) [not precedential].

At 10:17 AM, Anonymous Anonymous said...

This is another illustration of the Board's increasingly weak analysis. Board has opined that anything and everything for pets are related. The thrust of the Board's argument is "we find that organic pet treats are a type of product that is offered in conjunction with pet boarding and day care services [pet service and pet products], they move in the same channels of trade [pet industry], and are sold to the same classes of
consumers [humans]."

It is disappointing that the Board does not factor strength (or weakness) of the marks, market conditions and relaties, different industries and expertise, lack of direct competition, no bridging the gap, sophistication of consumers, probability versus possibility analysis, de minimus confusion, and why a few articles overwhelms describing how pets get feed at pet boarding locations is overwhelmingly more persuasive than the virtual lack of third-party trademarks used for pet boarding and pet treats.

With regard to guessing at the results, the modern rule is to find a word that is used by both trademarks, here pets, and assume from now on that the Board will find products and services using the same word related.

At 11:16 AM, Anonymous Anonymous said...

I think if you frequent the doggie day cares in N. Virginia, D.C., and suburban MD where the majority of the TTAB judges live, you will see that the day cares also sell dog treats to dog owners. Dog boarding has evolved to a quasi-retail space, and I think it that context, the decision makes sense, but the opinion is not written in a very persuasive way, for sure.

At 11:21 AM, Anonymous Anonymous said...

sad to say that these comments reflect my view as well. The logic is just so inconsistent by the Board in these decisions. In one case they will dismiss an opposition of two medical products with similar names by going through a deteialed trade channel and purchasinhg analysis, and on a csae like this, they just come up with a decision that is superficial and undertakes no analysis. It is a shame.

At 1:08 PM, Anonymous Anonymous said...

I would appeal this one.

At 1:13 PM, Anonymous Anonymous said...

I'll throw my two cents in too: I agree with the prevailing sentiment. It is important that the Board at least attempt to be consistent in its approach to cases so that those practicing before it can give their clients the best advice possible. No one is helped if the Board is a crapshoot. But the Board does take wildly varying approaches. In some cases it takes a hard look at the evidence and goes out of its way to emphasize that it must decide cases on the evidence of record (especially regarding relatedness), and then in other cases it has no trouble drawing conclusions not supported by any evidence.

Sometimes the Board's decisions read like a conclusory first office action from a lazy examining attorney. It's disappointing.

At 2:41 PM, Anonymous Anonymous said...

The last comment mentioned that the opinion reads "like a conclusory first office action from a lazy examining attorney." This opinion strikes home a point that warrants discussion, which is a vast majority of the Board members were former trademark examiners. The Board should consist of at least half from outside professionals to add, and dare I say enhance, their prespectives on trademarks and trademark law.

At 5:38 PM, Anonymous Anonymous said...

Anonymous #6 (unless there are anonymous repeats in this string): Given the many years of private litigation experience represented by this panel, I am sure we have all benefited from the "prespectives on trademarks and trademark law" of these three hard-working Judges.

At 6:20 PM, Anonymous Orrin A. Falby said...

I agree that this decision lacks certain supporting evidence concerning the relatedness of the goods. However, the marks are almost identical. I think the Board is also trying to say that the goods and services are complementary. Isn't this case some what similar to the restaurant vs foods cases?

At 10:05 AM, Blogger Chris Palermo said...

For me, the decision is a reminder that the Board can only make decisions based on the evidence in front of it. If you want a good decision, give the Board lots of evidence. Unfortunately, this opinion makes it hard to determine the quantum of evidence that was available on various sub-issues. The result makes sense to me; I've seen pet treats offered on hanger displays at the front desk of boarding facilities.


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