Monday, April 13, 2015

WYHA? PUP SCOUTS and DOG SCOUTS OF AMERICA Confusable for Pet Services, Barks TTAB

The USPTO refused registration of PUP SCOUTS as a collective membership mark for "indicating membership in an organization for pets and their human counterparts," finding it likely to cause confusion with the registered mark DOG SCOUTS OF AMERICA, in standard character and design form, for retail store, educational, and association service in the field of pet training and pet parenthood and ownership [DOG and AMERICA disclaimed]. Applicant pointed out that registrant's services are offered only in certain states and certain channels of trade, and differ in kind from applicant's membership services. Would you have appealed? In re Pup Scouts, LLC, Serial No. 86048207 (April 2, 2015) [not precedential].

The Board began by noting that the Section 2(d) analysis for a collective membership mark is somewhat different than that for a service mark because the former does not involve purchasers or users of goods and services. A collective membership mark "serves only to identify the fact that such members belong to the collective organization and to inform relevant persons of the members’ association with the organization." The "relevant persons" for Section 2(d) are the persons for whose benefit the membership mark is displayed.

Thus, in the case of Applicant’s collective membership mark and Registrant’s service mark, the question is whether relevant persons are likely to believe that the collective organization, i.e., Applicant, is endorsed by or in some way associated with the provider of the association services.

The Board found it clear, on the face of the application and cited registration, that applicant's organization and registrant's services "both involve pets and their owners." The fact that applicant offers memberships for the benefit of pets and their owners, while registrant offers its services directly to pets and their "human counterparts" does not detract from "the clear and obvious nexus on the face of the identifications."

Applicant feebly argued that registrant's service, according to its website, are limited to certain states and certain channels of trade. But applicant was barking up the wrong tree. [Apologies. - ed.] But there were no such restrictions in the cited registration.

As to the marks, the Board found that both "give the commercial impression of a dog or young dog that is a scout," and suggest an organization similar in style to the Boy Scouts or Girl Scouts, or an association, focusing on dogs. The Board concluded that the marks are extremely similar in meaning and overall impression, though not so much with regard to sight and sound.

Applicant's founder declared that applicant attracts highly sophisticated dog owners [the owners, not the dogs - ed.] who want to honor their pets. The Board noted, however, that there was no evidence as to the price range for registrant's services or applicant's memberships, and there were no limitations in the application or registration as to type of consumer. Potential customers and members would include all dog owners, sophisticated or not.

The Board therefore found confusion likely, and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: What about CAT SCOUTS?

Text Copyright John L. Welch 2015.


At 7:40 PM, Anonymous Anonymous said...

Could someone please explain why the Boy Scouts, as a famous brand, would not have prevented either registration due to blurring? Teaching people woodcraft does not seem too far removed from training animals

At 7:40 PM, Anonymous Joe Dreitler said...

Not much to say about this barker. I'm confused.

At 12:00 AM, Anonymous HelenChang said...

According to the board’s reasoning here, should someone begin to use Cat Scouts and apply for registration, the board shouldn't deny them.

The board allowed Dog Scouts of America while Boy Scouts and Girl Scouts are well known. All the Scout organizations are clearly aimed at different membership groups: boys, girls, and dog owners. A collective membership mark for Cat Scouts, conceivably aimed at cat owners, should not give rise to confusion. That they are both membership organizations aimed at pet owners should not be a barrier if they are clearly aimed at different membership pools. Most cat owners (without also a pet dog) would not join a dog owner’s club, and vice versa. Such Cat Scouts mark would be weak as the name is highly descriptive, but the TTAB allowed the descriptive Dog Scouts mark protection.

At 7:41 PM, Anonymous TK said...

I believe that the Board did a thorough LOC analysis for the marks at issue. Never encountering any of these marks, I would have assumed that “PUP SCOUTS” would be associated or endorsed by the "DOG SCOUTS OF AMERICA”.

When reading both organizations’ identifications and services, it is clear that they are both directly related by focusing on pets and owners/human counterpart.

I think that the Applicant may have a better chance if they had shown the Board how their clients were receiving high-leveled sophisticated services. This would at least show how the Applicant’s business is different than the Registrant.

Also, assuming that the Applicant is not attached to the mark “PUP SCOUTS”, the Applicant can change the brand by not having “SCOUTS” and replace it with a different word or completely change the mark.

At 1:46 AM, Blogger J. Whitson said...

The TTAB was thorough in its analysis of the likelihood of confusion between the two marks, Pup Scouts and Dog Scouts of America. Reviewing the decision, I completely agree with the Board’s decision to affirm the refusal of the Applicant’s mark due to the likelihood of confusion with the Registrant. In retrospect, I would not have appealed the decision. Rather, I would have advised Pup Scouts to change the mark to differentiate from the Registrant’s mark, while keeping the same spirit (off hand, Pup Rangers has an endearing ring to it). I, for one, did not find the Applicant’s arguments persuasive. The sophistication of the consumer seems inherently identical given the nature of the services each entity provides. Likewise, the channels of trade argument made by the Applicant seems weak as the Board quickly pointed out the boundless avenues that Applicant’s members could encounter Registrant’s service online, which are not limited geographically or to a specific channel of trade. In evaluating the marks, I personally would have confused the term Pup Scout with Dog Scout thinking that they were one in the same and from the same association/membership and I doubt a relevant person, a dog owner, would recognize the difference either.

With respect to giving consideration to a Cat Scouts of America, I believe the Board would rule that the marks would not create likelihood of confusion in light of the In re Pup Scouts, LLC case. Evaluating the similarity of the marks and the similarity of the goods/services, I would submit that both are sufficiently different. Each mark has a distinctly different appearance, sound, connotation, and commercial impression. I would also submit that the good/services associated with the membership are sufficiently different as each group’s focus and approach to the responsibilities of pet ownership and training greatly differ (I doubt Cat Scouts would be teaching your cat to fetch!). Lastly, I would also highlight that the relevant person for the sake of the analysis is vastly different here. A cat owner’s needs, enthusiasm, and approach to furthering their love for their pet contrasts to that of a dog owner (a cat training camp would be a rather interesting sight, but highly unlikely given the nature of felines). Much like the sufficient differences in boys and girls (i.e. Boy Scouts of American and Girl Scouts of America) there too are sufficient differences between cat and dog owners, which would not give rise to a likelihood of confusion between the marks.


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