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 In re Pup Scouts, LLC, Serial No. 86048207 (April 2, 2015) [not precedential].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.
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TTABlog note: What about CAT SCOUTS?
Text Copyright John L. Welch 2015.