Wednesday, April 06, 2011

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 In re Benedent Corporation, Serial No. 77666733 (March 14, 2011) [not precedential].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.


At 3:27 PM, Anonymous Anonymous said...

This is a crazy decision. First off, pet oral hygeniene is a relatively new concept, which explains the lack of third-party registrations. Second, there are a lot of companies who make both tootbrushes and grooming brushes (here, the examiner could have submitted evidence from Petco site). The marks are highly similar, the consumer is the same, the end-user/ee (dog) is the same, the channels of trade are highly similar (is the Board suggesting that Examiners have to go to their local Petco and take photos?)Insane.

At 9:13 AM, Anonymous Anonymous said...

This decision is barking mad and may hound the Board. Not only are the word portions of the marks phonetically identical, with both marks contain design elements of a dog,but it is reasonable that one company would offer both toothbrushes and grooming brushes for pooches through the same channels. Board leaped like a Maltese at Westminster to "judicial notice" of the purchasing habits of the two-legged animals here, leaving bits of milk bone on its collective face. I would advise the senior Registrant to mark its territory and protect its natural zone of expansion lest some other pups in the field of animal care products choose to join the dog fight, all with the name Rex. Canine get an amen?

At 3:59 PM, Blogger John L. Welch said...

I think you just broke the pun-o-meter.

These comments confirm my belief that TTABlog readers are a breed apart.

At 10:13 PM, Blogger Pamela Chestek said...

I'm mystified by the relevance of the fact that brushes aren't recommended. Does that mean you don't have to take aural similarity into account if a friend isn't likely to tell you about it? If you don't really cares what brand you buy then similarity doesn't matter? I just don't know what the theory there is.

At 7:20 AM, Anonymous Rob said...

Let's hope the courts get a chance to review this senseless reasoning/


Post a Comment

<< Home