Monday, April 18, 2011

TTAB Finds WAGGIN' STRIPS Confusingly Similar to BEGGIN' STRIPS for Pet Treats, But No Dilution or Lack of Bona Fide Intent

Despite Applicant's dogged efforts to distinguish the marks, the Board sustained this Section 2(d) opposition to registration of the mark WAGGIN' STRIPS for pet food and edible pet treats [STRIPS disclaimed], finding it likely to cause confusion with the registered mark BEGGIN' STRIPS for dog snacks [STRIPS disclaimed]. However, the Board dismissed Opposer Nestle's dilution claim for failure to prove fame, and jettisoned its lack-of-bona-fide-intent claim despite Applicant's paucity of documentation. Societe Produits de Nestle S.A. v. Midwestern Pet Foods, Inc ., Opposition No. 91163853 (March 31, 2011) [not precedential].

In the first third of this 42-page decision, the Board dealt with various evidentiary issues, concluding that some exhibits should be stricken because they were not timely produced during discovery or were not proper subjects for a notice of reliance, and overruling other objections on the ground that the discovering party never challenged (via motion to compel) the producing party's objections made during discovery.

Likelihood of Confusion: Nestle contended that its BEGGIN' STRIPS mark is famous, but its evidence of sales and advertising expenditures was "inconsistent" and lacked context. However, Nestle did show that its mark, in use since 1988, "has achieved at least a high degree of recognition," and is a "distinctive and strong" mark and entitled to a broad scope of protection.

As to the goods, the Board found Applicant's "pet food and edible pet treats" to be so broadly identified as to encompass Nestle’s dog snacks, and therefore it considered the them to be legally identical.

The Board therefore presumed that the goods travel through the same trade channels to the same classes of customers. Moreover, the goods are relatively inexpensive and would be purchased with no more than ordinary care.

As to the marks, the Board observed once again that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. In appearance, "the marks ... look similar to the extent that both have the same format, structure and syntax; both being comprised of two words, the first word in each ending in 'GGIN'' and the second in each being the word STRIPS." As to sound, the marks are "similar in rhythm and cadence, both having three syllables, the final two of which would be pronounced the same."

As regards connotation, since both parties’ goods include edible pet treats, the term “strips” would mean the same thing in relation to both marks. In addition, both “WAGGIN’ and BEGGIN’ evoke images of, albeit somewhat different, dog behaviors. As such, both marks, as a whole, connote types of treat that elicit certain canine behavior.

Applicant argued that Nestle’s mark means “bacon strips,” whereas its mark contains no such wordplay or hidden meaning.

The evidence, however, is not conclusive that consumers understand BEGGIN’ STRIPS only to mean bacon strips. Indeed, even if BEGGIN’ STRIPS is understood by some consumers to mean “bacon strips,” as just noted, the plain meaning of BEGGIN’ STRIPS is of strips treats intended to elicit certain canine behavior, and that same connotation can be attributed to applicant’s WAGGIN’ STRIPS mark. *** Further, in considering the meanings of the marks, we must consider the meaning of opposer’s mark not only when heard, but also when read. When read, the meaning conveyed by BEGGIN’ STRIPS is not “bacon strips.”

Finally, as to commercial impression, the Board found the marks to be "very similar," since they are "two-word marks which are constructed in the same way. They both begin with similarly spelled words that describe attributes of dog behavior and end with the identical word STRIPS."

The Board rejected Applicant's contention that it should consider that Nestle's mark is "generally used in connection with the Purina house mark and checkerboard design." Likewise, it rejected Applicant's assertion that consumers would not believe that a product called WAGGIN' STRIPS is part of Nestle's BEGGIN' line of products. As the Board observed for the zillionth time: "we must compare the marks as they appear in
applicant's application and the pleaded registration."

And so the Board found confusion likely, and it sustained the Section 2(d) claim.

Dilution: Since Nestle failed to prove fame for Section 2(d) purposes, it could not meet the higher standard for proof of fame under Section 43(c).

Lack of Bona Fide Intent: Although Applicant's documentary evidence consisted only of mock-up packaging, "Applicant's witness .. testified to applicant's general practice when selecting a trademark for a new product, and there is no indication that the practice was not followed."

Mr. Montooth testified that due to the large costs related to manufacturing and launching new pet food and treat products, applicant does not fully develop the product or packaging until the application has been allowed to register by the United States Patent and Trademark Office.

Although Mr. Montooth testified during discovery that the mark "has not been and may never be used," that statement does not negate applicant’s bona intent to use the mark, because applicant’s mark had yet to clear the application process."

Moreover, unlike the situation in Commodore Electronics [lack of documentation established prima facie case of lack of bona fide intent), here Applicant "is not only a competitor in the pet treat industry with the capability to manufacture strips, but applicant currently manufactures other strips-type products and does not have numerous intent-to-use applications pending for the same goods."

And so the Board found that Nestle had failed to establish a prima facie case of lack of bona fide intent.

TTABlog comment: The bona fide intent discussion is the most interesting part here. That seemed to be Applicant's best shot, even if not a great one.

Text Copyright John L. Welch 2011.


At 2:41 PM, Blogger Unknown said...

I look at this decision against the Ralph Lauren Stirrup decision and wonder. It seems to be getting more and more difficult to clear marks lately. My gut reaction is to not agree with either decision though this is based on no understanding of the number of "'in" STRIPS pet food marks and "STIRRUP" watch marks.

At 8:37 AM, Blogger Unknown said...

I'm also having trouble with this decision. When BEST and BEAUTY are dominant terms that are NOT confusingly similar in the BEAUTYREST case reported on 4/22, I don't agree that WAGGIN is confusingly similar to BEGGIN.


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