CAFC Affirms TTAB Ruling that WAGGIN' STRIPS and BEGGIN' STRIPS Are Confusingly Similar for Pet Treats

The CAFC has affirmed the Board's non-precedential decision of March 31, 2011 [TTABlogged here], finding the mark WAGGIN' STRIPS for pet food and edible pet treats [STRIPS disclaimed], likely to cause confusion with the registered mark BEGGIN' STRIPS for dog snacks [STRIPS disclaimed]. Circuit Judge Dyk concurred on the Section 2(d) issue but disagreed with the "flawed process" by which the TTAB reached its decision. Midwestern Pet Foods, Inc. v. Societe Produits de Nestle S.A., 103 USPQ2d 1435 (Fed. Cir. 2012) [precedential].


Likelihood of confusion: The appellate court ruled that the Board's finding of likelihood of confusion was supported by substantial evidence.

The Board properly accorded the BEGGIN' STRIPS mark a broad scope of protection, based on use of its mark since 1988 and nationwide advertising, marketing, and sales, concluding that the mark has enjoyed "at least a high degree of recognition."

The two marks at issue have the same format, structure, and syntax, and similar pronunciations, cadences, and intonations. Moreover, "the verbs 'wag' and 'beg' both suggest dog behavior, and in particular both convey the excitement exhibited by dogs during feeding." The Board reasonably concluded that the implicit reference to "bacon" in Opposer's mark did not detract from the similarity of the marks in sound and meaning.

The marks are used in connection with identical products that travel in the same channels of trade to the same classes of consumers. The products are inexpensive items that would be purchased with no more than ordinary care.

Finally, although Opposer Nestle did not introduce survey evidence, neither the TTAB nor the CAFC has required survey evidence in order to show a likelihood of confusion. No inference may be drawn against Opposer for failing to provide survey evidence.

Evidentiary issue: The disagreement between the panel majority and Judge Dyk centered on Applicant Midwestern's objection to the admission of certain documents relating to sales and marketing activities that Nestle had not produced during discovery. Nestle had objected to the production requests, including one seeking "all documents ... which [Nestle] may rely on," on various grounds, including the breadth of the requests.

Because this proceeding was commenced prior to November 2007, the "old" TTAB rules applied, and Nestle (according to the panel majority) was not "obligated to specify in advance of trial the evidence it intended to present in support of its case or to identify which witnesses it intended to call." Moreover, as to the objections, Midwestern was required to move to compel production in order to test the sufficiency of Nestle's responses. By failing to so move, Midwestern had waived its objections to admission of the documents.

The majority observed that, had Nestle stated that it had no documents in response to a request, then it would not be later allowed to introduce responsive documents into the record.

In dissent, Judge Dyk maintained that under the Federal Rules of Civil Procedure, a party is required to produce the documents on which it intends to rely at trial. [The majority pointed out that the TTAB has adopted the Federal Rules in most, but not all, respects, and has retained discretion to adopt rules suited to its own proceedings and the interest of the parties before it]. Once Nestle determined that it would use these documents at trial, it was obligated to supplement its discovery responses under Rule 26(e) by producing the documents upon which it would rely.

TTABlog comment: This decision would seem to have little impact on the Board's procedure, since it deals with a pre-November 2007 case, and since the panel majority gave its blessing to the Board's discovery procedure.

Text Copyright John L. Welch 2012.