Monday, January 29, 2018

TTAB Finds Two Puppy Marks Confusable for Bathroom Tissue

The Board sustained Kimberly-Clark's opposition to registration of the word + design mark shown below left, on the ground of likelihood of confusion with K-C's registered mark shown below right, both for bathroom tissue. The Board observed that, although the words in a word + design mark like applicant's are usually accorded greater weight, in this case opposer K-C's mark comprises only the image of a puppy with its paw on a roll of toilet paper, "so rather than using words to call for Opposer’s goods, consumers might identify Opposer’s brand another way, perhaps by recalling and mentioning the dog, or 'the puppy with toilet paper.'" Kimberly-Clark Worldwide, Inc. v. Matosantos Commercial Corp., Opposition No. 91218800 (January 26, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).

Because the involved goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of purchasers. These factors not only weigh heavily in favor of a finding of likely confusion, but also reduce the degree of similarity between the marks necessary for such a finding.

The Board noted that the marks have obvious differences but concluded that the differences are outweighed by the even more obvious similarities. "Perhaps most importantly, Applicant’s and Opposer’s dogs look similar."

Each party refers to its dog as a “puppy.” Both puppies are sitting and looking at the camera, and they are both light-colored. Applicant’s dog is described as having “beige ears,” the same color as Opposer’s dog’s ears. Applicant’s dog has “black eyes, and black nose,” while Opposer’s has “green and black eyes and black nose.” The puppies also appear to potentially be the same breed, in whole or in part. As Applicant states in its brief, “the images speak for themselves.”

In addition to the possibility that consumers may recollect K-C's brand by remembering the "puppy with toilet paper," some may believe, when encountering Applicant’s toilet paper, that K-C has begun using the words TENDER PUFF BATHROOM TISSUE to identify its product, which was formerly identified only by the dog design.

The Board pointed out that it has often found a likelihood of confusion when, as here, marks are used for highly similar or identical goods and include similar designs, even if there are also literal or other differences between the marks. Among the examples provided: In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971) (both for bath products).

A common theme found in these cases is the recognition that "consumers generally do not encounter competing marks side-by-side, where their differences become more obvious." In sum, side-by-side comparison is not the proper approach. Here, the involved marks "both prominently display puppies, with significant similarities, to identify identical products, and the marks create the same general overall commercial impression."

The Board declined to find that K-C's mark is famous or even strong, due to lack of evidence. On the other hand, there was no evidence that dogs have any "toilet paper-related meaning" or that dog designs are used by any third party as a source-identifier for toilet paper. Finally, the Board observed that although some consumers may exercise some care in purchasing this product, the Board's decision must be based upon the least discriminating consumers who may exercise only an ordinary degree of care.

The Board concluded that confusion is likely, and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Surprised? Have a tissue.

Text Copyright John L. Welch 2018.


At 11:37 AM, Anonymous Erik Pelton said...

Although I have not read the entire record, I personally don't find the two confusingly similar, and I'm rather surprised by the decision. Also, I'm not convinced that Opposer's mark functions as a logo mark or isn't ornamental.

At 1:13 PM, Anonymous Alex said...

I agree with Erik. Unless the pictures in the blog e-mail are distorted or I don't know my dogs as well as I think, the Tender Puff dog appears to be a white labrador while the K-C dog is a golden retriever and there are other differences too. The Tender Puff dog has a heart in its mouth and all paws on the ground while the K-C dog has nothing in its mouth and a paw on a roll of the toilet paper. I could go on about other differences but the point is that I am under the impression that the Board did treat K-C's mark as a famous mark while apparently declining to find fame.

At 4:46 PM, Anonymous said...

I don't like the decision. I do not see any likelihood of confusion at all. K-C would have exclusive rights to the use of a dog in association with toilet paper??? Would the decision have been different if it were a cat? I guess I have to read the opinion in order to figure out where this fits into the "likelihood of confusion" analysis...Very odd.

John Egbert

At 5:59 PM, Anonymous Orrin A. Falby said...

I understand the reasoning here. The Board found that dogs are the most distinctive elements in the marks and that they appear to be very similar in that they could be the same breed with minor differences the public would easily gloss over. I do not think the Board would have reached this conclusion, if the dogs did not look so much alike or if there were some distinctive and literal elements in the applied-for mark.

At 1:07 PM, Anonymous said...

This is an odd one. Undoubtedly, the dominant feature of the mark is "TENDER PUFFS". A secondary feature is the large banner. The dogs is an minor feature of the mark. As an ordinary consumer, I doubt that I would ever pay much attention to the dog in the TENDER PUFFS mark.

The dog in the K-C mark appears to be more artwork than an actual trademark. True, it is on the packaging, but it does not a logo. When one looks at the specimen, the truly dominant feature is the mark "COTTONELLE". The dog is almost an after-thought or mere artwork.

When considering the similarities, the Board pointed out that both dogs have "black noses". Is there a breed of dog that does not have a "black nose"?

As a practitioner, I doubt that I would have advised the TENDER PUFFS client that their mark would "likely to be confused" with the dog in the K-C mark. The Board surprised me on this one.

John Egbert


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