Abbott Laboratoriesv.Pet-Ag, Inc.

Trademark Trial and Appeal Board

Feb 14, 2012

No. 91170148re (T.T.A.B. Feb. 14, 2012)

Mailed:
February 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Abbott Laboratories

v.

Pet-Ag, Inc.
________

Opposition No. 91170148
to applications
Serial Nos. 76623502 and 76623503
_______

Request for Reconsideration
_______

Robert M. Newbury, Joseph N. Welch II, Bradley L. Cohn, and
Kristen S. Knecht of Pattishall Mcauliffe Newbury et. al.
for Abbott Laboratories

Robert E. Browne, Maurice E. Finnegan, III, and Luis M.
Lozada of Neal Gerber & Eisenberg LLP for Pet-Ag, Inc.
_______

Before Zervas, Wolfson, and Shaw, Administrative Trademark
Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On December 22, 2011, applicant filed a request for
reconsideration of our final decision in this proceeding,
mailed on November 22, 2011, sustaining the opposition.
Opposer filed a brief in response to applicant’s request.
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91170148
2
The purpose of a request for reconsideration is to
show that, based on the evidence submitted and the
prevailing authorities, the Board’s decision is erroneous
and should be changed or modified.
The request may not be used to introduce
additional evidence, nor should it be devoted
simply to a reargument of the points presented in
the requesting party’s brief on the case. Rather,
the request normally should be limited to a
demonstration that, based on the evidence
properly of record and the applicable law, the
Board’s ruling is in error and requires
appropriate change. (citations omitted)

TBMP Section 543 (3d ed. 2011).
We find that applicant has not shown that any portion
of the Board’s ruling was in error. Specifically,
applicant contends that with respect to the strength/fame
of opposer’s mark, the Board ignored evidence showing that
the term “-sure” is weak. Applicant merely reargues the
points made in its main trial brief regarding the weight to
be accorded the third-party uses and registrations of marks
incorporating the term “-sure.” In determining, as it did,
that opposer’s ENSURE mark is “commercially strong,” the
Board gave due weight to the third-party marks as well as,
inter alia, opposer’s 40-year use of its ENSURE mark and
its strong showing of commercial sales and advertising.
The mark ENSURE is entitled to a broad scope of protection,
and the Board gave due consideration to applicant’s
Opposition No. 91170148
3
arguments and evidence to the contrary in making this
finding.
Applicant further argues that in comparing the marks,
the Board failed to analyze the marks in their entireties,
and failed to consider the impact that its trade dress, an
image of a dog or a cat next to the words DOGSURE or
CATSURE on the product packaging, may project on a
prospective purchaser. However, the Board considered the
potential impact the overall trade dress of applicant’s
mark as currently used on the packaging for the goods may
have on prospective buyers. As we noted in our order, the
terms “dog” and “cat” merely describe a feature of the
goods, and the trade dress features simply reinforce this
descriptive impression. Moreover, consumers do not compare
marks side-by-side, and have imperfect recollections of
other marks at the time of purchase. Finally, the images
of the dog and cat are not part of the marks as they have
been applied for, and the images may not always accompany
the word marks as used on the goods. Applicant has not
shown that the Board erred in its finding that the marks
are similar in their entireties.
Applicant asks us to consider the Board’s recent
holding in Ahold Licensing SA v. Premium Nutritional
Products, Inc., Opp. No. 91180170, (TTAB Nov. 7, 2011),
Opposition No. 91170148
4
unpub’d., wherein the Board determined that a likelihood of
confusion did not exist between the mark NATURE’S PROMISE,
applied for “food for caged birds, pet food for small
mammals, [and] hay” and NATURE’S PROMISE, registered for
such disparate food products as, inter alia, “milk, eggs,
applesauce, tofu, olive oil, tea, breakfast cereals, honey,
pasta, rice, fresh vegetables, fruit juice, and soft
drinks” and “retail store services, namely, a grocery store
department featuring natural and organic foods.” According
to applicant, the Board’s finding in Ahold Licensing that
“human food and pet food are not competitive or
complementary products”1 should be followed. Otherwise, the
“incongruent decisions” will result in “a lack of certainty
to trademark owners.”2
First, Ahold Licensing is not designated as precedent
of the TTAB and as a consequence, the Board’s decision
therein is non-binding. Secondly, Ahold Licensing
addressed a different set of facts and a different
evidentiary record. Unlike in the case at hand, opposer
therein did not meet its burden “to show that the goods of
the parties are related in some manner and/or the
conditions surrounding the marketing of the products are

1 Ahold Licensing, p. 19.
2 Applicant’s Brief, p. 9-10.
Opposition No. 91170148
5
such that [a likelihood of confusion would occur.”3 This
was due to the fact that “there was no testimony or
evidence regarding the similarity or dissimilarity of the
goods and services.”4 Thus, the finding in Ahold Licensing
that “human food and pet food are not competitive or
complementary products” was based on the limited record
therein, which showed that “the only similarity between pet
food and human food is that they are both sold in grocery
stores.”5 It is well established that the mere fact that
both products may be sold in grocery stores does not compel
the conclusion that the goods or services involved are
related. See, e.g., Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 152-53 (CCPA
1978); and Federated Foods, Inc. v. Fort Howard Paper
Company, 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
In the case at hand, opposer has shown that beyond the
fact that both parties’ goods are sold in grocery stores,
applicant markets its products as being similar to dietary
supplements used by seniors; opposer’s ENSURE supplement
has been used in place of applicant’s supplement by some
consumers for their pets; and that the goods are generally
similar in formulation, and share common characteristics.

3 Ahold Licensing, p. 17.
4 Ibid.
Opposition No. 91170148
6
Although applicant argues that the Board gave too much
weight to the third-party comments that show pet owners
feed their pets ENSURE supplements and to media references
that point out the similarities in the make-up of the
products, the record shows that several companies sell both
pet food and human food, and that both parties’ goods are
designed as a food supplement or meal replacement.
Applicant merely reargues the weight to be accorded this
evidence, which we have already considered.
Finally, applicant argues that since the Board found
that the trade channels differ, it improperly found that
the classes of purchasers were the same. There is of
course no mandate that both factors operate in tandem to
favor only one party. Further, applicant’s argument that
the Board relied on the evidence (that some veterinarians
send ENSURE supplements home with their patients) to find
the classes of purchasers similar, is misplaced. The Board
duly considered all evidence of record in determining that
the classes of purchasers for both parties include the
general public and are therefore similar.
The Board duly considered the relevant DuPont factors
in making its determination of likelihood of confusion in
this case. The decision in Ahold Licensing is not binding

5 Id. at 18-19.
Opposition No. 91170148
7
on us and is distinguishable on its facts. In view of the
foregoing, applicant’s request for reconsideration is
denied, and the Board’s November 22, 2011 decision stands.