Equine Natural Choice, L.L.C.

Trademark Trial and Appeal Board

Mar 27, 2012

No. 85056406 (T.T.A.B. Mar. 27, 2012)

Mailed: 3/27/12

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Equine Natural Choice, L.L.C.
________

Serial No. 85056406
_______

R. Scott Thompson of Lester, Loving & Davies for Equine
Natural Choice, L.L.C.

Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Equine Natural Choice, L.L.C. filed, on June 7, 2010,
an application to register the mark EQUINE NATURAL CHOICE
(in standard characters) (“EQUINE NATURAL” disclaimed) for
“animal feed supplements; dietary supplements for animals;
herbal supplements; natural herbal supplements; [and] non-
medicated additives for animal feed for use as nutritional
supplements” (in International Class 5). Applicant claimed
first use anywhere and first use in commerce on August 1,
2007.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. No. 85056406
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods, so resembles the previously
registered mark EQUINE CHOICE (in standard characters)
(“EQUINE” disclaimed) for “horse feeds” (in International
Class 31)1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that the marks are dissimilar in that
applicant’s mark conveys the impression that its goods are
composed of natural ingredients, whereas registrant’s mark
conveys nothing more than that registrant’s goods relate to
horses. As for the goods, applicant asserts that no
purchaser would confuse the two types, and that the goods
move in separate trade channels and are bought by
sophisticated purchasers. Applicant also points to the
absence of actual confusion despite over three years of
contemporaneous use of the marks. In support of its
position, applicant introduced an affidavit of its owner,
one third-party registrations, and evidence regarding a
third-party’s use of its house mark.

1 Registration No. 2401566, issued November 7, 2000; renewed.
Ser. No. 85056406
3
The examining attorney maintains that applicant has
appropriated the entirety of the registered mark EQUINE
CHOICE, and merely inserted the descriptive word “NATURAL”
in the middle of the mark to form EQUINE NATURAL CHOICE.
Thus, the examining attorney contends, the marks are
similar. The examining attorney also asserts that the
goods are complementary and, thus, are similar for purposes
of the likelihood of confusion analysis. In connection
with the similarity between the goods, the examining
attorney submitted third-party registrations and excerpts
of third-party websites.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We first focus our consideration on the du Pont factor
of the similarity/dissimilarity between the marks. We must
compare the marks in their entireties as to appearance,
Ser. No. 85056406
4
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
It is well settled that one feature of a mark may be
more significant than another, and it is not improper to
give more weight to this dominant feature in determining
the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
Ser. No. 85056406
5
unavoidable.”). For example, in the past merely
descriptive matter that is disclaimed has been accorded
subordinate status relative to the more distinctive
portions of a mark. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). In the
cited registration, registrant disclaimed the word “EQUINE”
apart from the mark EQUINE CHOICE. In the application,
applicant disclaimed the words “EQUINE NATURAL” apart from
the mark EQUINE NATURAL CHOICE. Given the merely
descriptive or generic nature of the disclaimed words in
the marks, each mark is dominated by the word “CHOICE.”
This dominant portion is the word most likely to be
remembered by consumers, and will be used in calling for
the goods or otherwise referring to the products of
registrant and applicant. Although we have not disregarded
the disclaimed portions of the marks in our comparison of
the marks as a whole, these merely descriptive or generic
words in the marks are entitled to less weight than the
identical term “CHOICE” appearing in each mark because
merely descriptive or generic words are accorded less
weight in the likelihood of confusion analysis. In re
Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). So as to be
clear, we must do more than just compare the dominant
“CHOICE” portion of each mark; it is necessary that we
Ser. No. 85056406
6
compare the marks EQUINE NATURAL CHOICE and EQUINE CHOICE
in their entireties. In doing so, we find that the marks
are similar in sound, appearance and meaning. Further,
given these similarities, we find that the marks engender
very similar overall commercial impressions. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
2004).
The similarity between the marks is a factor that
weighs in favor of a finding of likelihood of confusion.
In considering the marks, we have taken into account
the one third-party registration relied upon by applicant
in an attempt to diminish the distinctiveness of
registrant’s mark. The registration is cancelled and,
thus, is not evidence of anything. Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does
not provide constructive notice of anything”). Even if
alive, however, the registration is not evidence of use of
the mark. Third-party registrations are not proof that
consumers are familiar with such marks as to be so
accustomed to the existence of similar marks in the
marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks,
Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). In
Ser. No. 85056406
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any event, even if we were to find, as applicant urges,
that registrant’s mark is weak and entitled to a narrow
scope of protection, the scope is still broad enough to
prevent the registration of a similar mark for related
goods. See In re Farah Mfg. Co., Inc., 435 F.2d 594, 168
USPQ 277, 278 (CCPA 1971).
As to the goods, it is well settled that the question
of likelihood of confusion must be determined based on an
analysis of the goods recited in applicant’s application
vis-à-vis the goods identified in the cited registration.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.
4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
Where the goods in the application at issue and/or in the
cited registration are broadly identified as to their
nature and type, such that there is an absence of any
restrictions relating to the channels of trade and no
limitations relating to the classes of purchasers, it is
presumed that in scope the identifications of goods
encompass not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
Ser. No. 85056406
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1981). Further, it is not necessary that the respective
goods be identical or competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Contrary to
the gist of applicant’s argument that purchasers would not
confuse horse feed with vitamins and herbal remedies for
animals, the issue is not whether consumers would confuse
the goods themselves, but rather whether they would be
confused as to the source of the goods.
Clearly, as shown by the terminology in applicant’s
own identification of goods that its products are used in
animal feeds, the goods are related. That is to say,
applicant’s supplements and additives are used in
combination with animal feeds. Thus, we fully endorse the
examining attorney’s view that the goods are complementary
and, thus, related for purposes of the second du Pont
factor. See, e.g., In re Toshiba Medical System Corp., 91
Ser. No. 85056406
9
USPQ2d 1266, 1272 (TTAB 2009); and Polo Fashions, Inc. v.
La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984). The fact
that, as asserted by applicant, its herbal remedies may be
targeted at specific health concerns (circumstances that
are not reflected in the identification of goods) does not
change our finding. (Reply Brief, p. 3).
With respect to the similarity between the goods, the
examining attorney introduced several third-party
registrations, each showing a mark registered for both
types of goods involved in this appeal, namely animal feeds
and animal additives and/or supplements. “Third-party
registrations which cover a number of differing goods
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993).
In a feeble attempt to discount this evidence,
applicant submitted evidence that a large corporation, S.C.
Ser. No. 85056406
10
Johnson & Sons, uses the same mark on a wide variety of
goods, some of which are not related (e.g., automobile wax
and insect repellants). We agree, however, with the
examining attorney’s response that her evidence “did not
include evidence of companies that are mass producers of
many product lines” (which, the examining attorney candidly
concedes, would not be persuasive). (Brief, p. 12).
The examining attorney’s evidence also includes
excerpts of third-party websites showing that the same
online retailers offer both horse feed and horse
supplements emanating from the same source under the same
mark.
The examining attorney’s evidence, not to mention the
terminology itself in applicant’s identification of goods,
clearly establishes that applicant’s and registrant’s goods
are closely related.
Applicant introduced the affidavit of applicant’s
owner, Rhonda A. Newman. Ms. Newman stated, in pertinent
part, that applicant’s mark is used in connection with 25
herbal products marketed for specific issues related to a
horse’s health, such as colic, liver problems and kidney
trouble; that applicant’s products are not sold in retail
outlets, but rather are sold only thorough distributors
specifically authorized to sell these products; that these
Ser. No. 85056406
11
distributors go through 2-3 days training programs to
familiarize themselves with the potential health needs of
horses and applicant’s products; that no single seller
offers both applicant’s and registrant’s product; and that
customers are active in the equine world and are
knowledgeable about equine products.
Notwithstanding the affidavit, applicant’s
identification of goods is not limited as to trade channels
or classes of purchasers; neither is registrant’s
identification. In the absence of such limitations, we
presume, as indicated earlier, that the identified goods
are offered in all channels of trade which would be normal
therefor (e.g., horse supply stores), and that they would
be purchased by all potential buyers thereof (e.g., horse
owners).2
The similarity between the goods, and the identity in
trade channels and purchasers weigh in favor of a finding
of a likelihood of confusion.
Applicant also asserts, through its reliance on Ms.
Newman’s affidavit, that purchasers are sophisticated, that
is, they are familiar with products for their horses and,

2 Applicant concedes that applicant’s and registrant’s goods
appeal to the same broad class of buyers, namely horse owners.
(Brief, p. 6).
Ser. No. 85056406
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thus, are more informed about their purchasing decisions.
Even assuming that horse owners are sophisticated when it
comes to buying products for their horse’s well being, such
as feeds and supplements, it is settled that even
sophisticated purchasers are not immune from source
confusion, especially in cases such as the instant one
involving similar marks and closely related goods. See In
re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) [“Human memories even of discriminating
purchasers...are not infallible.”]. See also In re
Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarities between the marks and the goods sold
thereunder outweigh any sophisticated purchasing decision.
See HRL Associates, Inc. v. Weiss Associates, Inc., 12
USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v.
HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990) [similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods]. Thus, this factor is neutral.
As pointed out by the examining attorney, applicant’s
argument relating to the different classification of the
goods is irrelevant. The classification of goods and
Ser. No. 85056406
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services by the USPTO is a purely administrative
determination and has no bearing on the issue of likelihood
of confusion. Jean Patou Inc. v. Theon Inc., 9 F.3d 971,
29 USPQ2d 1771 (Fed. Cir. 1993); and National Football
League v. Jasper Alliance Corp., 16 USPQ2d 1212 (TTAB
1990).
Ms. Newman also essentially attests to the absence of
any actual confusion between the involved marks. The
contemporaneous use of applicant’s and registrant’s marks
for a period of over three years without actual confusion
is entitled to little weight. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205
(Fed. Cir. 2003) (“uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value”). See also In re Bisset-Berman Corp., 476 F.2d 640,
177 USPQ 528, 529 (CCPA 1973) (stating that self-serving
testimony of applicant’s corporate president’s unawareness
of instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). The lack of evidence of actual
confusion carries little weight, J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965),
especially in an ex parte context. In any event, the
record is devoid of probative evidence relating to the
Ser. No. 85056406
14
extent of use of applicant’s and registrant’s marks and,
thus, whether there have been meaningful opportunities for
instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). Accordingly, the du Pont factor of the length of
time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is
considered neutral.
We conclude that consumers familiar with registrant’s
horse feed sold under the mark EQUINE CHOICE would be
likely to believe, upon encountering applicant’s mark
EQUINE NATURAL CHOICE for animal feed supplements, dietary
supplements for animals, herbal supplements, natural herbal
supplements, and non-medicated additives for animal feed
for use as nutritional supplements, that the goods
originated from or are associated with or sponsored by the
same entity. That is to say, consumers familiar with
registrant’s mark and product who encounter applicant’s
mark on applicant’s goods will mistakenly believe that
registrant has extended its EQUINE CHOICE brand for horse
feeds to natural horse feed supplements and additives under
the EQUINE NATURAL CHOICE brand.
Ser. No. 85056406
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Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.