Fetching Designs LLC dba Smart Cookiev.The SMART-COOKEE Co. LLC

Trademark Trial and Appeal Board

Oct 26, 2015

No. 91215086 (T.T.A.B. Oct. 26, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 26, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Fetching Designs LLC dba Smart Cookie
v.
The SMARTCOOKEE Co. LLC
_____

Opposition No. 91215086
to application Serial No. 85849852
_____

Fetching Designs LLC dba Smart Cookie, pro se.

Thomas Frost for The SMARTCOOKEE Co. LLC.
______

Before Cataldo, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On February 14, 2013, the SMARTCOOKEE Co., LLC (“Applicant”) filed
application Serial No. 85849852 based upon Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), to register on the Principal Register the mark displayed below for
Opposition No. 91215086

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dog treats in International Class 31. In its application, Applicant asserted February
1, 2013 as the date of first use of the mark anywhere and in commerce.1

On February 5, 2014, one day after receiving a cease and desist letter from Fetching
Designs LLC (“Opposer”), Applicant filed an amendment to its involved application
asserting a new earlier date of first use of February 20, 2012.2
Opposer filed a notice of opposition to the registration of Applicant’s mark on the
grounds of likelihood of confusion pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), relying on its application Serial No. 86064476 for the mark
SMART COOKIE (in standard characters) for dog biscuits, dog treats in

1 In response to the Trademark Examining Attorney’s requirement, Applicant disclaimed
“COOKY” apart from the mark as shown. In addition, the application includes the following
statements:
“Color is not claimed as a feature of the mark.”
“The mark consists of a stylized dog wearing a pair of glasses and a bow tie, enclosed in
an inner circle. There is an outer circle, and positioned between the inner circle and outer
circle, are the phrases ‘EAT GOOD’, ‘FEEL GOOD’ and ‘LOOK GOOD’ and above the head
of the dog, ‘SMARTCOOKEE’. There are [sic] a pair of bones, one positioned between ‘EAT
GOOD’ and ‘FEEL GOOD’ and the other between ‘FEEL GOOD’ and ‘LOOK GOOD’.”

2 6 TTABVUE 5, 17-18; 5 TTABVUE 52-54. Record citations are to TTABVUE, the
Trademark Trial and Appeal Board’s publically available docket history system. See Turdin
v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).

Opposition No. 91215086

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International Class 31;3 and fraud in connection with Applicant’s amendment to its
asserted first use date. Insofar as Opposer has not argued the fraud claim in its
brief, in accordance with the Board’s usual practice, we find that claim to have been
waived. See, e.g., Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313,
1314 n.4 (TTAB 2005).
Applicant, in its answer, denied the salient allegations in the Notice of Opposition.
A. Evidentiary Stipulation
The parties stipulated to and the Board approved the taking of testimony by
affidavit.
B. The Record
In view of the foregoing, the record includes the pleadings and, by operation of
Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application file. In
addition, Opposer introduced the following testimony affidavit and evidence:
the affidavit of its co-owner Scott Bradley and corresponding exhibits;4

a Notice of Reliance on Applicant’s Responses to Opposer’s First Set of
Requests for Admissions, Applicant’s Responses to Opposer’s First Set
of Requests for Production of Documents and Things, and Applicant’s
Responses to Opposer’s Second Set of Requests for Production of
Documents and Things, Opposer’s application to register its SMART
COOKIE mark on the Principal Register, and Internet printouts from
several sources which Opposer alleges reflect Applicant’s first use
date.5

3 Filed September 13, 2013 under Section 1(a) of the Trademark Act, based upon an
allegation of June 7, 2012 as a date of first use anywhere and December 6, 2012 as a date of
first use of the mark in commerce.

4 6 TTABVUE.

5 5 TTABVUE.

Opposition No. 91215086

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Applicant introduced the following testimony affidavit and evidence:
the affidavit of its Managing Member Robert Ison, and corresponding
exhibits.6

C. Standing
Standing is a threshold issue that must be proved in every inter partes case.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). In order to meet the standing requirement, a plaintiff need only show
that it has a real interest, i.e., a personal stake, in the outcome of the proceeding.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2012, 2023-24 (Fed. Cir. 1987).
In this case, the Examining Attorney assigned to Opposer’s pleaded application
cited Applicant’s involved application as a potential bar to registration.7 Thus,
Opposer has standing based on the Trademark Examining Operation’s action taken
in regard to its pleaded application. Fiat Group Automobiles S.p.A. v. ISM Inc. 94
USPQ2d 1111 (TTAB 2010). See also Life Zone Inc. v. Middleman Group Inc., 87
USPQ2d 1953 (TTAB 2008) (standing found based on opposer’s ownership of
pending trademark application and Office action which resulted in suspension of its
application due to involved application being cited as a potential bar to
registration).
D. Priority

6 7 TTABVUE.
7 5 TTABVUE 38-41.

Opposition No. 91215086

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The question of priority is an issue in this case because Opposer has asserted
common law rights to SMART COOKIE and does not own an existing registration
upon which it can rely under Section 2(d). Cf. King Candy Co., Inc. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
To establish priority on a likelihood of confusion claim brought under Trademark
Act Section 2(d), a party must prove that, vis-à-vis the other party, it owns “a mark
or trade name previously used in the United States … and not abandoned….”
Trademark Act § 2, 15 U.S.C. § 1052. A party may establish its own prior
proprietary rights in a mark through ownership of a prior registration, technical
trademark use, or through use analogous to trademark use, such as use of the term
in advertising brochures, trade publications, catalogues, newspaper advertisements
and Internet web sites, which create a public awareness of the designation as
identifying the party as a source. See Trademark Act §§ 2(d) and 45, 15 U.S.C.
§§1052(d) and 1127; T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879 (Fed. Cir. 1996); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40 (CCPA 1981); Giersch v. Scripps Network Inc., 90 USPQ2d 1020, 1022
(TTAB 2009).
Opposer must prove that it acquired trademark rights prior to Applicant’s first
use. Thus, Opposer must prove that its trademark is inherently distinctive, or
acquired distinctiveness before the date on which applicant can establish its rights.
Otto Roth, 209 USPQ at 44. (“[I]t is equally clear that if an opposer’s alleged means
of trade designation is not distinctive -- does not identify source -- then there is no
Opposition No. 91215086

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basis upon which to compare such a thing with the applicant’s mark to determine
whether confusion as to source is likely.”).
Under the rule of Otto Roth, a party opposing registration of a
trademark due to a likelihood of confusion with his own unregistered
term cannot prevail unless he shows that his term is distinctive of his
goods [or services], whether inherently or through the acquisition of
secondary meaning or through “whatever other type of use may have
developed a trade identity.”

Towers v. Advent Software, Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir.
1990) (citing Otto Roth, 209 USPQ at 43).
In its brief, Opposer presents the following arguments directed toward the
distinctiveness of its mark:
Here, Opposer has established it owns the SMART COOKIE mark
through the testimony and corroborating evidence provided by Mr.
Bradley. Mr. Bradley testified that starting as early as January 2012,
Opposer had begun making efforts to develop its SMART COOKIE
mark. The domain www.smartcookietreats.com was registered in April
of 2012. The company name, Fetching Designs LLC dba Smart Cookie
was registered in Colorado on June 7, 2012. Finally, in state and out of
state sales began in earnest in December 2012 (See Bradley Decl. ¶1-3,
Ex. 1-3). The testimony of Mr. Bradley has not been contradicted and
Applicant has not and cannot raise any claim that Opposer was not
using its SMART COOKIE mark in commerce by December of 2012.8

Applicant presents the following arguments regarding the lack of distinctiveness
of Opposer’s SMART COOKIE mark:
Opposer’s mark is not inherently distinctive (it should be noted that
Opposer did not assert registrability under 2(f) in its application of
September 12, 2013). As such, Opposer must prove acquired
distinctiveness as a source indicator. Opposer has provided no long
terms [sic] sales figures or advertising figures, evidence of
advertisement, long use of the mark in commerce, or any other

8 10 TTABVUE 9.

Opposition No. 91215086

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information that the design as presented by Opposer has acquired
distinctiveness.

Two isolated sales totaling $43.41 (Opposer’s exhibits 1 and 2), not
shown to be related to any specific mark as a source identifier, are
insufficient to meet the burden. The two sales do not establish use of
the mark, and certainly do not meet the requirements as set forth by
Otto Roth & Co. concerning long term sales and figures.

In the affidavit of J. Scott Bradley it is asserted that a domain name
was registered on April 23, 2012, and that various other activities
were commenced prior to the filing date of Applicant. As indicated
above, these activities are of very little probative value, and should
be disregarded in proving that a mark has acquired distinctiveness.
Opposer has failed to establish exclusive and continuous use as of
any mark prior to February 14, 2013, the constructive use (filing)
date upon which Applicant can rely.9

In its reply brief, Opposer raises the following arguments:
Opposer, through its initial trademark application, its Notice of
Opposition, and most importantly Mr. Bradley’s affidavit, has
consistently listed December 6, 2012 as its priority date. Opposer has
also detailed its priority date in its Trial Brief, and relies on those
arguments here as well. However, in Applicant’s section of its Trial
Brief regarding Priority of Use, Applicant actually only argues that
Opposer’s SMART COOKIE mark is not inherently distinctive and
Opposer has not established acquired distinctiveness.

Applicant provides no reasoning, evidence, or case law, for its argument
that Opposer’s SMART COOKIE mark is not inherently distinctive.
The SMART COOKIE mark, as attached to dog treats, is clearly not
descriptive. In Opposer’s application for the SMART COOKIE mark,
the examiner did not require any proof of acquired distinctiveness, as
the SMART COOKIE mark does not describe any of the services
provided by Opposer. Opposer’s SMART COOKIE mark, just like
Applicant’s SMARTCOOKEE design mark, is surely inherently
distinctive as applied to dog treats.10

9 11 TTABVUE 9.

10 12 TTABVUE 6.
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A designation asserted as a mark is not inherently distinctive if it is merely
descriptive or generic. Because the parties in their briefs have discussed whether
SMART COOKIE is a merely descriptive designation, we consider whether the term
is merely descriptive of goods on which Opposer maintains it uses SMART
COOKIE, and, if it is merely descriptive, whether Opposer has established that
SMART COOKIE has acquired distinctiveness, prior to the filing date of Applicant’s
application.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). Whether
a term is merely descriptive is determined not in the abstract, but in relation to the
goods or services for which registration is sought, the context in which it is being
used on or in connection with those goods or services, and the possible significance
that the term would have to the average purchaser of the goods or services because
of the manner of its use. That a term may have other meanings in different contexts
is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether someone presented with
only the mark could guess what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314,
Opposition No. 91215086

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1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
We begin by observing that both Applicant and Opposer respectively have
disclaimed the terms “COOKY” and “COOKIE” in response to requirements from
the Examining Attorneys reviewing their applications. The Office Action issued by
the Examining Attorney for Opposer’s application requiring the disclaimer is part of
the record; however, the attachments including the evidence relied upon in support
of the requirement are not.11 Nonetheless, based upon the disclaimers we find that
both Opposer and Applicant acknowledge that “COOKIE” or “COOKY” merely
describes a feature or characteristic of the identified goods. In re Carlson, 91
USPQ2d 1198, 1200 (TTAB 2009); Bass Pro Trademarks LLC v. Sportsman’s
Warehouse, Inc., 89 USPQ2d 1844, 1851 (TTAB 2008).
However, there is nothing in the record to suggest that “SMART” or SMART
COOKIE is merely descriptive of dog treats or dog biscuits. We hereby take judicial
notice of the following dictionary definition of “SMART” – “quick or prompt in
action, as persons; having or showing quick intelligence or ready mental capability;
shrewd or sharp, as a person in dealing with others or as in business dealings.”12 As

11 5 TTABVUE 37-41.

12 Dictionary.com Unabridged, based on the Random House Dictionary, Random House, Inc.
2015.
The Board may take judicial notice of dictionary definitions, including those in online
dictionaries which exist in printed format. In re Premiere Distillery, LLC, 103 USPQ2d
1483, 1484 (TTAB 2012); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91215086

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defined, the term SMART COOKIE suggests dog treats or biscuits that may render
one quick, shrewd or sharp or perhaps suggests those qualities in purchasers
thereof. Nonetheless, the term SMART COOKIE does not merely describe any
feature or characteristic of Opposer’s goods. In addition, the term “SMART
COOKIE” has a recognized significance as “someone who is clever and good at
dealing with difficult situations If anyone can make this company succeed, it’s Kathy
– she’s one smart cookie.”13 Thus, SMART COOKIE suggests a desirable quality of
Opposer’s dog treats and biscuits, namely, that they reflect cleverness on the part of
dogs or their owners. Notwithstanding Applicant’s arguments to the contrary, based
on this record the mark SMART COOKIE, while suggestive of a feature or
characteristic of Opposer’s dog treats and biscuits, is inherently distinctive as a
mark.
We turn then to Opposer’s claim of priority. In his affidavit, Opposer’s co-owner J.
Scott Bradley asserts as follows:
The conception of Smart Cookie started in January 2012.

The domain name www.smartcookietreats.com was registered with
GoDaddy on April 23, 2012.

Fetching Designs LLC dba Smart Cookie registered with the
Colorado Secretary of State on June 7, 2012, in addition, Smart
Cookie received its Federal Employer Identification Number from
the IRS on June 7, 2012.

Logo creation, brand standards, and website design was initiated
with Wick Creative on July 8, 2012.

13 idioms.thefreedictionary.com/a+smart+cookie
Opposition No. 91215086

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Smart Cookie products were received by Warren Analytical labs for
guaranteed analysis testing on September 26, 2012.

On October 6, 2012, the Facebook page was created for Smart
Cookie.

On October 15, 2012, Smart Cookie joined Shopify as the
ecommerce platform for Opposer’s website.

Smart Cookie registered with the Colorado Department of Revenue
for a sales tax license on December 29, 2012.14

With his affidavit, Mr. Bradley introduced, inter alia, the following three exhibits:
The document attached as Opposer’s Exhibit 1 is a report of the
first orders placed with Smart Cookie for dog treats which bear the
Smart Cookie mark. This document shows orders placed as early as
December 6, 2012.

Exhibit 1 is an Internet screenshot from smart-cookie-treats.myshopify.com
showing sale of one package of SMART COOKIE dog treats on December 6, 2012.
The document attached as Opposer’s Exhibit 2 is a copy of an out of
state order for SMART COOKIE dog treats.

Exhibit 2 is a screenshot from the same website showing sale of a package of
SMART COOKIE dog treats on January 14, 2013.
The document attached as Opposer’s Exhibit 3 is a printout
reflecting completed SMART COOKIE dog treat transactions in
December of 2012.

Exhibit 3 is a screenshot from authorize.net showing account settlement for the
above two online purchases, although it does not display the SMART COOKIE
mark.15

14 6 TTABVUE 4.

15 Id. at 4-5, 9-15.

Opposition No. 91215086

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Based upon its testimony affidavit and exhibits of record, Opposer has established
use of SMART COOKIE as a trademark in connection with Internet sales of its
goods since as early as December 6, 2012.16
We turn to Applicant’s evidence in support of its claim of priority. Through his
affidavit, Robert Ison, Managing Member of Applicant, introduces the following:
Exhibit 1 is a representation of the mark as created in January, 2012.
The mark was inspired by Ison’s family pet.

We note, however, that Exhibit 1 is merely a copy of Applicant’s drawing of its mark
with the date “January 2012” displayed beneath.
Exhibit 2 is the product with the mark was [sic] first used and
placed in commerce. Advertisements were used with the product in
February, 2012. The product with the mark was initially sold as part of
pet friendly events starting in St. Petersburg, Florida, on February 20,
2012. The product became available sale [sic] on Zazzle.Com
starting June 13, 2012.

Exhibit 2 is packaging with a label that displays Applicant’s mark, but is undated.
Attached as Exhibit 3 is a photo of the product bearing the mark
filed as a specimen in the current application. The product had
been in use in commerce since February 20, 2012.

Similarly, Exhibit 3 appears to be identical to Exhibit 2 and displays Applicant’s
mark, but is undated.
Attached as Exhibit 4 is an advertisement first distributed on
February 20, 2012, which was mailed to various pet supply
entities through-out the United States.

Exhibit 4 displays Applicant’s mark and photographs of its goods, but also is

16 Although the December 6, 2012 sale was intrastate, it is sufficient to establish priority.
Panda Travel Inc. v. Resort Option Enters. Inc., 94 USPQ2d 1789, 1794-95 (TTAB 2009).
Opposition No. 91215086

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undated.17
The only other evidence to support Applicant’s claim of first use of its mark is a
handwritten entry, reproduced in relevant part below, provided in response to
Opposer’s Second Set of Requests for Production of Documents and Things No. 2,
seeking “Any and all dated sales invoices from the year 2012 for products sold by
Defendant for products that bore the mark as shown in U.S. Serial No.
85/849,852.”18
However, there is no indication that the goods assertedly sold on the dates indicated
in the handwritten ledger bear the mark in Applicant’s involved application.

17 7 TTABVUE 2-12.

18 5 TTABVUE 21-26.
Opposition No. 91215086

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It is well-settled that in the absence of any evidence of earlier use, the earliest
date upon which an applicant may rely is the filing date of its challenged
application. See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See also Larami
Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). In this case,
application Serial No. 85849852 was accorded a filing date of February 14, 2013. As
noted above, Applicant originally asserted February 1, 2013 as a date of first use
and first use in commerce of its applied-for designation as a mark. Subsequent to
receiving a cease and desist letter from Opposer, Applicant amended its first use
date to February 20, 2012, i.e., the first use date Applicant now asserts in its brief.
It is also settled that a party seeking to assert and prove a first use date prior to
the date indicated in its application faces a heavy burden of proof. In that regard,
our primary reviewing Court has stated as follows:
Where an applicant seeks to prove a date earlier than the date alleged
in its application, a heavier burden has been imposed on the applicant
than the common law burden of preponderance of the evidence. See
Rockwood Chocolate, 372 F.2d at 554, 152 USPQ at 600 (“proof of such
earlier date must be clear and convincing”); Elder Mfg. Co. v.
International Shoe Co., 194 F.2d 114, 118, 92 USPQ 330, 332 (CCPA
1952) (“proof must be clear and convincing”). The reason for such an
increased evidentiary burden, supported by common sense, is that a
change of position from one “considered to have been made against
interest at the time of filing of the application”, Stanspec Co. v.
American Chain & Cable Co., 531 F.2d 563, 567, 189 USPQ 420, 424
(CCPA 1967), requires enhanced substantiation.

Hydro-Dynamics Inc. v. George Putnam & Co. Inc. 1 USPQ2d 1772, 1773 (Fed. Cir.
1987).
Applicant’s affiant, Mr. Ison, does not explain why Applicant asserted February
1, 2013 as a date of first use and first use in commerce in the involved application,
Opposition No. 91215086

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but subsequently asserts February 20, 2012 as the date of first use in its
amendment and brief. We further note that Applicant’s contentions, unlike
Opposer’s, are not supported by any probative documentary evidence. We observe in
addition that evidence introduced into the record by Opposer in the form of
screenshots from Applicant’s Facebook page and Opposer’s search of the Internet
Archive Wayback Machine call into question the date upon which Applicant’s page
was created.19 In that regard, it is settled that oral testimony, even of a single
witness, if “sufficiently probative,” may be sufficient to prove priority. Powermatics,
Inc. v. Glebe Roofing Products Co., 341 F.2d 127, 144 USPQ 430 (CCPA 1965); and
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007).
However, we find Mr. Ison’s affidavit to contain too little information to be
probative of Applicant’s assertion of a date of first use nearly a year earlier than
that originally asserted in its involved application. Thus, Mr. Ison’s affidavit falls
short of satisfying the heavy burden of proof articulated in Hydro-Dynamics.
In light of the foregoing, the earliest date of first use we can ascribe to Opposer of
its common-law SMART COOKIE mark is December 6, 2012. The earliest date of
first use upon which Applicant is entitled to rely is the February 14, 2013 filing date
of its involved application. Therefore, on this record, we find that Opposer has met
its burden of showing by a preponderance of the evidence that it first used the mark
SMART COOKIE in connection with its goods prior to Applicant’s constructive first
use. We observe in addition that Applicant had the opportunity to present
testimony and evidence to rebut the testimony and evidence submitted by Opposer,

19 Id. at 64-69.
Opposition No. 91215086

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or clearly establish a first use date prior to its application filing date, and failed to
do so.
E. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics
of the goods and differences in the marks.”).
Turning to the second and third du Pont factors – similarity of the goods and
channels of trade – we find that Applicant’s identified dog treats are subsumed
by and thus identical in part to Opposer’s dog biscuits, dog treats. We further
observe that Opposer’s dog biscuits appear as identified to be a type of dog treats,
and thus are closely related thereto. Because the goods identified in Applicant’s
involved application and Opposer’s pleaded application are in part identical and
otherwise closely related, we must presume that the channels of trade and classes of
purchasers are also the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’
Opposition No. 91215086

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goods, and the lack of any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade.”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”). The second and third du Pont factors thus
strongly support a finding of likely confusion.
Turning to our consideration of the marks at issue, we note initially that, “[w]hen
marks would appear on virtually identical ... [goods or] services, the degree of
similarity [of the marks] necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992). See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
We turn then to a comparison of Applicant’s mark

to Opposer’s mark SMART COOKIE in standard characters. In determining the
similarity or dissimilarity of marks, we must consider the marks in their entireties
Opposition No. 91215086

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in terms of sound, appearance, meaning and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). In this case, the mark SMART COOKEE EAT GOOD FEEL GOOD
LOOK GOOD and design is similar to Opposer’s mark SMART COOKIE inasmuch
as Applicant’s mark includes as a prominent feature the entirety of Opposer’s mark.
The minor difference in spelling between COOKEE and COOKIE as the term
appears in the marks is of little consequence and does not create a meaningful
difference in the appearance, or any difference in the sound thereof. Furthermore,
there is no evidence that COOKEE is anything other than a novel spelling of
COOKIE: the terms thus share a common meaning. The terms SMART COOKEE
and EAT GOOD FEEL GOOD LOOK GOOD in Applicant’s mark do not blend
together as a single phrase. The wording SMART COOKEE is in a larger font in a
convex shape at the top of Applicant’s circular mark and EAT GOOD FEEL GOOD
LOOK GOOD is in a smaller concave font at the bottom of the mark, giving the
term SMART COOKEE separate visual prominence in the mark.
In addition, the marks as a whole are substantially similar in meaning and
commercial impression. As applied to the identified goods, both marks suggest
treats for clever dogs or high quality dog treats that are a smart choice for pet
owners, and that meaning and impression in both marks is conveyed by the term
SMART COOKIE or SMART COOKEE. The combination of SMART COOKEE and
EAT GOOD FEEL GOOD LOOK GOOD simply suggests one particular type of treat
for smart cookies, both dogs and their owners. The additional terms EAT GOOD
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FEEL GOOD LOOK GOOD would do little to prevent consumers from mistakenly
assuming that Applicant’s dog treats are a new or special treat within the line of
Opposer’s dog biscuits and treats or that Applicant’s product is licensed or
sponsored by, or is otherwise associated with Opposer, or that Applicant’s logo is
another version of Opposer’s mark.
The design of a stylized anthropomorphic dog wearing a bow tie and glasses
reinforces the wording SMART COOKEE inasmuch as the design depicts a dog who
appears clever and smartly dressed. Similarly, the stylized dog treats in Applicant’s
mark further call to mind the dog treats or “cookies” identified thereby. Thus, while
the design in Applicant’s mark is visually prominent, it serves to reinforce the
wording therein. Furthermore, it is settled that if a mark comprises both wording
and a design, then the wording is normally accorded greater weight because it
would be used by purchasers to request the identified goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Viewed as a whole, we find that Applicant’s mark is more similar to Opposer’s
mark than dissimilar in terms of appearance, sound, and especially connotation and
overall commercial impression, as applied to goods that are, in part, identical.
Therefore, the first du Pont factor, similarity of the marks, also weighs in favor
of a likelihood of confusion.
To the extent that any other du Pont factors for which no evidence was
presented may be applicable, we treat them as neutral.
Opposition No. 91215086

- 20 -
In view of our findings that the marks are similar and the goods are highly
related or identical and move in the same channels of trade and to the same
customers, we find that Applicant’s mark is likely to cause confusion with
Opposer’s mark when used in association with Applicant’s goods.20
F. Conclusion
We have carefully considered all of the parties’ testimony affidavits and other
evidence pertaining to standing, priority of use and the relevant du Pont factors, as
well as all of the parties’ arguments with respect thereto, including any evidence
and arguments not specifically discussed in this opinion.
We conclude that Opposer has established its standing, priority of use and that
consumers familiar with Opposer’s goods under its common law SMART COOKIE
mark would be likely to believe, upon encountering Applicant’s applied-for mark for
its in-part identical goods, that the parties’ goods originate with or are associated
with or sponsored by the same entity. In making our determination, we have
balanced the relevant du Pont factors. The factors of the similarity of the marks and
the identity in part of the goods and presumed identity in trade channels and
consumers weigh strongly in Opposer’s favor.
Decision: The opposition is sustained on the ground of likelihood of confusion,
and registration to Applicant is refused.

20 We note in addition that in response to Opposer’s Request for Admission No. 2 “Admit
that a likelihood of confusion exists as between Defendant’s trademark as shown in U.S.
Serial No. 85/849,852 and Opposer’s SMART COOKIE mark,” Applicant’s response was
“Admit.” 5 TTABVUE 7-8.