Hill’s Pet Nutrition, Inc.v.PMI Nutrition, Inc.

Trademark Trial and Appeal Board

Jan 19, 2006

No. 91150380 (T.T.A.B. Jan. 19, 2006)

Mailed: January 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Hill’s Pet Nutrition, Inc.
v.
PMI Nutrition, Inc.
_____

Opposition No. 91150380
to application Serial No. 78054552
filed on March 22, 2001
_____

Kandis M. Koustenis of Goodwin Procter LLP for Hill’s Pet
Nutrition Inc.

Jeffrey L. Michelman of Blumenfeld, Kaplan & Sandweiss, P.C.
for PMI Nutrition Inc.
______

Before Rogers, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, PMI Nutrition, Inc., seeks registration of
the mark SUPERIOR NUTRITION FOR EXCEPTIONAL PETS (in
standard character form) for goods identified in the
application as “pet food” in International Class 31.1

1 Serial No. 78054552, filed March 22, 2001, alleging January 31,
2001 as the date of first use and first use in commerce.
Trademark Act Section 1(a), 15 U.S.C. §1051(a).

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91150380
2
Opposer, Hill’s Pet Nutrition, Inc., opposed
registration of applicant’s mark, on the grounds that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used, registered and famous marks2
SUPERIOR NUTRITION FOR THE LIFE OF YOUR PET and SUPERIOR
NUTRITION FOR THE LIFELONG HEALTH OF YOUR PET for pet food
products as to be likely to cause confusion, to cause
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d).3
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition.4
The evidence of record consists of the pleadings
herein; the file of the opposed application; the testimony

2 Opposer pleaded two applications which matured into
registrations during the course of this proceeding. Opposer
submitted, under notice of reliance, status and title copies of
these registrations in support of, inter alia, its allegations of
standing and priority. Inasmuch as applicant has not objected,
and opposer pleaded the underlying applications in its notice of
opposition, we deem the notice of opposition amended to include
these registrations and consider them for the purposes for which
they have been submitted. These registrations are discussed in
detail infra.

3 The notice of opposition also references a claim of false
suggestion of a connection under Section 2(a) of the Trademark
Act and dilution under Section 43(c) of the Trademark Act.
However, these claims were not sufficiently pleaded and opposer
did not pursue these claims in its brief. In view thereof, the
Board considers the false suggestion and dilution claims to have
been waived.

4 Applicant’s answer also contained several affirmative defenses,
including an allegation of a prior registration owned by
applicant. However, inasmuch as applicant did not take
testimony, submit evidence or file a brief, these affirmative
defenses are considered to have been waived.
Opposition No. 91150380
3
deposition (with exhibits) of Mr. John Munchoff, opposer’s
Director of Marketing. In addition, opposer submitted,
under a notice of reliance, status and title copies of
opposer’s pleaded registrations.
The pleaded registrations, all of which are in full
force and effect and owned by opposer, are summarized as
follows:
Registration No. 2527991 for the mark
SUPERIOR NUTRITION FOR THE LIFE OF YOUR PET (in
standard character form) for animal foods for
dogs, cats, and other domesticated household pets
in International Class 31, filed February 25,
1999, issued January 8, 2002; and

Registration No. 2550682 for the mark
SUPERIOR NUTRITION FOR THE LIFELONG HEALTH OF YOUR
PET (in standard character form) for veterinarian-
supervised dietary pet food in International Class
5, printed leaflets and brochures concerning pet
care and nutrition in International Class 16, and
pet food in International Class 31, filed October
19, 1999, issued March 19, 2002.

Because opposer has made its pleaded registrations of
record by way of notice of reliance, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our likelihood of confusion determination under Section
2(d) 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 and Co., 476 F.2d 1357, 177 USPQ
Opposition No. 91150380
4
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
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). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to the second, third and fourth du Pont
factors, i.e., the similarities between opposer's and
applicant's goods and the similarities between opposer's and
applicant's trade channels and classes of purchasers of
these goods. We must make our determinations under these
factors based on the goods as they are recited in the
application and registrations, respectively. See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
The goods need not be identical or directly competitive
in order for there to be a likelihood of confusion. Rather,
the respective goods need only be related in some manner or
the conditions surrounding their marketing be such that they
could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief
that the goods come from a common source. In re Martin's
Opposition No. 91150380
5
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
“Pet food,” as identified in the application is
identical to “pet food,” as identified in Registration No.
2550682, and legally identical to “animal foods for dogs,
cats, and other domesticated household pets,” as identified
in Registration No. 2527991. Further, given the absence of
any restrictions or limitations in the parties’ respective
identifications of goods, and because the parties’
respective goods are identical they are deemed to be
marketed in the same trade channels and to the same classes
of purchasers. Kangol Ltd. V. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Finally, the
parties’ respective goods are ordinary consumer items which
would be purchased without a great deal of care, by ordinary
consumers. These findings under the second, third and
fourth du Pont factors all weigh significantly in opposer’s
favor in our likelihood of confusion analysis.
We turn next to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s marks are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
Opposition No. 91150380
6
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions 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). Finally, we note that where the goods
are identical “the degree of similarity [between 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, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Applicant’s mark, SUPERIOR NUTRITION FOR EXCEPTIONAL
PETS, and opposer’s marks, SUPERIOR NUTRITION FOR THE LIFE
OF YOUR PET and SUPERIOR NUTRITION FOR THE LIFELONG HEALTH
OF YOUR PET are depicted in standard character form. The
respective marks are slogans and have the same construction,
beginning with the words SUPERIOR NUTRITION FOR and ending
with the word PET (the plural form in applicant’s mark does
not create a difference). Thus, the commercial impression
of the marks is quite similar as is the connotation, which
conveys a similar message in relation to the goods, i.e.,
high quality, nutritious food for your pet. Therefore,
despite the difference in the words that appear in the
Opposition No. 91150380
7
middle of the slogans, the commercial impression and general
connotation of these marks create confusingly similar marks
such that, and in particular given the identical goods, the
similarities outweigh the differences. We conclude that the
parties’ marks are substantially similar.
Considering the respective marks in their entireties,
we conclude that the evidence of record as it pertains to
the relevant du Pont factors clearly supports a finding of
likelihood of confusion as to the marks in opposer’s
Registration Nos. 2527991 and 2550682 and that registration
of applicant’s mark, therefore, is barred under Trademark
Act Section 2(d).5
Finally, to the extent there is any doubt with regard
to the question of likelihood of confusion, such doubt must
be resolved in favor of opposer, the prior registrant.
Hewlett-Packard Co. v. Packard Press, Inc., 281 USPQ2d 1001,
1003 (Fed. Cir. 2002) (“This court resolves doubts about the
likelihood of confusion against the newcomer because the
newcomer has the opportunity and obligation to avoid
confusion with existing marks”); In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.

5 In view of our finding of likelihood of confusion, we do not
reach opposer’s assertion of fame of its “SUPERIOR” marks.