Lavelle Industries, Inc.

Trademark Trial and Appeal Board

Jun 12, 2019

87420189 (T.T.A.B. Jun. 12, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lavelle Industries, Inc.
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Serial No. 87420189
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Joseph S. Heino and Erin E. Kaprelian of Davis & Kuelthau SC
for Lavelle Industries, Inc.
Rachael Dickson, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____

Before Taylor, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Lavelle Industries, Inc. (“Applicant”) seeks to register on the Principal Register
the mark RUFF CHEWERS in standard characters (CHEWERS disclaimed) for “dog
toys; pet toys” in International Class 28.1
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that it so resembles the registered mark on the Principal Register displayed below

1 Application Serial No. 87420189, filed April 21, 2017, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
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for “beds for household pets” in International Class 20,2 that, when used on or in
connection with Applicant’s identified goods, it is likely to cause confusion or mistake
or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney maintained the refusal to
register and denied the request for reconsideration. The appeal is fully briefed
For the reasons set forth below, we affirm the Section 2(d) refusal.
I. Applicable Law
The Board bases its determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In reaching its determination, the Board has considered and balanced all

2 Registration No. 4743137, issued on May 26, 2015, alleging March 2, 2014, as the date of
first use anywhere and in commerce. The description of the marks is: “The mark consists of
two words, ‘RUFF CHEW’ in white letters with the word ‘RUFF’ above the word ‘CHEW’; the
background is brown and has a trapezoidal shape.” The colors brown and white are claimed
as features of the mark.
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relevant du Pont factors either argued or for which evidence was made of record. See
M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed.
Cir. 2006) (even within du Pont list, only factors that are “relevant and of record”
need be considered).
A. The Marks

We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 577). “The proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1905 (TTAB 2007)). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (citing Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975)). Our analysis cannot be
predicated on dissection of the involved marks. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather,
we are obliged to consider the marks in their entireties. Id. See also Franklin Mint
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Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). Nonetheless,
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 a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at
1161.
Applicant argues that the stylized font, design element and color scheme in the
cited mark cannot be ignored and distinguish the marks. We disagree based on the
striking similarities between the literal portions of each mark. The sole distinction
between ROUGH CHEW and ROUGH CHEWERS is the suffix “-ers” in the cited
mark. Each mark projects a similar connotation of products that can withstand
“rough” chewing by a pet.
As to the graphics in which the words in Registrant’s mark appear, we find that
the presence of the common design element consisting of a brown rectangle enclosing
the stylized wording ROUGH CHEW fails to mitigate the similar sound, appearance,
and connotation of the marks. When a mark consists of a literal portion and a design
portion, the literal portion is usually more likely to be impressed upon a purchaser’s
memory and to be used in calling for the goods or services; therefore, the literal
portion is normally accorded greater weight in determining whether marks are
confusingly similar. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed.
Cir. 2012); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See
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also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re
Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). This is especially
true here where the design feature in the cited mark merely serves as a carrier for
the wording and does not include a distinctive element with strong source-identifying
characteristics. See In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1139
(TTAB 2015).
Applicant states that it does not intend to use its mark in a similar stylization.
This argument is irrelevant because Applicant seeks to register its mark in standard
characters. We must therefore assume that Applicant’s mark could be presented in
the same stylized font or manner as Registrant’s mark. See In re Viterra, 101 USPQ2d
at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)
(stating that “the argument concerning a difference in type style is not viable where
one party asserts rights in no particular display”).
Overall, Applicant’s applied-for mark is similar in appearance, sound, connotation
and commercial impression to the registered mark. The literal portions of the applied-
for and cited marks are nearly identical in appearance, sound, connotation, and
commercial impression; therefore, the addition of carrier design and stylization
elements does not obviate the similarity of the marks in this case. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). The first du Pont factor
therefore weighs in favor of finding a likelihood of confusion.
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B. The Goods
Next we compare the goods identified in Applicant’s application vis-à-vis the
goods identified in the cited registration, the second du Pont factor. See Stone Lion,
110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is not necessary that
the respective goods be identical or even competitive in order to find that they are
related for purposes of our analysis. The respective goods need only be “related in
some manner and/or if the circumstances surrounding their marketing [be] such that
they could give rise to the mistaken belief that [the services] emanate from the same
source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). See also In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991). Evidence of relatedness may include news articles
and/or evidence from computer databases showing that the relevant goods/services
are used together, used by the same purchasers or offered under the same mark;
advertisements showing that the relevant goods/services are advertised together or
sold by the same manufacturer or dealer; and/or copies of prior use-based
registrations of the same mark for both applicant’s goods/services and the
goods/services listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810,
1817 (TTAB 2014) (finding pepper sauce and agave related where evidence showed
both were used for the same purpose in the same recipes and thus consumers were
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likely to purchase the products at the same time and in the same stores). The issue
is not whether purchasers would confuse the goods, but rather whether there is a
likelihood of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant’s goods are identified as “dog toys; pet toys;” Registrant’s goods are
listed as “beds for household pets.” These products may be used together for pets who
take their toys to bed, making them by their very nature complementary products. In
addition, the Examining Attorney’s evidence obtained from online retailers shows
that both Applicant’s and Registrant’s goods are sold under the same mark. For
example, Amazon.com offers beds for household pets and pet toys bearing the mark
PETER’S; Petco.com offers beds and toys for household pets bearing the mark
CHUCKIT! as well as beds for household pets and dog toys from the brands Petco,
Heritage Pets, Star Wars, and Seaside Summer. See July 25, 2017 Office Action,
TSDR p. 9-15 and January 19, 2018 Office Action, TSDR p. 6-11, 15-16. This evidence
demonstrates that it is not uncommon for manufacturers to both make and offer for
sale pet toys and pet beds, often under the same marks. Consumers may expect to
find both Applicant’s and Registrant’s goods emanating from a common source.
Thus, the record shows that the goods identified in the application and
registration are complementary and otherwise related products. As such, the second
du Pont factor also weighs in favor of finding a likelihood of confusion.
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C. Trade Channels
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications in the application and cited registration have
no restrictions on channels of trade, we must presume that the goods travel in all
channels of trade appropriate for such goods, which the record shows include direct
business to consumer (“B2C”) manufacturer operated web sites specializing in pet
care and animal products. See In re Viterra, 101 USPQ2d at 1908 (quoting Hewlett-
Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005). We can also presume based
on common knowledge that brick-and-mortar pet stores would also offer Applicant’s
and Registrant’s goods. In addition, both parties’ goods may be encountered by the
same prospective consumers, which includes members of the general public who own
a pet such as a dog and are seeking chew toys and a place for their dog to sleep.
As such, the third du Pont factor regarding the similarity or dissimilarity of
established, likely to continue trade channels also favors a finding of likelihood of
confusion.
D. Conditions of Sale
Next we consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers, the fourth du Pont factor. Purchaser sophistication
or degree of care may tend to minimize likelihood of confusion. Conversely, impulse
purchases of inexpensive items may tend to have the opposite effect. Palm Bay, 73
USPQ2d at 1695.
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Applicant argues that the goods offered under its mark and the cited mark are
not impulse purchases and that purchasers exercise a high degree of care. As
Applicant contends, millennials care deeply about their pets and consider them
“starter children,” making these consumers are “very discriminating and discerning
purchsers[sic] of pet products.” Applicant’s Brief, 7 TTABVUE 7-8.
The fact that millennials, or for that matter any age demographic, care deeply
about their pets does not mean that they are immune from source confusion, or that
they exercise a high degree of care in purchasing pet toys, which are often
interchangeable and have a limited lifespan. Because neither Applicant’s nor
Registrant’s identification limits the goods to a particular price point, we must treat
the goods as including both inexpensive as well as high-end products. The record
shows that, at a minimum, at least some of the involved goods are sold at a relatively
low price point. For example, the Chuckit! Travel Dog Bed retails for $19.39 and the
Ultra Ball Dog Toy for $7.99-$8.95. July 25, 2017 Office Action, TSDR p. 13-14. At
these relatively low prices, prospective consumers are more likely to make impulse
purchases. “When products are relatively low-priced and subject to impulse buying,
the risk of likelihood of confusion is increased because purchasers of such products
are held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984). Thus, the du
Pont factor of the conditions of sale also weighs in favor of a finding of likelihood of
confusion.
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E. Strength of the Cited Mark
We will now consider the number and nature of similar marks in use on similar
goods and the commercial strength of the mark, the sixth du Pont factor. In an ex
parte appeal, “[t]he purpose of [an applicant] introducing third-party uses is to show
that customers have become so conditioned by a plethora of such similar marks that
customers have been educated to distinguish between different such marks on the
bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal
citations omitted). “[T]he strength of a mark is not a binary factor” and “varies along
a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-
76 (internal citations omitted). “The weaker [the Registrant’s] mark, the closer an
applicant’s mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Id. at
1676 (internal citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence
of third-party use of similar marks on similar goods is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection.”). “In determining
the strength of a mark, we consider both its inherent strength based on the nature of
the mark itself and its commercial strength, based on the marketplace recognition
value of the mark.” American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of
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India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and McCarthy on
Trademarks and Unfair Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses
on the inherent potential of the term at the time of its first use. The second evaluates
the actual customer recognition value of the mark at the time registration is sought
or at the time the mark is asserted in litigation to prevent another’s use.”)).
Applicant maintains that the common element in both marks – the word “rough”
and the word “chew” or variations thereof – are commercially and conceptually weak
as applied to pet products. In support thereof, Applicant has made of record search
results for the term “ruff chew bed” from the Google search engine. Applicant
highlights the following third-party marks mentioned in the search result summary:
ORIGINAL TOUGH BED; DURA-RUFF DOG BED; PET MEGARUFFSA BEDS;
RUFF N’ TUFF CHEW RESISTANT PET BED; MEGARUFFS TOUGH CHEW
RESISTANT BEDS FOR DOGS; ORIGINAL TUFF DOG BED COVER; RUFF N’
TOUGH PET BED; DOG BEDS RUFF LIFE; and RUFF N’ TUMBLE. See December
21, 2017 Response to Office Action, pp. 8-10.
As a general proposition, “[a] search result summary from a search engine, such
as Yahoo! or Google, which shows use of a phrase as key words by the search engine,
is of limited probative value.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) (2018) § 1208.03 and cases cited in Note 7. Compare In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search
engine results—which provide little context to discern how a term is actually used on
the web page that can be accessed through the search result link—may be insufficient
Serial No. 87420189
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to determine the nature of the use of a term or the relevance of the search results to
registration considerations”). However, if, as in this case, the search result summary
has sufficient information to understand the context of usage, it is entitled to
probative weight. See In re Hotels.com L.P., 87 USPQ2d 1100, 1105 n.7 (TTAB 2008),
aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009). While many of these marks
include the term “RUFF,” the phonetic equivalent of the word “ROUGH,” and some
include the word “CHEW,” none consist of the words “rough” or the phonetic
equivalent thereof directly preceding the word “chew” or a variation thereof (such as
“chewer” or “chewing”). Thus, this evidence has some limited probative value in
showing that the term “RUFF” is weak in connection with pet beds.
Applicant also submitted the following Principal Register third-party
registrations3 purportedly to show that the terms “rough” and “chew” are relatively
weak in connection with dog and pet toys:
Reg. No. 4004754 for the mark RUFF-TEX on the Principal
Register for “Games, toys, and playthings, namely, pet
toys, stuffed toys, squeeze toys” in International Class 20;
Reg. No. 3622548 for the mark RUFFWEAR on the
Principal Register for “dog toys” in International Class 20;
Reg. No. 4243045 for the mark RUFFHIDES on the
Principal Register for “dog toys in the nature of non-
digestible chew bones” in International Class 20;

3 We have not considered any applications or cancelled registrations. Third-party
applications, as opposed to registrations, have no probative value other than as evidence that
the applications were filed. See In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016);
In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). Expired or
cancelled third-party registrations generally are evidence only of the fact that the
registrations issued. See In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006).
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Reg. No. 4533751 for the mark RUFFWOOD on the
Principal Register for “chew toys for dogs” in International
Class 20;
Reg. No. 4667594 for the mark CHEW & DESIGN on the
Principal Register for “dog toys” in International Class 20;
Reg. No. 5032993 for the mark PLAY ‘N CHEW on the
Principal Register for “pet toys” in International Class 20;
and
Reg. No. 4559166 for the mark FETCH & CHEW on the
Principal Register for “dog toys” in International Class 20.
See December 21, 2017 Response to Office Action, pp. 11-33. Active third-party
registrations may be relevant to show that a mark or a portion of a mark is descriptive
or suggestive. See, e.g., Jack Wolfskin, supra; Juice Generation, 115 USPQ2d at 1674-
75; In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-
Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist
Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in this limited manner,
third-party registrations are similar to dictionaries showing how language is
generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987).
While each of the registered marks include either the phonetic equivalent of the term
“rough” or the word “chew,” none include both terms.
Nonetheless, we can surmise that “rough,” “chew” and “chewer” are conceptually
weak when used in connection with the identified goods. Even weak marks are
entitled to protection against registration of similar marks for complementary and
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otherwise related goods. In re Max Capital Group, 93 USPQ2d 1243, 1246 (TTAB
2010). See also In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982). This factor
weighs against finding a likelihood of confusion.
F. Other Factors
The thirteenth and final du Pont factor pertains to “any other established fact
probative of the effect of use.” du Pont, 177 USPQ at 567.
Applicant contends that based on its Internet search, it does not appear that
Registrant’s mark is currently used in commerce. Applicant’s Brief, 7 TTABVUE 4. A
trademark registration on the Principal Register is prima facie evidence of the
validity of the registration and the registrant’s exclusive right to use the mark in
commerce in connection with the specified goods. See 15 U.S.C. § 1057(b). Applicant’s
assertion constitutes an improper collateral attack on the cited registration and is
irrelevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5
(TTAB 1992).
Applicant also argues that because the USPTO permitted the following pairs of
marks (PUPILOVE v. PUPPE LOVE & DESIGN; BARKSBAR v. BARK BARS;
PAWRENT v. PAWRENT & DESIGN; USA-K9 v. USA K9 & DESIGN), all for either
dog or pet products or services, to coexist on the Principal Register, Applicant’s mark
should be entitled to registration over the cited mark. In support thereof, Applicant
relies solely on copies of each registered mark obtained from the USPTO database.
See July 19, 2018 Request for Reconsideration pp. 10-25. We are unable to determine,
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however, from the face of the registration certificates the context under which these
third-party registrations were permitted. See In re Nett Designs, Inc., 263 F.3d 1339,
57 USPQ2d 1564, (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to Nett Design’s application, the PTO’s allowance of such
registrations does not bind the Board or this court.”). For this reason, Applicant’s
evidence is of limited utility.
This factor is therefore neutral.
II. Conclusion – Balancing the du Pont Factors
As explained above, the sixth du Pont factor disfavors a likelihood of confusion
because the terms “rough” and “chew” appear to be inherently weak in connection
with pet toys and beds. Nonetheless, the remaining factors analyzed above (the
similarity of the marks, relatedness of the goods, established, likely-to-continue
channels of trade and purchasing conditions) each weigh in favor of finding a
likelihood of confusion.
Balancing the du Pont factors, we find that confusion is likely between
Applicant’s applied-for mark and the mark in the cited registration. “[L]ikelihood of
confusion is to be avoided, as much between ‘weak’ marks as between ‘strong’ marks,
or as between a ‘weak’ and ‘strong’ mark.” Anthony’s Pizza & Pasta Int’l, Inc. v.
Anthony’s Pizza Holding Co., Inc., 95 USPQ2d 1271, 1283 (TTAB 2009) (quoting King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974)), aff’d, 415 F. App’x 222 (Fed. Cir. 2010).
Decision: The Section 2(d) refusal is affirmed.