Lucky Paws, LLC

Trademark Trial and Appeal Board

Feb 3, 2012

No. 77929696 (T.T.A.B. Feb. 3, 2012)

Mailed:
February 3, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lucky Paws, LLC
________

Serial No. 77929696
_______

Kurt L. Grossman of Wood Herron & Evans LLP for Lucky Paws,
LLC.

Odessa B. Bibbins, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Bergsman, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Lucky Paws LLC (“applicant”) filed an intent-to-use
application for the mark LUCKY PAWS, in standard character
form, for “pet treats, namely, organic material to be mixed
with other organic material and microwaved” in Class 31.
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used
in connection with pet treats made from organic materials,
so resembles the registered mark LUCKY PAWZ, in standard
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77929696
2
character form, for “pet boarding services; pet day care
services,” in Class 43, as to be likely to cause confusion.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the 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.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are very similar:
LUCKY PAWZ vs. LUCKY PAWS
Applicant’s use of “Paws” will be perceived as the
equivalent of registrant’s use of “Pawz” and, therefore,
the marks have the same meaning and engender the same
commercial impression. Cf. In re Carlson, 91 USPQ2d 1198,

1 Registration No. 3372243, issued January 22, 2008.

Serial No. 77929696
3
1201 (TTAB 2009). Such slight differences in marks [the
letter “S” instead of “Z” in the word “Paws] do not
normally create dissimilar marks. In re Great Lakes
Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover,
although there are certain differences between the [marks’
CAYNA and CANA] appearance, namely, the inclusion of the
letter ‘Y’ and the design feature in applicant’s mark,
there are also obvious similarities between them.
Considering the similarities between the marks in sound and
appearance, and taking into account the normal fallibility
of human memory over a period of time (a factor that
becomes important if a purchaser encounters one of these
products and some weeks, months, or even years later comes
across the other), we believe that the marks create
substantially similar commercial impressions”). See also
United States Mineral Products Co. v. GAF Corp., 197 USPQ
301, 306 (TTAB 1977) (“‘AFCO’ and ‘CAFCO,’ which differ
only as to the letter ‘C’ in USM’s mark, are substantially
similar in appearance and sound”) and In re Bear Brand
Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of
the applicant, ‘KIKS’ and the cited mark ‘KIKI’ differ only
in the terminal letter of each mark. While differing in
sound, the marks are similar in appearance and have a
somewhat similar connotation”).
Serial No. 77929696
4
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
B. The similarity or dissimilarity and nature of the
goods and services, channels of trade and classes of
consumers.

It is well settled that applicant’s goods and
registrant’s services do not have to be directly
competitive to support a finding that there is a likelihood
of confusion. It is sufficient if the respective products
and services are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The degree of “relatedness” must be
viewed in the context of all the
factors, in determining whether the
[goods and] services are sufficiently
related that a reasonable consumer would
be confused as to source or sponsorship.
It is relevant to consider the degree of
overlap of consumers exposed to the
respective [goods and] services, for as
discussed in Philip Morris v. K2 Corp.,
555 F.2d 815, 194 USPQ 81, 82 (CCPA
Serial No. 77929696
5
1977), even when goods or services are
not competitive or intrinsically
related, the use of identical marks can
lead to the assumption that there is a
common source.

In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689
(Fed. Cir. 1993).
In Philip Morris v. K2 Corp, the Court of Customs and
Patent Appeals, the predecessor of our primary reviewing
court, affirmed the refusal to register the mark K2 for
“filter cigarettes” because it is likely to cause confusion
with the registered mark K2 for skis. According to the
Court, because the marks were identical and inherently
distinctive and the goods were advertised in the same
magazines, “[i]t would not be unusual for consumers,
simultaneously confronted with the same arbitrary mark for
intrinsically unrelated goods to assume a relationship
between the source of the goods.” 26 USPQ2d at 82.
There is no evidence in the record that any company
that manufactures pet treats also renders pet day care
services. There is only one registration that has been
made of record for both “pet treats” and “boarding and
daycare for private pets.”2 Thus, the record fails to show

2 Registration No. 3033757 issued December 25, 2007.

Serial No. 77929696
6
that pet boarding and day care services and pet treats are
intrinsically related.
On the other hand, there is evidence in the record
that companies rendering pet boarding and day care services
provide food and treats to the pets albeit not under the
same marks. For example:
1. Hickory Hill Kennel (hickoryhillkennelonline.com)
provides IAMS Adult (chicken & rice) or Eukanuba Veterinary
Diet;3
2. Club Pet Boarding (animalcenter.org) provides
IAMS products;4
3. Norwinds Dog Boarding (norwindsboarding.com)
provides Solid Gold and IAMS pet foods;5
4. Preferred Pet Care (preferredpetcare.com)
provides the following products:
Fromm Family Foods
Wellness 5 Star
Merrick all –natural bones
Evangers all-natural canned and dry dog food and
treats
Grandma Lucy’s all-natural treats
Science Diet Treats6

3 Applicant’s September 7, 2010 response.
4 Id.

5 Id.
6 Id.
Serial No. 77929696
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5. Citrus County Pet Boarding, Grooming, and Pet
Store (URL not provided) advertises that “[p]et owners will
even find a selection of organic pet foods.”7
8. Chama’s Doge Wash & Wellness
(chamashillcrestdogwash.com) advertises dog boarding
services and supplies a wide variety of dog foods and
treats.8
In view of the foregoing, we find that organic pet
treats are a type of product that is offered in conjunction
with pet boarding and day care services, they move in the
same channels of trade, and are sold to the same classes of
consumers.
C. Balancing the factors.
Applicant argues that the facts in this case are
analogous to the facts in In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059 (Fed. Cir. 2003) (BLUE MOON and design
for beer is not likely to cause confusion with BLUE MOON
and design for restaurant services). The examining
attorney argues, on the other hand, that the facts in this
case are analogous to the facts in In re Shell Oil (RIGHT-
A-WAY and design for service station oil and lubrication
services is likely to cause confusion with RIGHT-A-WAY and

7 September 30, 2010 Office Action.
8 Applicant’s December 16, 2010 Request for Reconsideration.
Serial No. 77929696
8
design for distributorship services). We find that this
case is more akin to than Shell Oil than Coors Brewing.
In Coors Brewing, the court held that there was
insufficient evidence to establish a relationship between
beer and restaurant services to support finding that there
was a likelihood of confusion. In Shell Oil, on the other
hand, the court found that the marks were strikingly
similar and all of the registrant’s customers would be
prospective customers for applicant’s services. Likewise,
in this case, the marks are very similar, pet treats are
offered in conjunction with pet boarding services and the
products and services are sold to the same classes of
consumers.
In view of the foregoing, we find that applicant’s
mark LUCKY PAWS for “pet treats, namely, organic material
to be mixed with other organic material and microwaved” is
likely to cause confusion with the mark LUCKY PAWZ for pet
boarding and pet day care services.
Finally, to the extent that there is any doubt
regarding the likelihood of confusion, such doubt is
resolved against applicant because the applicant, as the
newcomer, has the duty of avoiding confusion, and is
charged with the obligation of doing so. In re Shell Oil
Co., 26 USPQ2d at 1691.
Serial No. 77929696
9
Decision: The refusal to register is affirmed.