Obe, Inc.v.InSassy, Inc.

Trademark Trial and Appeal Board

Jun 13, 2018

No. 91225714 (T.T.A.B. Jun. 13, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: June 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Obe, Inc.

v.

InSassy, Inc.
_____

Opposition No. 91225714
_____

Jessica Fajfar of University of San Francisco School of Law,
for Obe, Inc.
Tommy Wang, of Wang IP Law Group P.C.
for InSassy, Inc.
_____

Before Cataldo, Wellington and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
InSassy, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
OBEDOG (in standard characters) for “dog whistles; electric bark control dog collars
featuring vibration notification; electronic animal confinement unit comprising
Opposition No. 91225714
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transmitters, electrical transformers, wires, and receiver collars; electronic
transmitters and receivers for dog training” in International Class 9.1
Obe, Inc. (“Opposer”) has opposed registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,
as used on or in connection with its identified goods, so resembles Opposer’s marks,
set forth below, as to be likely to cause confusion, mistake, or deception. Opposer
pleaded ownership of ten (10) applications for marks containing the term OBE (in
either standard characters or stylized with design), based upon Opposer’s allegation
of a bona fide intention to use the marks in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).2 During the course of the proceeding, Opposer
sought to divide four of the pleaded applications and submitted an allegation of use
for the goods and services in the resulting child applications. The child applications
were assigned new application numbers and matured to registration on the Principal
Register.3 Opposer’s resulting registrations and pending applications are as follows:
Registration No. Mark Goods and Services
Reg. No. 5005170,
issued on July 19,
2016.
OBE Automated pet appliances, namely, feeders and
waterers in Class 7.

Computer hardware in the field of pet health and
fitness; computer software and hardware for
wireless data communication for tracking,

1 Application Serial No. 86601771 was filed on April 17, 2015 based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as December 1, 2014.

2 Notice of opposition, 1 TTABVUE.
3 Child application Serial No. 86979243 registered on July 19, 2016, as Registration No.
5005170. Child application Serial Nos. 86979298, 86979300 and 86979418, all registered on
August 2, 2016, as Registration Nos. 5014731, 5014732 and 5014747, respectively.
Opposition No. 91225714
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receiving, processing, transmitting, displaying,
and managing information regarding pet health,
activity, weight, and nutrition; computer software
for managing information regarding tracking,
compliance and motivation with a health and
fitness program in Class 9.

Providing an online computer database in the field
of pet fitness; Providing information in the field of
animal behavior and pet fitness in Class 41.

Providing an online computer database in the field
of pet health; Providing information in the field of
animal behavior and pet health; health and
wellness monitoring, namely, providing
monitoring of pet health and related information;
health and wellness monitoring, namely,
providing reports relating to pet health in Class
44.
Reg. No. 5014731,
issued on August 2,
2016.
Automated pet appliances, namely, feeders and
waterers in Class 7.

Computer hardware in the field of pet health and
fitness; computer software and hardware for
wireless data communication for tracking,
receiving, processing, transmitting, displaying,
and managing information regarding pet health,
activity, weight, and nutrition; computer software
for managing information regarding tracking,
compliance and motivation with a health and
fitness program in Class 9.

Providing an online computer database in the field
of pet fitness; Providing information in the field of
animal behavior and pet fitness in Class 41.

Providing an online computer database in the field
of pet health; Providing information in the field of
animal behavior and pet health; health and
wellness monitoring, namely, providing
monitoring of pet health and related information;
health and wellness monitoring, namely,
providing reports relating to pet health in Class
44.
Reg. No. 5014747,
issued on August 2,
2016.
OBE Pet accessories, namely, pet clothing in Class 18.
Opposition No. 91225714
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Reg. No. 5014732,
issued on August 2,
2016.
Pet accessories, namely, pet clothing in Class 18.
Application No. Mark Goods and Services
App. No. 86410685,
filed Sept. 30, 2014.
OBE Electronic devices for animal locating and tracking
programmed to use global positioning systems
(GPS) and cellular communications; pet video
monitors in Class 9.
App. No. 86410695,
filed Sept. 30, 2014.
OBE Pet accessories, namely, pet collars, pet leashes,
pet tags specially adapted for attaching to pet
leashes or collars, and specially designed canvas,
vinyl or leather bags attached to animal leashes
for holding small items such as keys, credit cards,
money or disposable bags for disposing of pet
waste; accessories for pet collars, namely, charms,
bows, pendants, bells and decorative charms as
attachments in Class 18.
App. No. 86410690,
filed Sept. 30, 2014.
OBE Providing referrals for veterinary appointments
and pet grooming appointments; providing a
website featuring consumer information in the
fields of pet boarding, pet day care, pet walking
and pet grooming service providers, and pet
hospitals; providing an on-line directory
information service featuring information
regarding pet boarding, pet day care, pet walkers,
pet groomers, and pet hospitals in Class 35.
App. No. 86410693,
filed Sept. 30, 2014.
OBE Online social networking services in the fields of
pets provided via a website in Class 45.
App. No. 86410683,
filed Sept. 30, 2014.
OBE Pet fragrances, deodorizers, odor and stain
removers; pet shampoo; non-medicated grooming
preparations for pets, namely, pet shampoo and
conditioner in Class 3.
App. No. 86482436,
filed Dec. 16, 2014.
Pet fragrances, deodorizers, odor and stain
removers; pet shampoo; non-medicated grooming
preparations for pets, namely, pet shampoo and
conditioner in Class 3.
App. No. 86482432,
filed Dec. 16, 2014.
Pet video monitors; electronic devices for animal
locating and tracking programmed to use global
positioning systems (GPS) and cellular
communications in Class 9.
Opposition No. 91225714
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App. No. 86482431,
filed Dec. 16, 2014.
Pet accessories, namely, pet collars, pet leashes,
pet tags specially adapted for attaching to pet
leashes or collars, and specially designed canvas,
vinyl or leather bags attached to animal leashes
for holding small items such as keys, credit cards,
money or disposable bags for disposing of pet
waste; accessories for pet collars, namely, charms,
bows, pendants, bells and decorative charms as
attachments in Class 18.
App. No. 86482434,
filed Dec. 16, 2014.
Providing referrals for veterinary appointments
and pet grooming appointments; providing a
website featuring consumer information in the
fields of pet boarding, pet day care, pet walking
and pet grooming service providers, and pet
hospitals; providing an on-line directory
information service featuring information
regarding pet boarding, pet day care, pet walkers,
pet groomers, and pet hospitals in Class 35.
App. No. 86482438,
filed Dec. 16, 2014.
Online social networking services in the fields of
pets provided via a website in Class 45.

In its answer, Applicant denied the salient allegations in the notice of opposition
and raised inter alia, the equitable affirmative defenses of laches, acquiescence,
waver, and estoppel.4 These equitable defenses were not pursued in Applicant’s
briefs, and are therefore waived. Harry Winston, Inc. v. Bruce Winston Gem Corp.,
111 USPQ2d 1419, 1422 (TTAB 2014); Kemi Organics, LLC v. Gupta, 126 USPQ2d
1601, 1602 n. 5 (TTAB 2018).
I. Evidentiary Record
The record consists of:

• The pleadings;

4 Applicant’s answer, ¶ 30, 4 TTABVUE 8.
Opposition No. 91225714
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• The file of the subject Application No. 86601771;5

• Opposer’s first notice of reliance on certain of Applicant’s responses to written
discovery;6
• Opposer’s second notice of reliance, containing TSDR (Trademark Status and
Document Retrieval) records showing the current status and title (owner) of
Opposer’s registrations and applications listed above;7
• Opposer’s third notice of reliance, showing the specimen from the application
file of Applicant’s subject application;8
• Opposer’s fourth notice of reliance, consisting of copies of negative reviews on
Amazon.com of one of Applicant’s products bearing the OBEDOG mark;9
• Opposer’s testimonial deposition of Hilary Jane Jensen, founder and Chief
Executive Officer of Opposer;10
• Declaration testimony of Hilary Jane Jensen;11
• Opposer’s testimonial deposition of Jennifer Wilson, of the San Francisco
branch of the Society for the Prevention of Cruelty to Animals;12

5 See Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
6 10 TTABVUE.
7 11 TTABVUE.
8 12 TTABVUE.
9 13 TTABVUE.
10 19 TTABVUE.
11 19 TTABVUE 124 et seq.
12 19 TTABVUE 149 et seq.
Opposition No. 91225714
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• Applicant’s first notice of reliance, designated confidential, consisting of
Opposer’s responses to written discovery requests;13
• Applicant’s second notice of reliance, containing screenshots from Opposer’s
and Applicant’s web pages and an Amazon.com web page showing positive
customer reviews of Applicant’s product;14
• Applicant’s testimonial deposition of Phung Diep, principal of Applicant;15
• Applicant’s testimonial deposition of Tak Hung Choong, the other principal of
Applicant.16
II. Standing and Priority
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Any person
who believes it is or will be damaged by registration of a mark has standing to file an
opposition. Trademark Act Section 13, 15 U.S.C. § 1063. To establish standing in an
opposition or a cancellation proceeding, a plaintiff must show both a real interest in
the proceeding as well as a reasonable belief of damage. Empresa Cubana Del Tabaco
v. Gen. Cigar, 111 USPQ2d at 1062; Ritchie v. Simpson, 50 USPQ2d at 1025.

13 17 TTABVUE.
14 18 TTABVUE.
15 21 TTABVUE (transcript of confidential testimony at 20 TTABVUE).
16 21 TTABVUE 91 et seq.
Opposition No. 91225714
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Here, Opposer has demonstrated through the TSDR database that it is the owner
of four registrations that are valid and subsisting. Since Opposer pleaded ownership
of the underlying applications in its notice of opposition, it could “make the
registrations which issue during the opposition of record without having to amend
the notice of opposition to assert reliance on the registrations.” United Global Media
Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1040 n.3 (TTAB 2014) (citing UMG Recordings,
Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009)); see TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 704.03(b)(1)(A) (June
2017) (“The pleading of the application is viewed as providing sufficient notice to the
defendant of the plaintiff’s intention to rely on any registration that issues from the
pleaded application.”). Opposer’s registrations for OBE, in standard characters or
stylized with design, for pet products, form a plausible basis for its claim of likelihood
of confusion with Applicant’s subject OBEDOG mark, also for pet products.17 In view
thereof, we find Opposer has established its personal interest in this proceeding and
proven its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1274
(TTAB 2014); see also Lipton Inds., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
Also, because Opposer’s pleaded registrations are of record and are currently not
the subject of a cancellation or counterclaim, Section 2(d) priority is not an issue in
this case as to the marks and the goods covered by the registrations vis-à-vis

17 See Opposer’s second notice of reliance, 11 TTABVUE.
Opposition No. 91225714
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Applicant’s mark and goods. King Candy Company v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974); Cent. Garden & Pet Co. v. Doskocil Mfg. Co.,
108 USPQ2d 1134, 1139 (TTAB 2013); Rocket Trademarks Pty. Ltd. v. Phard S.p.A.,
98 USPQ2d 1066, 1072 (TTAB 2011).
Two of Opposer’s registrations, Nos. 5005170 and 5014731, issued on July 19 and
August 2, 2016, respectively. A year later, on August 2, 2017, Applicant brought a
cancellation proceeding against these two registrations on grounds of nonuse and
fraud.18 The Board granted Opposer’s motion to dismiss the petition for cancellation
because the claims in the cancellation petition constituted compulsory counterclaims
that should have been raised much earlier by Applicant, and Applicant’s failure to do
so in a timely manner precluded their assertion in the form of a cancellation
proceeding.19 Applicant’s petition for cancellation was therefore stricken.20
Accordingly, Opposer’s registrations are entitled to the same presumption of validity
accorded to any registration under Section 7(b), 15 U.S.C. § 1057(b). See Contour
Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 286 (CCPA
1963). Thus, at this point, any challenges Applicant raises in its brief regarding the
validity of Opposer’s registrations―e.g., allegations of fraud, nonuse, lack of acquired
distinctiveness, or failure to establish priority―constitute an impermissible collateral
attack upon them, which cannot be considered. Fort James Operating Co. v. Royal

18 Cancellation No. 92066628.
19 32 TTABVUE.
20 32 TTABVUE 5.
Opposition No. 91225714
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Paper Converting Inc., 83 USPQ2d 1624, 1626 n. 1 (TTAB 2007) (citing Trademark
Rule 2.106(b)(2)(ii) and TBMP § 313.01).
We focus our likelihood of confusion analysis on Opposer’s Registration No.
5005170 for OBE in standard characters and Registration No. 5014731 for the
stylized word and design mark , as the goods identified in these
registrations are most similar to those identified in the subject Application. If the
opposition is not sustained on the basis of likelihood of confusion with these two
registered marks, then it would not be sustained on the basis of Opposer’s remaining
registrations and applications. See In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010); North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d
1217, 1225 (TTAB 2015); Rocket Trademarks Pty Ltd., 98 USPQ2d 1073 n.14.
Consequently, it is appropriate to focus on these two registrations in the course of
assessing likelihood of confusion under Section 2(d).
III. Likelihood of Confusion
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), 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, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v.
Hargis Ind., Inc., 575 U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated the other factors as neutral. See M2 Software, Inc. v. M2
Opposition No. 91225714
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Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir.
1993) (factors “may play more or less weighty roles in any particular determination”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir.
2002)) (“The likelihood of confusion analysis considers all DuPont factors for which
there is record evidence but ‘may focus … on dispositive factors, such as similarity of
the marks and relatedness of the goods.’”); Primrose Ret. Comyts., LLC v. Edward
Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (citing Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)).
A. Similarity of the Marks
Under the first DuPont factor, we consider the similarity or dissimilarity of
Applicant’s and Opposer’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160-61 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005).
Opposition No. 91225714
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Applicant argues that the parties’ marks are dissimilar in all four respects.21 In
appearance, Applicant argues, the word DOG in OBEDOG (emphasis added) is
absent from Opposer’s OBE mark, rendering the marks visually distinguishable.22
The marks also differ in sound, it argues, “[w]ith Applicant’s Obe sounding like ‘Obey
Dog’ and Opposer’s OBE sounding like ‘oh-be’ as in Obi-Wan-Kenobi or
ObiDogKenobi.”23 This claimed difference in pronunciation stems from the parties’
stated reasons for adopting their marks. When asked “Why did you choose Obe?,”
Opposer’s principal Hilary Jane Jensen testified:
Obe, … has a couple of derivatives.
First of all, o-b-e is the root of “obesity,” which is
what we are trying to prevent. 50 percent -- more than
50 percent of dogs and cats in the US are overweight.
And, in addition to that, it’s the root word -- root --
three letters of “obedience,” and so that was part of,
also, our potential business. And, to boot, I’m a Star
Wars fan, so it’s like Obi-Wan Kenobi.24

Applicant, on the other hand, states that

When we first thought about names, we were
thinking -- because the product we were looking for was
something we can train our dogs with, you know, to make
it more -- to make sure that our dogs are more -- what
do you call it -- obedient. So, hence, we came up with
the “obey” and “dog.” But then I didn’t like “obey dog”
because it didn’t sound right. But “ObeDog” sounds

21 Applicant’s brief, 23 TTABVUE 25.
22 Id. at 26.
23 Id.
24 Jensen dep. 7:9-17, 19 TTABVUE 8.
Opposition No. 91225714
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cool, so we just kind of thought “ObeDog.”25

Applicant also argues that the marks differ in meaning and commercial
impression: “As explained above, Opposer’s OBE refers to ‘Obesity’ and ‘Obedient’
and is a play on words of Obi-Wan Kenobi to ObiDogKenobi to ObeDogKenobi. On the
other hand, Applicant’s ObeDog does not refer to Obesity or Obedient or Star [War]s,
but merely like a command ‘Obey Dog.’ The term ‘ObeDog’ merely implies the goods
will enable you to make your dog obey in some way but does not connote a focus on
Obesity or Obedience.”26
We agree with Opposer, however, that the parties’ marks are far more similar
than dissimilar.27 Opposer’s word mark consists of the word OBE, a term that is
presumed to be inherently distinctive. 15 U.S.C. § 1057(b). Applicant adopts
Opposer’s word mark in its entirety and places it prominently as the first part of its
mark. See Palm Bay Imps., v. Veuve Clicquot, 73 USPQ2d at 1692; Presto Prods., Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part
of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered” when making purchasing decisions). There is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular

25 Choong dep. 8:5-12, 21 TTABVUE 98.
26 Applicant’s brief, 23 TTABVUE 26.
27 Opposer’s brief pp. 13-14, 22 TTABVUE 14-15. We note that Opposer’s 21-page main brief
does not appear to be double-spaced, as required by Trademark Rule 2.126 and TBMP §
801.03. It further appears, though, that the brief, if double-spaced, would nonetheless fall
within the 55-page limit imposed by Trademark Rule 2.128(b), so we have exercised our
discretion to consider it. See L’Oreal S.A. v. Marcon, 102 USPQ2d1434, 1435 n.4 (TTAB 2012).
Opposition No. 91225714
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feature of a mark, such as a common dominant element, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) cited in In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1185 (TTAB 2018).
The added term DOG in Applicant’s OBEDOG mark is less significant because
consumers will immediately recognize that the term describes the type of pet to which
its OBE-formative goods should be applied, instead of viewing the term as source-
identifying. See Cunningham v. Laser Golf, 55 USPQ2d at 1846 (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re Nat’l Data Corp., 224 USPQ at 752); see also In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Consequently, the term DOG
does not suffice to distinguish the two marks.
Furthermore, we see no reason that the term OBE would be pronounced
differently in Applicant’s and Opposer’s marks. The term is spelled exactly the same
in both marks. It is not a recognized word, so it has no “correct” pronunciation.
StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651
(Fed. Cir. 2014). And average consumers, who normally retain a general rather than
a specific impression of trademarks, see Mini Melts, Inc. v. Reckitt Benckiser LLC,
118 USPQ2d 1464, 1470 (TTAB 2016), would be unaware of the parties’ intentions in
choosing that term, and unlikely to adopt the differing pronunciations Applicant
suggests.
Opposition No. 91225714
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For much the same reasons, Applicant’s argument for differing connotation and
commercial impression fails, as well. The connotations Applicant identifies in the
marks, that of “obey” on its part and “obedience” on Opposer’s part, are but variations
on the same theme of being obedient. Regardless of what Applicant intends the
connotation of its mark to be, there is no evidence that purchasers would actually
perceive it that way. Cf. In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1218 (TTAB 2001) (commercial impression of a mark is determined independent of
the context of actual usage). “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.” In re i.am.symbolic, 123 USPQ2d at
1748 (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation omitted)). Here, in the final
analysis, the marks are similar in sight, sound, connotation and commercial
impression.
For these reasons, the first DuPont factor, similarity of the marks, weighs in
Opposer’s favor.
B. Similarity of the Goods

Under the second DuPont factor, we consider “[t]he similarity or dissimilarity and
nature of the goods or services as described in an application or registration….”
DuPont, 177 USPQ at 567. In making this comparison, we must consider the goods
and services as they are described in the application and registration. Octocom Sys.,
Opposition No. 91225714
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Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); In re Integrated Embedded, 120 USPQ2d 1504, 1514 (TTAB 2016).
Again, Applicant’s identified goods are “dog whistles; electric bark control dog
collars featuring vibration notification; electronic animal confinement unit
comprising transmitters, electrical transformers, wires, and receiver collars;
electronic transmitters and receivers for dog training.”
Opposer’s goods identified in Registration Nos. 5005170 and 5014731 are:
Automated pet appliances, namely, feeders and waterers.
Computer hardware in the field of pet health and fitness; computer
software and hardware for wireless data communication for tracking,
receiving, processing, transmitting, displaying, and managing
information regarding pet health, activity, weight, and nutrition;
computer software for managing information regarding tracking,
compliance and motivation with a health and fitness program.
Providing an online computer database in the field of pet fitness;
Providing information in the field of animal behavior and pet fitness.
Providing an online computer database in the field of pet health;
Providing information in the field of animal behavior and pet health;
health and wellness monitoring, namely, providing monitoring of pet
health and related information; health and wellness monitoring, namely,
providing reports relating to pet health.

Applicant argues that its goods “are focused on training the dog, while Opposer’s
goods are focused on tracking, receiving, processing Cat and Dog’s health and fitness.
As Applicant explained during their deposition, Applicant’s goods are electronic
training dog collars and do not focus on pet health and fitness. … In contrast,
Opposer’s goods are narrowly focused on pet health and fitness (the self-proclaimed
Opposition No. 91225714
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first pet smart bowl tracker). The parties’ goods are not of the same type, and are
thus not sufficiently related for likelihood of confusion purposes.”28
The issue, though, is not whether purchasers would confuse the parties’ goods, but
whether there is a likelihood of confusion as to their source. In re Cook Medical
Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). “Even if the goods and
services in question are not identical, the consuming public may perceive them as
related enough to cause confusion about the source or origin of the goods and
services.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002) quoted in In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1086 (Fed. Cir. 2014). “When analyzing the similarity of the goods, ‘it
is not necessary that the products of the parties be similar or even competitive to
support a finding of likelihood of confusion.’ 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007). Likelihood of confusion can be found ‘if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.’ Id.” Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722.
Here, as Opposer notes, both parties sell pet accessories.29 “[I]t is not uncommon
for a pet company to sell numerous different pet products, and, as both Applicant and
Opposer sell technical pet products, the circumstances are such that Applicant’s
Goods and Opposer’s Goods would be ‘encountered by the same persons in situations

28 Applicant’s brief, 23 TTABVUE 27. See Choong dep. 15:5-21, 21 TTABVUE 105; Jensen
Decl. ¶ 16, 19 TTABVUE 108.
29 Opposer’s brief pp. 14, 22 TTABVUE 15.
Opposition No. 91225714
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that would give rise, because of the marks, to a mistaken belief as to a common source
or affiliation.’” Opposer states, citing In re Thor Tech, Inc., 90 USPQ 2d 1634, 1635
(TTAB 2009).30
We agree inasmuch as the parties, themselves, offer (or seek to offer) a variety of
pet products under the same marks. That is, Opposer’s registrations and applications,
listed above, cover numerous different pet products, from pet collars, leashes, and
tags to automated pet appliances to pet shampoos and conditioners. Similarly,
Applicant’s products include not only dog training collars, but dog whistles and dog
car seat covers.31 All of Opposer’s identified products are for use on or in connection
with pets, which encompasses the narrower category of pet identified by Applicant:
dogs. Moreover, the parties’ pet products employ technology in their
function―Applicant’s using transmitters, electrical transformers, wires, and
receivers, and Opposer’s using computer software and hardware for wireless data
communication for tracking, receiving, processing, transmitting, displaying, and
managing information. Technical goods of that sort may be perceived as
complementary in nature, as they serve to assist owners in monitoring and
controlling their pets’ activity. See In re Cook Medical Technologies, LLC, 105
USPQ2d at 1380 (“If goods are complementary in nature, or used together, this
relatedness can support a finding of likelihood of confusion.”) (citing In re Martin’s

30 Opposer’s brief p. 16, 22 TTABVUE 17.
31 Applicant’s answer to interrogatory nos. 14, 31, 10 TTABVUE 9-10, 13; Diep dep. 11:13-
12:5, 22:4-12, 21 TTABVUE 12-13, 23; Choong dep. 5:6-12, 15:5-18, 21 TTABVUE 95, 105;
Application Serial No. 86601771.
Opposition No. 91225714
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Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)).
And because Applicant’s mark OBEDOG mark incorporates the dominant element of
Opposer’s OBE mark, consumers would naturally tend to perceive Applicant’s goods
as an extension of Opposer’s product line. See In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI diagnostic
apparatus likely to be considered as another product from the source of TITAN
medical ultrasound devices). Hence, even if their technical pet products are not
identical, both would be encountered by pet owners in situations that would give rise,
because of their highly similar marks, to a mistaken belief that they emanated from
the same or affiliated sources.
The second DuPont factor therefore weighs in favor of finding a likelihood of
confusion.
C. Channels of Trade and Classes of Consumers

The third DuPont factor is the similarity or dissimilarity of established, likely-to-
continue trade channels. DuPont, 177 USPQ at 567.
Applicant argues that it “provides its goods to the masses, and the price of
Applicant’s goods are lower than Opposer’s. The parties’ consumers are very different
types of people, and they encounter the marks in different places and under different
market conditions.”32
As Opposer correctly observes, though, the parties’ respective identifications of
goods place no limitations on the types of consumers or channels of commerce in

32 Applicant’s brief, 23 TTABVUE 27.
Opposition No. 91225714
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which they may use their marks.33 Absent such limitations, their goods must be
presumed to travel in all channels of trade normal for those goods, to all usual classes
of consumers for those goods. Stone Lion Capital v. Lion Capital, 110 USPQ2d at
1160-61; In re Viterra, 101 USPQ2d at 1908; In re i.am.symbolic, 123 USPQ2d at
1750. In this case, the class of consumers for the parties’ products would be ordinary
pet owners. The parties’ pet products would normally move through pet supply stores,
department stores, and online sales.34
As Opposer’s principal testified, these channels of trade lead to consumer
confusion. On June 9, 2014, she testified, Opposer registered the domain name
Obedog.com for its web site, along with 44 other domain names with variations of
“obe,” including “obedog.net” and “obedog.org.”35 Ultimately, Opposer registered over
two hundred domain names with variations on “obe” or “obedog”, partly “to make sure
that our customers can find use easily no matter what their pronunciations might be,
translated into spelling.”36 Months later, Applicant registered Obedog.us for its
website.37 The two parties’ websites have appeared together in Google® search engine
results pages.38 Opposer’s principal was asked:
Q In your distinctive experience as the CEO of
Obe, Inc., have the Web site placement results caused

33 Opposer’s brief p.17, 22 TTABVUE 18.
34 See Opposer’s fourth notice of reliance, 13 TTABVUE (Amazon.com customer reviews of
Opposer’s product).
35 Opposer’s brief p. 6, 22 TTABVUE 7.
36 Jensen dep. 7:22-23, 8:2-9, exhibit 1, 19 TTABVUE 11-12, 40-53.
37 Jensen dep. 34:25, exhibit 2, 19 TTABVUE 38, 56.
38 Jensen dep. exhibit 3, 19 TTABVUE 57.
Opposition No. 91225714
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confusion between obedog.us and obedog.com?
A Definitely.
...
So, I think -- you know, the challenge
is when someone searches for ObeDog, up comes our Web
site, and it says “ObeDog,” and people, by default,
think that .com is the company. And so having a
derivative like .us doesn’t even cross people’s mind,
and it doesn’t differentiate that they’re two different
companies. So, we’ll have a list of obedog.us
information, because they’re also on Amazon, and they
automatically think we’re one company.39

This is not speculation on her part, as demonstrated by the numerous instances
of actual confusion discussed infra. Thus, the third DuPont factor also weighs in favor
of finding a likelihood of confusion.
D. Care and Sophistication of Consumers
The fourth DuPont factor concerns the conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ versus careful, sophisticated purchasing.
DuPont, 177 USPQ at 567.
Opposer argues that where the products at issue are relatively inexpensive, the
risk of confusion is increased because purchasers of such products are held to a lesser
standard of purchasing care.40 According to the evidence of record, Opposer notes, its
own goods range from $99-109 dollars, whereas Applicant’s goods range from

39 Jensen dep. 12:18-13:7, 19 TTABVUE 16-17.
40 Applicant’s brief p. 17, 22 TTABVUE 18.
Opposition No. 91225714
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approximately $19.99 to $89.99.41 Applicant asserts that its prices are lower than
Opposer’s.42
Because the respective descriptions of goods in the application and registrations
contain no limit regarding particular price points, we must treat the goods as
including inexpensive as well as more costly goods, and must therefore presume that
purchasers for the products include ordinary consumers who may buy inexpensive
pet products. See Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1163-64
(recognizing Board precedent requiring consideration of the “least sophisticated
consumer in the class”); Primrose Ret. Cmtys. v. Edward Rose Senior Living, 122
USPQ2d at 1039. Furthermore, even “careful purchasers who do notice the difference
in the marks will not necessarily conclude that there are different sources for the
goods, but will see the marks as variations of each other, pointing to a single source.”
In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014).
Hence, there is no reason to believe that customers’ care or sophistication will
avert source confusion. The fourth DuPont factor is, in consequence, neutral.
E. Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the parties’ subject marks. DuPont, 177
USPQ at 567. Proof of actual confusion is not necessary to show a likelihood of

41 Id. at pp. 17-18, 22 TTABVUE 18-19; see Applicant’s Answer to Interrogatory no. 31, 10
TTABVUE 13.
42 Applicant’s brief, 23 TTABVUE 27.
Opposition No. 91225714
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confusion, In re i.am.symbolic, 123 USPQ2d at 1747, but “[a] showing of actual
confusion may be highly probative, if not conclusive, of a likelihood of confusion.”
Majestic Distilling, 65 USPQ2d at 1205.
Opposer maintains that this is the most important consideration in this case, as
it has gathered over 75 instances of actual confusion, both on the part of prospective
consumers and potential business contacts.43 Opposer’s principal, Hilary Jensen, was
asked:
Q Approximately how many calls and e-mails have
you received at Obe, Inc., from customers trying to
reach InSassy, Inc.’s ObeDog division?
A So, phone calls and e-mails, I would say
between -- so around 75.
Q On average, how often do you receive calls or
e-mails from these customers?
A Once a week. You know, some – they’ll
trickle in all of a sudden, like, a whole bunch during
one day sometimes, but, on average, I’m dealing with
them on a weekly basis.44

In exhibit 4 to her deposition and exhibit A to her later declaration, Ms. Jensen
produced records of e-mail communications to Opposer from consumers who were
trying to contact Applicant.45 Some representative examples are:
• Consumer Ryan Borque, in an email to Opposer’s email account at
hello@obedog.com, dated November 23, 2015, stated “Hello, my name is Ryan
Bourque I purchased this dog collar on November 13 and received it in the mail
last Friday the 20th. I charged it and followed the owners manual from the
first page to the last page. When I used it Saturday it worked great I put it on

43 Opposer’s brief p. 11, 22 TTABVUE 12.
44 Jensen dep. 18:4-14, 19 TTABVUE 22.
45 Jensen dep., exhibit 4, 19 TTABVUE 58-111; Jensen decl. ¶¶7-15, 17, exhibit A, 19
TTABVUE 125-126, 130-146.
Opposition No. 91225714
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the charger after my dog went to bed and Sunday morning when I woke up the
receiver would not respond at all. The LCD screen is frozen in sleep mode
showing a full battery and it will not let me do anything. I would like to return
it and receive a new one in its place, please get back to me ASAP. I appreciate
you taking the time to read this, thank you.”46

• Consumer Jessica Roy, In an email to hello@obedog.com dated February 1,
2016, stating “Hello, I have an Ultra Dual Waterproof Rechargeable Dog
Training Collar se[n]t that wasn’t working when I first received it. The shock
button on the remote doesn’t seem to work. I am wanting to send it back.”47

• Consumer Dayle Thomas, in an email to hello@obedog.com dated February
29, 2016, stated that “I purchased your Ergo-X collar for my boy Howard- and
it has been fine for a few months ... last week all of a sudden it died. It charged
and worked perfectly on Tuesday- on Thursday it just won’t respond when
plugged in to take a charge. HELP!”
After receiving a reply from ObeDog Customer Service informing him that he
was reached the wrong company, he replied, “Oh thank you ... You have the
same logo!”48

The instances of actual confusion were not limited to consumers. Jenifer Wilson,
marketing communications director for the San Francisco Society for the Prevention
of Cruelty to Animals, testified that on the day of a scheduled initial meeting with
Opposer, “we did some research on them the morning of the meeting and landed on
the Obe shock-collar page.”49 She was asked, “At this point right before the meeting,
when you found that there were shock collars under ObeDog, did you believe that
[Opposer] Obe, Inc., was the one selling them?” She answered, “We thought that

46 19 TTABVUE 71.
47 19 TTABVUE 82.
48 19 TTABVUE 88.
49 Wilson dep. 7:11-13, 19 TTABVUE 156.
Opposition No. 91225714
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that’s who was coming to meet us.”50 “[I]t was a little too late to cancel the meeting,
but had we done that research several days before, we would have cancelled the
meeting with them.”51
This documentary and testimonial evidence, we note, tends to corroborate
Opposer’s position that both sophisticated and unsophisticated persons can be
confused by similar marks on related goods.
One of Applicant’s principals denied receiving communications evincing
confusion:
Q. Have you ever received any calls or emails
confusing Obe with your ObeDog mark?
A. No.52

Applicant also denies receiving complaints about its dog collar products, and
points out that it has received a four-star popularity rating (out of five stars) on
Amazon.com.53 In its brief, Applicant argues that “Opposer’s instances of confusion
are when people are searching for the term ObeDog in reference to the product that
was bought from Applicant. They are not searching OBE and ending up at Opposer’s
website.”54
This misses the point. A business’s reputation―its good will―should not rise or
fall depending on public perception of another company’s product simply because that

50 Wilson dep. 8:16-21, 19 TTABVUE 157.
51 Wilson dep. 8:1-3, 19 TTABVUE 157.
52 Phung Diep dep. 24: 3-5, 21 TTABVUE 25.
53 Tak Hung Choon dep. 16:25-17:2, 18:19-19:7, 21 TTABVUE 106-109.
54 Applicant’s brief, 23 TTABVUE 27.
Opposition No. 91225714
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product bears a confusingly similar trademark. See In re Shell Oil, 26 USPQ2d at
1690 (“The registrant/senior user is safeguarded by the trademark law, as is the
consuming public, from likelihood of confusion caused by the entry of a junior user of
a confusingly similar mark. …The trademark law not only protects the consumer
from likelihood of confusion as to commercial sources and relationships, but also
protects the registrant and senior user from adverse commercial impact due to use of
a similar mark by a newcomer.”)
Opposer has demonstrated actual confusion by consumers and professionals alike,
and these DuPont factors, in consequence, weigh in favor of finding a likelihood of
confusion.
F. Fame

The fifth DuPont factor is the fame of the prior mark (sales, advertising, length of
use). DuPont, 177 USPQ at 567. Applicant argues that “OBE is commercially weak
and should receive a narrow scope of protection. In this situation, even subtle
differences between the marks and goods are sufficient to avoid a likelihood of
confusion.”55
The fame of a mark is not “an all-or-nothing measure” when considered in the
context of likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (Fed. Cir.
2017). Rather, likelihood of confusion fame “varies along a spectrum from very strong
to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d

55 Applicant’s brief, 23 TTABVUE 28.
Opposition No. 91225714
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1671, 1676 (Fed. Cir. 2015); Palm Bay Imps., v. Veuve Clicquot, 73 USPQ2d at 1694
(quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir.
2003)). In determining strength of a mark, we consider both inherent strength, based
on the nature of the mark itself, and commercial strength or recognition. Bell’s
Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); see also
In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)
(“A mark’s strength is measured both by its conceptual strength (distinctiveness) and
its marketplace strength (secondary meaning).”).
Conceptually, Opposer’s registered marks, OBE and , (both of which
were attained without reliance on a claim of acquired distinctiveness under Section
2(f)), are presumed to be inherently distinctive. In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1517 (TTAB 2016); see In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363
(TTAB 2007) (“inasmuch as the cited mark is registered on the Principal Register, we
must assume that it is at least suggestive….”).
The marks’ commercial strength rests on the extent to which “a significant portion
of the relevant consuming public . . . recognizes the mark as a source indicator.”
Joseph Phelps Vineyards v. Fairmont Holdings, 122 USPQ2d at 1734. It may be
measured indirectly by the volume of sales and advertising expenditures in
connection with the goods sold under the mark, and other factors such as length of
time of use of the mark; widespread critical assessments; notice by independent
sources of the goods identified by the mark; and the general reputation of the goods.
Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014);
Opposition No. 91225714
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see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308
(Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength).
Opposer shows some measure of publicity via social media, press releases,
newspaper coverage, and recognition for its products: “Opposer won the first-ever Pet
Care Innovation Prize powered by Purina, which is awarded to companies that have
demonstrated commitment to pet healthcare. In 2016, Applicant received recognition
for design of the ProBowl through the International Red Dot Product Design Award,
where participants from 57 nations had registered approximately 5,200 products and
innovations for consideration.”56
On the whole, though, considering the record in its entirety as to strength,
including the inherent distinctiveness of Opposer’s registered marks, we accord
Opposer’s marks a normal degree of strength as to its identified goods in the
likelihood of confusion analysis.
G. Conclusion

We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors. Because we have
found that the marks at issue are similar; that Applicant’s identified goods are related
to Opposer’s goods; that they would move in the same or overlapping trade channels;
that they are offered to the same or overlapping class of purchasers, who would
exercise no more than ordinary care; that there is actual confusion in the

56 Opposer’s brief p. 7, 22 TTABVUE 8; citing Jensen dep. 31:5-32:7, 19 TTABVUE 35-36; 17
TTABVUE 10, Exhibit F.
Opposition No. 91225714
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marketplace; and that Applicant’s mark possesses a normal degree of strength as to
its identified goods in the likelihood of confusion analysis, we conclude that
Applicant’s mark OBEDOG, as used on or in connection with the goods identified in
the application, so resembles Opposer’s registered marks OBE and , as
used on or in connection with the goods identified in the registrations, as to be likely
to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act.57
Decision: The opposition to registration of Applicant’s mark OBEDOG is
sustained.

57 In view of our findings with respect to the other DuPont factors, we find it unnecessary to
reach Opposer’s contention that Applicant adopted and used its mark in bad faith under the
thirteenth DuPont factor. See ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”).