Paws4Peace, LLC

Trademark Trial and Appeal Board

May 29, 2013

No. 85215720 (T.T.A.B. May. 29, 2013)

Mailed:
May 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paws4Peace, LLC
________

Serial No. 85215720
_______

Laura J. Zeman-Mullen of Zeman-Mullen & Ford LLP for
Paws4Peace, LLC.

Zhaleh Delaney, Trademark Examining Attorney, Law Office
116 (Michael B. Baird, Managing Attorney).
_______

Before Cataldo, Wellington, and Gorowitz, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Paws4Peace, LLC has applied to register the mark:

for “pet clothing, pet collars, pet leashes, overnight
bags/tote bags for pets, [and] pet carriers” in
International Class 18.1

1 Application Serial No. 85215720, filed on January 12, 2011,
based on an allegation of a bona fide intent to use the mark in
commerce.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Serial No. 85215720
2
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the registered marks PAWS
FOR PEACE (in standard characters) and
.
The two cited registrations are owned by the same party and
cover “human apparel, namely, shirts, sweat shirts, socks,
pajamas, hats; Footwear, namely, sneakers and shoes” in
International Class 25.2
When the refusal was made final, this appeal followed.
Our likelihood of confusion analysis is based on the
record and the pertinent factors set out by the Court of
Customs and Patent Appeals in 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 Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). We must keep in mind that “[t]he fundamental

2 Registrations Nos. 3833699 and 3833700 issued on August 17,
2010. The latter registration, for the design mark, describes
the mark as “consist[ing] of a peace sign and four shaded circles
which shown together represent a stylized paw print.”
Serial No. 85215720
3
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin our analysis by comparing the marks. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). Here, we are particularly mindful that the test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods and/or services 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).
First, in comparing applicant’s mark to the registered
design mark, we note applicant seeks to incorporate the
near same design. Both designs are fanciful paw prints
wherein the metacarpal pad is replaced with a peace symbol.
The only minor difference between the designs is the
Serial No. 85215720
4
registered mark has blurred or ill-defined borders while
applicant’s design has more well-defined borders. However,
we must assume that consumers will not have the luxury of a
side-by-side comparison of the marks. Thus, such an
insignificant difference in the designs is likely to go
unnoticed.
The commercial impressions and connotations created by
the marks are similar because both marks conjure a
sentiment of integration involving animals and peace.
Although applicant’s mark contains the additional wording
PAWS4PEACE, this term may be understood as articulating the
same or a very similar expression created by the registered
design mark. Compare, e.g., In re Rolf Nilsson AB, 230
USPQ 141 (TTAB 1986)(design of lion's head and word mark
LION regarded as legal equivalents for shoes); and Puma-
Sportschuhfabriken Rudolf Dassler KG v. Garan, Inc., 224
USPQ 1064 (TTAB 1984)(designs of mountain lion held similar
to word mark PUMA). Thus, the additional wording in
applicant’s mark does not outweigh the similarity of the
marks based on applicant’s adoption of a nearly exact
representation of the registered design mark.
Furthermore, it has not been established that “paw and
peace symbol” combinations are commonplace, let alone used
in trademarks in connection with similar goods, such that
Serial No. 85215720
5
we could conclude that consumers are somehow accustomed to
these designs and may be more willing to overlooking this
basis of similarity. We acknowledge that applicant has
identified a third-party registration for a similar design
for clothing and argues that the registered marks “already
coexist without confusion.” Brief, p. 8. There are
several problems with such reliance on this single
registration. First and foremost, the registration has
little, if any, probative value because it is not evidence
that the mark has actually been used in commerce or that
the public has become familiar with it. Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark
Office). Second, as to applicant’s contention regarding a
lack of actual confusion, while this is the subject of a
separate du Pont factor, we point out that we have no way
of determining whether or not, in fact, there has been any
actual confusion between the marks. That is, there must be
evidence showing that there has been an opportunity for
instances of actual confusion to occur in order for the
asserted absence of any instances of actual confusion to be
a meaningful factor in the determination of whether
confusion is likely to occur. See, e.g., Cunningham v.
Serial No. 85215720
6
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000). We do not have such evidence in the record.
As to our comparison of applicant’s proposed mark with
the second registered mark, PAWS FOR PEACE (in standard
character form), we too find them very similar. The
wording in applicant’s mark, PAWS4PEACE, is essentially the
equivalent of the registered mark; the two marks would be
understood and spoken in the same manner. Applicant’s use
of the numeral “4” in place of the word “for” is not unique
and would be immediately understood as a mere abbreviation.
For reasons previously mentioned, the addition of the
design portion in applicant’s mark, not present in the
cited registration, has lessened significance for purposes
of distinguishing the two marks. Again, the design
involves the combination of a “paw” and a peace symbol and,
therefore, reinforces the commercial impression of the
wording in the marks.
In sum, we find applicant’s proposed mark is very
similar to the two registered marks. This factor favors
finding a likelihood of confusion.
This brings us to the du Pont factor involving the
relationship, if any, between the goods at issue in this
appeal. In considering this factor, we must compare the
goods as they are described in the identifications of goods
Serial No. 85215720
7
in the application and registrations. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); and Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”).
[It] has often been said that goods or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate
from or are in some way associated with the same producer
or that there is an association between the producers of
each [party’s] goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also In re Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB
2001); and McDonald's Corp. v. McKinley, 13 USPQ2d 1895,
1898 (TTAB 1989).
Here, again, applicant’s goods are “pet clothing, pet
collars, pet leashes, overnight bags/tote bags for pets,
[and] pet carriers” and the cited registered marks cover
“human apparel, namely, shirts, sweat shirts, socks,
pajamas, hats; Footwear, namely, sneakers and shoes.” The
examining attorney argues that the respective goods are
related because “[i]n that other human and pet apparel
Serial No. 85215720
8
goods emanate from the same source in trade according to
the Internet evidence of record, consumers are likely to
associate [goods at issue herein], despite their
differences.” Brief, (unnumbered) p. 10. In support, she
submitted with the Office actions printouts from
approximately eleven different websites featuring either
both human and pet clothes, in many cases matching, or
articles discussing the trend of pet and human clothing
with an emphasis again on the owners matching the pet’s
clothing, including several references to Ralph Lauren
apparel for pets. The examining attorney asserts that this
evidence “shows that consumers would perceive human and pet
apparel and accessories to have the same origin when all
offered under a ‘Paws for Peace’ name in trade, or under
highly similar paw print-peace sign designs.” Id. at 11.
She also argues that there is “a market overlap between
human and pet apparel and accessories, i.e., that pet
owners are interested in both of these goods, rendering
confusion likely.” Id.
Based on the record, we have concluded that
applicant’s pet clothing and the human clothing identified
in the registrations are related. We agree with the
examining attorney the internet evidence shows that the
goods may emanate from a common source and be marketed in
Serial No. 85215720
9
such a manner, i.e., intended to match the owner’s apparel,
that when a substantially similar mark is being used on
said goods consumers may mistakenly believe the source of
the games is the same. In other words, it is likely that
consumers, upon encountering both marks being used on the
respective goods, would mistakenly believe that the pet and
human clothing are intended to be complementary by matching
and, therefore, originate from the same source.
As to the du Pont factors involving the channels of
trade and classes of purchasers, we note that applicant
asserts the “target markets of Applicant’s goods and
Registrant’s goods are distinct and different” because one
type of clothing is to be worn by pets and the other by
humans. Brief, p. 9. Such an argument is not persuasive
because clearly it would be pet owners, and not the pets,
purchasing the pet clothing. Pet owners fall within the
general public who are the relevant consumers for human
clothing. Thus, there is clearly an overlap of consumers
in part.
We have considered all evidence of record as well as
the arguments put forth by applicant and the examining
attorney. Ultimately, we conclude that there is a
likelihood of confusion between applicant’s mark
Serial No. 85215720
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on pet clothing and accessories and the registered marks
PAWS FOR PEACE and

on various articles of human clothing.
Decision: The examining attorney’s refusal to
register under Section 2(d) of the Trademark Act is
affirmed.