Recot, Inc.v.M. C. Becton

Trademark Trial and Appeal Board

Dec 4, 1998

No. 91096518 (T.T.A.B. Dec. 4, 1998)

Paper No. 39
BAC
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB DEC. 4,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Recot, Inc.
v.
M. C. Becton
_____
Opposition No. 96,518
to application Serial No. 74/477,309
filed on January 7, 1994
_____
Laurence R. Hefter of Finnegan, Henderson, Farabow, Garrett
& Dunner, L.L.P. for Recot, Inc.
Mark H. Elovitz of Mark H. Elovitz, P.C. for M. C. Becton.
______
Before Sams, Hairston and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
M. C. Becton, an individual, has applied to register
the mark FIDO LAY for “natural agricultural products,
namely, edible dog treats” (Int. Class 31).1

1 Appl. Ser. No. 74/477,309, filed January 7, 1994. The
application is based on applicant’s bona fide intention to use
the mark in commerce.
Opposition No. 96518
2
Registration has been opposed by Recot, Inc. pursuant
to Section 2(d) of the Trademark Act. In the notice of
opposition, opposer asserts that through its predecessors in
interest and its affiliated company, Frito-Lay, Inc., it has
for many years been engaged in the manufacture,
advertisement and sale of snack foods and is “the largest
snack food producer in the United States, selling and
advertising numerous products under the FRITO-LAY trademark,
including FRITO’S corn chips, LAY’S potato chips and many
other well-known snack products” (paragraph 1); that opposer
has sold billions of dollars worth of snack foods under the
FRITO-LAY mark throughout the U.S. and has spent hundreds of
millions of dollars to advertise and promote FRITO-LAY
products and the FRITO-LAY mark; that opposer’s mark FRITO-
LAY “has become exceedingly famous” and “is among the best-
known and most famous trademarks in the United States”
(paragraph 4); that in addition to manufacturing and selling
snack foods, opposer also engages in the business of
“licensing for manufacture, promotion, distribution and sale
certain goods bearing the FRITO-LAY mark” (paragraph 5);
that applicant’s mark, FIDO LAY, is intended to be a slight
variation of opposer’s FRITO-LAY trademark and “demonstrates
a willful intent to trade on the commercial magnetism and
goodwill associated with opposer’s famous and valuable
trademark” (paragraph 7); and that applicant’s mark, when
Opposition No. 96518
3
used on his goods, so resembles opposer’s previously used
and registered marks, as to be likely to cause confusion,
mistake, or deception. Specifically, opposer pleaded
ownership of the following six registrations2:
Registration No. 841,3243 Registration No. 876,6644
Registration No. 1,132,3055 Registration No. 1,153,3186

2 In its notice of opposition, opposer pleaded that it “is the
owner, inter alia, of the following valid and subsisting U.S.
registrations for the mark FRITO-LAY and related marks”
(paragraph 3).
3 Issued December 26, 1967, Section 8 affidavit accepted, Section
15 affidavit acknowledged, renewed, for corn chips, potato chips,
cheese-flavored puffed corn snack, pretzels, fried pork skins,
canned chicken liver dip, dehydrated dip mixes, specifically,
onion, green onion, Caesar, bleu cheese, horseradish, kosher
dill, chili con queso, and bacon and cheese; cracker sandwiches,
canned and packaged nut meats, popped popcorn, canned bean dip,
canned beans and franks, canned lima beans and ham, canned rice,
canned corned beef hash, bottled chili powder, canned enchiladas,
canned chili (with and without beans), canned tamales, canned
barbecue beef, canned spaghetti and meat balls, canned gravy and
beef, and canned beef stew. (Opposer’s notice of opposition did
not list the item “canned rice”, which is included in the
registration.)
4 Issued September 9, 1969, Section 8 affidavit accepted, Section
15 affidavit acknowledged, renewed, for potato chips.
5 Issued April 1, 1980, Section 8 accepted, for smoked beef
jerky, smoked beef in stick form, potato chips, corn chips, and
dehydrated dip mixes (Int. Class 29); fruit and artificially
fruit-flavored mixes for making beverages containing water (Int.
Class 30).
6 Issued May 5, 1981, Section 8 affidavit accepted, Section 15
affidavit acknowledged, for confectionery.
Opposition No. 96518
4
Registration No. 1,195,8257 Registration No. 1,501,0048
In his amended answer9 applicant has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; opposer’s testimony, with exhibits, of
Paulette Kish; stipulated affidavit testimony, with

7 Issued May 18, 1982, Section 8 affidavit accepted, Section 15
affidavit acknowledged, for corn chips, potato chips, rice chips,
tortilla chips, corn-based onion flavored snacks, puffed corn
snacks, fried corn-based cheese flavored snacks, fried pork
rinds, processed sunflower seeds, processed nuts, processed
peanuts, trail snack mix (comprised of processed nuts, raisins,
dates, and the like), beef jerky, beef sticks, sausage, bean dip,
and enchilada dip (Int. Class 29); pretzels, candy, cookies,
cakes, crackers, pies, brownies, popped popcorn, and picante
sauce (Int. Class 30). (The listing set forth in opposer’s
notice of opposition did not include several of the items listed
in the registration.)
8 Issued August 23, 1988, Section 8 accepted, Section 15
acknowledged, for utility knives (Int. Class 8); clocks (Int.
Class 14); playing cards,, pencils, pens, cardholders, and
stationery type folios (Int. Class 16); umbrellas, leather key
rings, and tote bags (Int. Class 18); plastic luggage tags (Int.
Class 20); housewares, namely plastic drinking cups, ceramic
drinking mugs, clips for sealing plastic bags, insulated coolers
for food and beverages, and coasters (Int. Class 21); towels
(Int. Class 24); clothing, namely shirts, shorts, sweaters,
jackets, wristbands, headbands, sweatshirts, sweatpants,
windbreakers and caps (Int. Class 25); non-metallic lapel pins
and embroidered patches for clothing (Int. Class 26); golf balls,
tees, ball markers, dominoes, balloons, and plastic flyers (Int.
Class 28); and cigarette lighters (Int. Class 34). The Section 8
affidavit was partial--Int. Classes 14, 24 and 34 were not
included in the Section 8 affidavit, and thus, those three
classes have been cancelled under Section 8. (The listing set
forth in opposer’s notice of opposition did not include several
of the items listed in the registration.)
9 In a Board order dated June 21, 1995, applicant was allowed
time to submit a proper answer. Applicant’s amended answer was
filed on July 10, 1995.
Opposition No. 96518
5
exhibits, of Marthe deRaismes Drake (offered by opposer as
rebuttal); opposer’s notice of reliance on status and title
copies of several of opposer’s pleaded registrations
prepared by the Patent and Trademark Office; and applicant’s
testimony, with exhibits, of M. C. Becton, Steven Scott,
Dick Lovelady, Patrick Siano, and Stuart Herring.
Both parties filed briefs on the case. Neither party
requested an oral hearing.
In this case opposer has properly made of record, and
is entitled to rely upon, six of its eight pleaded
registrations.10 Because opposer owns valid and subsisting
registrations of its marks, the issue of priority does not
arise with respect to the goods recited therein. See King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108 (CCPA 1974); McDonald’s Corp. v. McClain, 37
USPQ2d 1274 (TTAB 1995); and Humana Inc. v. Humanomics Inc.,
3 USPQ2d 1696 (TTAB 1987). Moreover, opposer’s earlier date
of use is established by the evidence submitted.

10 Opposer did not submit a status and title copy of Reg. No.
890,936, issued May 12, 1970, for the mark FRITO-LAY BANDWAGON
for a house organ published periodically.
Although opposer did submit a status and title copy of Reg. No.
1,064,020, issued April 19, 1977, for the mark FRITO-LAY’S for a
variety of snack food products, the status and title copy was
prepared by the Patent and Trademark Office in August 1996,
indicating that the mark was registered for a term of 20 years
from April 19, 1977. However, the records of this Office now
indicate that Reg. No. 1,064,020 expired as of April 19, 1997.
Opposition No. 96518
6
Thus, the issue in the case before the Board is whether
applicant’s mark FIDO LAY when applied to “natural
agricultural products, namely, edible dog treats”, so
resembles opposer’s various FRITO LAY and FRITO LAY’S marks
as to be likely to cause confusion, mistake or deception
within the meaning of Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d).
Paulette Kish, one of opposer’s senior group managers
of marketing research, testified for opposer. Ms. Kish
testified that opposer11 uses the mark FRITO-LAY on tortilla
chips, potato chips, multigrain chips, corn chips, cheese
puffs, pretzels, a variety pack of all of those products,
dips, nuts, several types of filled sandwich crackers (e.g.,
cheese, peanut butter), sunflower seeds, and cookies. She
did not know when the various products were introduced on
the market by opposer, but the majority of these products
have been sold since prior to her employment at opposer in
1989, and others (such as processed nuts and seeds) have
been sold for at least four years. Opposer sells its goods
nationwide through retailers ranging from supermarkets,

11 By agreement of the parties, Ms. Elizabeth Bilus, trademark
counsel for Pepsico, Inc., the parent corporation of Frito Lay,
testified during the deposition of Ms. Kish. Ms. Bilus explained
for the record that opposer, Recot, Inc., is a wholly owned
affiliated company of Pepsico, Inc., and it is the owner of all
of the intellectual property of Pepsico, Inc., that is used by
Frito Lay in association with its snack food products. The marks
are used under license by Frito Lay from Recot, Inc.
Opposition No. 96518
7
convenience stores, mass merchandisers (e.g., K-Mart), club
stores (e.g., Sam’s), food service operators (e.g., delis),
vending machine operators, and school cafeterias. Ms. Kish
testified that opposer sells to “virtually everyone in the
country”, and that through syndicated supermarket data,
which opposer purchases from a nationally recognized
supplier of that data, opposer has its products in “90
percent of U.S. households at least once during the year”
(Dep., p. 61); that opposer’s retail sales for 1995 were
about $6 billion, and for 1992 were about $5 billion; with
advertising costs around $80 million in 1996, around $50
million annually from 1992-1995, and over $30 million
dollars in both 1990 and 1991. According to Ms. Kish,
opposer’s products range in price from $.25 a bag to over
$3.00 a bag; and purchasers buy the snacks on impulse
(approximately 80%) as well as through planned shopping.
She testified that opposer’s products are found in the
main snack aisle in grocery stores and supermarkets, and
opposer also utilizes “parameter display bases” (Dep., p.
41) in grocery stores and supermarkets. These displays are
separate racks (e.g., cardboard racks, spinner racks, and
point-of-sale displays) on which opposer displays a single
product or sometimes a variety of products. She testified
that opposer provides clip art of opposer’s trademarks to
retailers “so that they can create advertisements of their
Opposition No. 96518
8
own” (Dep., p. 9); that the retailer may cut out the clip
art provided by opposer and insert it into the retailer's
advertisement so there is an accurate depiction of opposer’s
trademark; that opposer’s marketing department compiles
trade materials and brochures to promote an individual event
or promote an array of products; and that opposer’s
customers receive these materials (e.g., clip art, trade
brochures about the products) which retailers can then “put
in their own advertisements and featured ads in the
newspaper’s food section” (Dep., p. 32). She also testified
that whether opposer advertises its goods in any pet product
or pet business publication (e.g., “Pet Product News”) was
outside of her “realm of expertise”. (Dep., p. 139-140).
Opposer’s mark FRITO LAY is usually presented in red
and white or black and white, but it sometimes appears in
blue and white or with gold. Also, opposer makes a line of
“Better For You” products with lower fat, and the packaging
for this product line includes a green stripe down the
center of the package (in the background) and a yellow
smiling sun sign design within the top portion of the green
stripe.
Applicant stipulated that exhibit 30 introduced at the
Kish deposition is an accurate list of licensees of Recot,
Inc. as to FRITO LAY marks (Dep., p. 70). That list
indicated that opposer licenses various marks, including
Opposition No. 96518
9
FRITO LAY, for, inter alia, posters, various clothing items,
playing cards, and train sets. She testified that to her
knowledge, opposer has not licensed its marks to any entity
in the dog food market. Additionally, in 1996 opposer
worked in conjunction with the Disney company, and opposer
merchandised its products in conjunction with the release of
the movie “101 Dalmatians”, including displays showing the
puppies and the characters from the movie with opposer’s
products/trademarks shown across the top of the display.
She testified that from her personal experience
supermarkets carry pet food; that she has seen dog food that
looks like human food (i.e., dog snacks that look like
cookies); that she is aware that there are companies which
produce and sell both human food and pet food (such as
Ralston Purina and Quaker); and that she has purchased dog
treats (Snausages) which she recalled were made by a company
owned by Quaker.
During the deposition of Ms. Kish, opposer stipulated
that opposer’s “products are intended for consumption by
human beings” (Dep., p. 127), and that opposer’s
“promotional efforts are directed at humans to sell products
for human consumption” (Dep., p. 130).
Applicant offered in evidence his own testimony. Mr.
Becton testified that he is the sole owner of the
application but he does business as M. C. Pet Specialties;
Opposition No. 96518
10
and that he and a partner, Steven Scott (his stepson), own
Alabama Pet Foods, a retail store specializing in pet food
and supplies, with two locations, both in the Birmingham,
Alabama area. He testified that dog treats may be sold in
grocery stores, but pet stores within the last few years
began selling a “natural line” (Dep., p. 12) of dog treats
which were not available in grocery stores; that “natural”
dog treats are such items as pig ears, cow hooves, turkey
feet; and that he explored this specialized market niche.
In deciding on a trademark, Mr. Becton discussed the matter
with his partner, Steven Scott. Mr. Becton explained that
in the Alabama Pet Food stores, they allow customers to
bring their pets into the stores, and generally they give
the customer’s pet a treat of some kind while the customer
is shopping. Mr. Becton explained that he and Steven Scott
chose the mark FIDO LAY because one day a customer came into
the pet store with a pet dog, and Steven said to this dog,
“Fido, lay” and the phrase “rang a bell.” Steven liked the
sound of the phrase, and he later called Mr. Becton to
discuss it. Mr. Becton testified that “Fido” is a common
name for a dog, and “lay” is a term used in dog training and
means to lay down.
Applicant’s application is based on an intent to use,
but applicant commenced use of his mark in June 1995. All
of applicant’s goods (e.g., smoked knuckle bones, smoked
Opposition No. 96518
11
turkey feet, smoked pig ears) are packaged and sold in
transparent plastic bags, with a yellow label with a green
outline and black lettering. After studying possible
marketing methods Mr. Becton decided to hire a distributor
who sells products to supermarkets. He also testified that
he is not involved in where his products are positioned in
supermarkets and grocery stores, and that there are dog
treats that look like human food.
Mr. Becton acknowledged that he has heard of FRITO LAY,
and he has been aware of the name for “twenty, thirty years”
(Dep., p. 67), but that the words FIDO LAY do not sound like
FRITO LAY and his trademark was not based on FRITO LAY. Mr.
Becton also testified that he received two cease and desist
letters from Pepsico, Inc., dated June 20, 1994 and July 7,
1994, but he did not respond to them, assuming they were
harassment.
Steven Scott testified that he came up with the mark
FIDO LAY as a dog command. When customers bring their dogs
into his pet stores, he tries to settle the dog down so he
can sell to the customer. He normally uses a pig ear as a
treat because it takes a big dog five or ten minutes to eat
it, which allows him time to talk to and sell to the
customer. He has no documents regarding the adoption of the
mark. He stated that the mark FIDO LAY is used on shirts
and caps as advertising, utilizing the colors green and
Opposition No. 96518
12
yellow on the caps, and green and yellow with black
lettering on the shirts, which are the colors used in the
Alabama Pet Food stores. He testified that the products are
displayed on end cap displays (which are displays placed at
the end of aisles and facing out into the perimeters), or on
spinner racks; and that it would be improper to place dog
food items in the snack aisle and vice versa. He testified
that since June 1995 between 800-1000 FIDO LAY products have
been sold. He stated that FRITO LAY is a very well known
trademark, and he has known of it for 20 years.
Dick Lovelady, a dog trainer and kennel operator since
1952, testified that for better communication between the
dog and the owner it is best to use the right language, and
it is best to use one word commands such as “down” or “sit”
or “lay” instead of “sit down” or “lay down”; that “Fido
lay” is an appropriate dog command; that the most common
names for dogs in the United States are Fido and Spot; that
feeding a dog human snack food is inappropriate and not good
for dogs; that he uses FIDO LAY dog treats in dog training
to reward appropriate behavior, as a treat, and to release
the stress caused by training, and he recommends them to his
clients; that ‘Fido Lay’ is a common dog command12; that he

12 In applicant’s brief (p. 7) applicant requested that the Board
take judicial notice that “the term ‘lay’ as related to a dog,
i.e. FIDO, is a quite frequently utilized command addressed to
dogs by their owners and dog lovers, after which the dog (Fido)
Opposition No. 96518
13
has used the command “lay” and he has instructed clients to
use the term, although the term “down” is also used. Mr.
Lovelady also testified that in his experience the stores
where human snack foods and dog treats are sold keep the
areas very separate and distinct, that is, the dog food and
human snack foods are in separate aisles, and he has never
seen a rack of FRITO LAY products adjacent to the dog food
area; and that he is aware of companies such as Ralston
Purina and the Pet Company which sell both human and pet
food.
Mr. Patrick Siano, vice-president of Patrick Siano
Foods, a specialty food distributor in Memphis, Tennessee,
testified that his father’s company is a wholesaler to
supermarkets, and that the company distributes approximately
1000 products to about 175-200 supermarkets in four states;
that among the products it distributes are snack foods
(Snyders of Hanover Pretzels); that the company does not
distribute FRITO LAY products because those products are
distributed through their own distribution system; that the
Patrick Siano Foods company distributes applicant’s products
to supermarkets; that when first approached by Steven Scott
about distributing FIDO LAY products he did not confuse the
name with FRITO LAY; that he has personally visited about
100 of the supermarkets which are the company’s customers;

is rewarded with a dog treat”. The Board declines to take such
Opposition No. 96518
14
that he has never seen dog food/dog treats adjacent to the
human snack food area of supermarkets; that he has never
seen human snack food display racks adjacent to the dog
food/dog treat sections; that his company brings in floor
spinner racks for display of the FIDO LAY products, but the
store manager or the department manager within the store
decides where the spinner racks are placed within the store;
that dog food and dog treats are considered nonfoods by most
retailers; that he has received no complaints of confusion
between the products; that he associates FIDO with a dog’s
name; that vis-a-vis FRITO LAY, when he first heard of FIDO
LAY, “the names weren’t confusing, but I did think of Frito
Lay,” (Dep., p. 56); that he has been aware of the FRITO LAY
mark for over twenty years; and that he is aware that
Ralston Purina and the Mars company sell both human and pet
food.
Mr. Stuart Herring is a computer operator at Blue Cross
Blue Shield (and a co-worker of Steven Scott’s wife), and
was hired by applicant “as a researcher and consultant on
aspects of language” (Dep., pp. 8-9) for this case. He
testified as to things such as several dictionary
definitions; grammatical uses of certain words; and that
“Fido” is a familiar name for a dog, “lay” means to put or

judicial notice. See TBMP §712.
Opposition No. 96518
15
place in a horizontal position or position of rest, and that
“frito” is a Spanish word meaning fried13.
In rebuttal, and in accordance with the stipulation of
applicant under Trademark Rule 2.123(b), opposer offered the
affidavit testimony of Marthe deRaismes Drake, a legal
secretary at opposer’s law firm. She stated that on October
7, 1996 she shopped at a convenience store and at the
checkout counter she saw and purchased a “candy item labeled
‘Cookie Snack’ consisting of cookie bits in the shape of dry
dog food in combination with a piece of hard yellow candy
shaped like a dog bone packaged in a plastic bowl made to
appear like a dog dish.” This was offered to prove that
“others apparently manufacture and market human food made to
appear like dog food” (Opposer’s brief, p. 17).
Our determination of likelihood of confusion must be
based on our analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The first relevant du Pont factor is the similarity or
dissimilarity of the marks. Opposer’s various marks consist
of the word FRITO with the word LAY or LAY’S, sometimes

13 Additionally, The Random House Latin-American Spanish
Dictionary (1997), and the Cassell’s English-Spanish, Spanish-
English Dictionary (1978) both indicate that “frito” means
“fried”. The Board may take judicial notice of dictionary
definitions. See TBMP §712.01.
Opposition No. 96518
16
including a hyphen after the word FRITO, and sometimes
including stylized lettering and a background design. While
opposer’s marks and applicant’s mark both include the word
LAY as the second word, there are obvious differences in the
overall marks. Most importantly, the first word in
opposer’s marks is FRITO, whereas the first word in
applicant’s mark is FIDO. These two words are significantly
different in connotation. FRITO is Spanish for “fried”,
while FIDO is a common name for a dog, such that one who
does not even know the name of a dog may refer to it as
FIDO. Also, applicant submitted evidence that its use of
the term LAY specifically relates to the command to a dog to
lie down. When LAY is combined with FIDO, the common
meaning of LAY is apparent. Opposer submitted no evidence
characterizing or explaining the origin and/or meaning of
its marks FRITO LAY and FRITO LAY’S. Certainly, though, the
word LAY combined with the Spanish word for “fried” does not
connote a dog command, nor would LAY be likely to be
perceived as meaning to lie down. Some of opposer’s marks
are FRITO LAY’S, with the second word in the possessive
form. We agree with applicant that opposer’s marks, FRITO
LAY and FRITO LAY’S, and applicant’s mark, FIDO LAY, are
different in connotation, and the marks create different
commercial impressions.
Opposition No. 96518
17
The second relevant du Pont factor is the relatedness
of the goods, as described in the application or
registration(s), or in connection with which opposer has
shown prior use of its mark. Opposer’s goods encompass a
wide variety of snack foods, while applicant’s goods are dog
treats, and more specifically (as identified in applicant’s
application), “natural agricultural products, namely, edible
dog treats”. We note that opposer has a registration (Reg.
No. 1,501,004-see footnote 8) for a variety of non food
goods, such as houseware items, clothing items, accessory
items, and stationery items; and that opposer licenses its
marks for various nonfood goods listed earlier in this
decision. However, none of opposer’s collateral goods or
licensed goods is related to dog treats. Thus, the parties’
respective goods are simply not identical, nor otherwise
related.
The next relevant du Pont factors are the channels of
trade and the similarity of purchasers. The goods of the
parties are sold in some of the same channels of trade,
including, at least, supermarkets and grocery stores. Also,
there is some overlap in purchasers inasmuch as individuals
who own dogs may purchase snack foods as well as dog treats.
Nonetheless, the evidence establishes that the snack food
section and the pet food section of grocery stores and
supermarkets are distinct and separate sections within the
Opposition No. 96518
18
stores. There is no “per se” rule that all products sold
within supermarkets are related by virtue of the fact that
they are sold in the same establishments. The Court of
Customs and Patent Appeals stated in the case of Federated
Foods, Inc. v. Fort Howard Paper Company, 544 F.2d 1098, 192
USPQ 24 (CCPA 1976) as follows:
A wide variety of products, not only from different
manufacturers within an industry but also from diverse
industries, have been brought together in the modern
supermarket for the convenience of the customer. The mere
existence of such an environment should not foreclose
further inquiry into the likelihood of confusion arising
from the use of similar marks on any goods so displayed.
(Citation omitted) The means of distribution and sale,
although certainly relevant, are areas of peripheral
inquiry. The fundamental inquiry mandated by §2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.
(Emphasis in original.)
Even in the context of a supermarket carrying a wide
variety of items, the particular nature of the goods must be
considered. Here, the evidence of record does not show that
snack foods are sold near pet foods, or are displayed in any
manner such that consumers would assume a connection between
the source of the parties’ respective products.
We acknowledge that both opposer’s snack foods and
applicant’s dog treats are inexpensive and may be purchased
on impulse. However, these factors are diminished in
importance in the context of this particular case because
the parties’ respective products are so different in nature.
Opposition No. 96518
19
The next du Pont factor we look at in this case, the
fame of the opposer’s marks, is unquestionably established
in opposer’s favor. With recent annual sales exceeding $6
billion dollars, recent annual advertising figures of $80
million, and opposer’s products in up to 90% of U.S.
households, there is no question that opposer has
established the fame of its involved marks for its snack and
other food products. Thus, opposer’s marks “enjoy a wide
latitude of legal protection.” See Kenner Parker Toys Inc.
v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).
It is applicant’s position that opposer’s marks are
famous for a variety of human food products, but that the
fame of opposer’s marks does not extend beyond that field,
and that consumers are not likely to be confused vis-a-vis
the mark FIDO LAY on “natural agricultural products, namely
dog treats.” There is no evidence of record herein which
shows any use or public recognition of opposer’s marks in
the pet food industry. To the contrary, the record is clear
that opposer makes no pet foods or dog treats, and currently
does not license any such products. The fact that a few
witnesses testified that they are personally aware of
companies that produce both human and pet foods (e.g.,
Ralston Purina, Quaker, Pet Company), is not persuasive
evidence that the public might assume a connection or
Opposition No. 96518
20
association of opposer with pet foods, particularly in view
of the fact that there is no evidence that these
manufacturers use the same or similar product marks on human
food and pet food.
We are well aware of several cases from the U.S. Court
of Appeals for the Federal Circuit relating to the
importance of the “fame” factor, and we have certainly
accorded weight to this factor in our determination of the
case now before us. However, the test for likelihood of
confusion requires the Board to consider the evidence on all
the relevant factors. See Kenner Parker Toys, supra. The
line of cases in which the U.S. Court of Appeals for the
Federal Circuit found “fame” to weigh heavily in the balance
of du Pont factors--and in which the Court found confusion
likely--generally involved either the same or closely
related goods or services. See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983) (GIANT FOOD, SUPER GIANT, GIANT and design and GIANT
FOOD and design for retail grocery store and supermarket
services and private label food products and GIANT
HAMBURGERS and design for hamburger and hot dog sandwiches
and milk shakes for consumption on or off the premises);
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984) (SPICE ISLANDS
for teas and SPICE VALLEY for teas); Kimberly-Clark
Opposition No. 96518
21
Corporation v. H. Douglas Enterprises, Ltd., 774 F.2d 1144,
227 USPQ 541 (Fed. Cir. 1985) (HUGGIES for disposable
diapers and DOUGIES for combination training pants and
disposable diapers); Nina Ricci S.A.R.L. v. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.
1989) (NINA RICCI, and other marks, for perfumes, clothing
and accessories, and a retail boutique store and VITTORIO
RICCI for handbags, clothing items, and retail stores);
Kenner Parker Toys, supra, (PLAY-DOH for modeling compound
and FUNDOUGH for modeling compound and other accessories);
and Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992) (CENTURY 21
for real estate brokerage services, insurance brokerage
services, and mortgage brokerage services and CENTURY LIFE
OF AMERICA for insurance underwriting services).
In the case now before the Board the goods are not
identical or closely related. Moreover, the same Court
stated in The University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983:
The fame of the University’s name is insufficient in
itself to establish likelihood of confusion under Section
2(d). “Likely...to cause confusion” means more than the
likelihood that the public will recall a famous mark on
seeing the mark used by another. It must also be established
that there is a reasonable basis for the public to attribute
the particular product or service of another to the source
of the goods or services associated with the famous mark.
To hold otherwise would result in recognizing a right in
Opposition No. 96518
22
gross, which is contrary to principles of trademark law and
to concepts embodied in 15 USC §1052(d).
Notwithstanding the fame of opposer’s mark, the
differences in the products are so great, and the
differences in the commercial impressions of the marks so
apparent, that consumers are not likely to believe these
goods emanate from or are sponsored by the same source.
As the Court stated in the case of In re P. Ferrero &
C.S.p.A., 479 F.2d 1395, 178 USPQ 167 (CCPA 1973), “The fact
that one mark may bring another mark to mind does not in
itself establish likelihood of confusion as to source”; and
the Board stated in American Express Company v. Payless
Cashways, Inc., 222 USPQ 907 (TTAB 1984), “The concept of
likelihood of confusion means more than the likelihood that
the public will recall a famous or well known mark upon
seeing the same or similar mark used by another.” That is,
even if an applicant’s mark might bring to mind the
opposer’s mark, this does not necessarily mean that
consumers will be confused into believing that the two marks
indicate the same source of origin. See also, Viacom
International Inc. v. Komm, 46 USPQ2d 1233 (TTAB 1998); and
Nestle Foods Corp. v. Kellogg Co., 6 USPQ2d 1145 (TTAB
1988).
Finally, there is no evidence of any bad faith by
applicant in adopting his mark, FIDO LAY. The trade dress
Opposition No. 96518
23
of applicant’s products does not resemble the trade dress of
any of opposer’s products, nor is there any promotional
literature for applicant’s products that suggests a
connection to or play upon “FRITO-LAY” products. In fact,
we find credible applicant’s explanation of the origin of
his mark, relating to a common dog name and a dog command.
While the testimony does show that applicant was aware of
FRITO LAY products for many years, applicant’s awareness of
opposer’s marks for snack foods does not prove any ulterior
motive or bad faith by applicant. Mere knowledge does not
necessarily amount to bad faith in adopting a mark.
Decision: The opposition is dismissed.
J. D. Sams
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board