Safer, Inc.v.OMS Investments, Inc.

Trademark Trial and Appeal Board

Feb 22, 2010

No. 91176445 (T.T.A.B. Feb. 22, 2010)

Mailed:
February 23, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Safer, Inc.
v.
OMS Investments, Inc.
_____

Opposition No. 91176445
to application Serial No. 78898038
filed on June 1, 2006
_____

Marsha G. Gentner and Leesa N. Weiss of Jacobson Holman PLLC
for Safer, Inc.

Susan E. Hollander of Manatt, Phelps & Phillips, LLP for OMS
Investments, Inc.
______

Before Walters, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

OMS Investments, Inc. (“applicant”) filed an intent-to-
use application for the mark DEER-B-GON, in standard
character form, for an “animal repellant used to repel deer
and other ruminant animals and rabbits,” in Class 5.
Safer, Inc. (“opposer”) filed a notice of opposition
against the registration of applicant’s mark on the ground
of priority of use and likelihood of confusion pursuant to
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d). Specifically, opposer alleged that it is the
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition Nos. 91176445
2
owner of Registration No. 2236673 for the mark DEER AWAY1
and Registration No. 2867421 for the mark DEER AWAY
PROFESSIONAL,2 both in typed drawing form, and both for
“repellant for repelling deer, other big game and rabbits,”
in Class 5. Opposer disclaimed the exclusive right to use
the word “deer” in Registration No. 2236673.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
Preliminary Issues
A. Whether likelihood of confusion with opposer’s DEER-OFF
trademark was tried by implied consent?

As indicated above, in the notice of opposition,
opposer claimed ownership of the federal registrations for
the marks DEER AWAY and DEER AWAY PROFESSIONAL. During its
testimony period, opposer filed a notice of reliance on
status and title copies of the registrations.
Applicant filed a notice of reliance on opposer’s
responses to applicant’s interrogatories. In interrogatory
No. 8, applicant requested opposer to identify any trademark
opposer uses which contain the words “Deer” or “Away.”
Opposer identified, inter alia, DEER AWAY, DEER AWAY
PROFESSIONAL and DEER-OFF. Opposer’s DEER-OFF mark was also
referenced in some of the documents opposer produced during

1 Issued April 6, 1999; affidavits under Sections 8 and 15
accepted and acknowledged.
2 Issued July 27, 2004.
Opposition Nos. 91176445
3
discovery pursuant to Fed. R. Civ. P. 33(d) and applicant
subsequently made of record during its testimony period.
In its rebuttal testimony period, opposer introduced a
status and title copy of Registration No. 2700224 for the
mark DEER-OFF for “packages, bottles, and/or spray bottles
containing a fluid composed of all natural liquids which
when applied to or sprayed upon flowers and plants deter
deer from destroying those flowers and plants,” in Class 5.3
Although opposer did not seek leave to amend its pleading to
claim ownership of the DEER-OFF mark and registration and to
assert likelihood of confusion based on this mark, in its
brief on the case, opposer referred to the DEER-OFF
registration and mark as if it had pled ownership of the
mark and registration in the notice of opposition. In other
words, there was no separate Rule 15(b) motion to amend the
pleading or reference to Rule 15(b) in opposer’s brief;
there was only a discussion of the mark. Applicant, in its
brief, objected to any reference to the DEER-OFF mark and
registration on the ground that it was not pled by opposer.
Opposer argues that because applicant made the DEER-OFF
trademark “of record,” applicant made opposer’s “use and
registration of that mark a triable issue in this
proceeding.”4

3 Issued March 25, 2003; affidavits under Sections 8 and 15
accepted and acknowledged.
4 Opposer’s Reply Brief, p. 3.
Opposition Nos. 91176445
4
Applicant, having itself put Opposer’s
DEER-OFF mark into evidence, cannot now
claim that it was surprised or
prejudiced by its inclusion in this
proceeding. Accordingly, Opposer
clearly was entitled to submit in its
rebuttal testimony period a status and
title copy of its registration, no.
2,700,224, for same and, thereafter,
rely on it in its trial brief.5

Opposer concludes that because applicant has treated the
DEER-OFF mark and registration as being of record, the
pleadings should be deemed amended in accordance with Fed.
R. Civ. P. 15(b) to include a likelihood of confusion claim
based on this mark.6 When opposer filed its brief, it did
not file a separate motion to amend the notice of opposition
to conform to the evidence produced at trial. Nevertheless,
we construe opposer’s discussion of the DEER-OFF mark in its
main brief, applicant’s objection to the discussion in
applicant’s main brief, and opposer’s response to the
objection in opposer’s reply brief as having effectively
briefed the question.
Implied consent to the trial of an unpleaded issue can
be found only where the nonoffering party (1) raised no
objection to the introduction of the evidence on the issue,
and (2) was fairly apprised that the evidence was being
offered in support of the issue. Morgan Creek Productions
Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB

5 Id.
6 Id.
Opposition Nos. 91176445
5
2009); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715,
1720-1721 (TTAB 2008).
The question of whether an issue was
tried by consent is basically one of
fairness. The non-moving party must be
aware that the issue is being tried, and
therefore there should be no doubt on
this matter.

Morgan Creek Productions Inc. v. Foria International Inc.,
91 USPQ2d at 1139.
In this case, applicant raised an objection to “all
mention of, reference to or reliance upon” opposer’s DEER-
OFF trademark and registration.7 Applicant initially
introduced the registration of the DEER-OFF mark into the
record “as it establishes that Opposer disclaimed the
exclusive right to use the word ‘deer’ apart from the mark
as shown,”8 not to prove the ownership and validity of
opposer’s DEER-OFF registration. Because opposer had never
asserted ownership of the DEER-OFF registration, applicant
was not aware that opposer was going to rely on that mark
and registration to prove likelihood of confusion. The fact
that applicant submitted opposer’s response to an
interrogatory to show the opposer had disclaimed a portion
of its mark does not show that applicant was aware that the
issue of likelihood of confusion with respect to that mark
was being tried, nor does it show applicant’s consent to the

7 Applicant’s Brief, p. 10.
8 Applicant’s notice of reliance, p. 6.
Opposition Nos. 91176445
6
trial of this issue. Opposer cannot show that the issue was
tried by submitting a copy of its registration during its
rebuttal testimony period.9
Opposer knew full well what marks it owned at the time
it filed the notice of opposition. If it wished to rely on
a likelihood of confusion claim with DEER-OFF, it should
have pled the mark and registration in its original notice
of opposition or, at a minimum, sought leave to amend its
notice of opposition after it served responses to
applicant’s discovery that referenced the mark. In this
regard, opposer had many opportunities to inform applicant
that it was going to rely on the DEER-OFF trademark to prove
likelihood of confusion: when it filed the notice of
opposition and when it identified the DEER-OFF mark in
discovery responses. However, opposer never told applicant
that it was going to rely on the DEER-OFF mark and
registration to prove likelihood of confusion until opposer
filed its rebuttal notice of reliance. In fact, in its
response to applicant’s interrogatory No. 8, opposer
objected to identifying any trademark opposer uses
containing the word “Deer” or “Away” on the ground that the
interrogatory is irrelevant. Thus, opposer’s own actions
prior to trial would not have given applicant any reason to

9 Even if the registration had been properly pleaded,
introduction of the registration during opposer’s rebuttal
testimony period would have constituted improper rebuttal.
Opposition Nos. 91176445
7
believe that opposer intended to rely on its DEER-OFF mark.
Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1455 (TTAB
1998).
In view of the foregoing, we find that applicant was
not aware that opposer intended to rely on its DEER-OFF mark
to prove likelihood of confusion until opposer filed its
rebuttal notice of reliance, . This was too late a point to
show that the issue of likelihood of confusion with respect
to this mark was tried. On the contrary, it would be unfair
to permit opposer to rely on the DEER-OFF trademark and
registration at this late date. See Sunnen Products Co. v.
Sunex International Inc., 1 USPQ2d 1744, 1746 (TTAB 1987);
The United States Shoe Corp. v. Kiddie Kobbler Ltd., 231
USPQ 815, 817 (TTAB 1986); Long John Silver’s, Inc. v. Lou
Scharf Inc., 213 USPQ 263, 266 (TTAB 1982). We conclude
that likelihood of confusion with respect to this mark and
registration was not tried by either implied or express
consent as a result of applicant’s submissions at trial.
Applicant’s objection to the rebuttal notice of reliance and
to opposer’s references in its brief to the DEER-OFF
registration is sustained. We will make our determination
of likelihood of confusion based solely on the basis of
opposer’s registrations for the marks DEER AWAY and DEER
AWAY PROFESSIONAL. However, we will otherwise admit the
Opposition Nos. 91176445
8
DEER-OFF registration for whatever probative value it may
have.
B. Whether incontestable status is evidence of a mark’s
strength for purposes of determining likelihood of
confusion?

Opposer argues that its “incontestable registrations
also constitute evidence of the strength of Opposer’s DEER
AWAY and DEER-OFF marks.”10 Applicant, however, contends
that “incontestable status does not make a weak mark
strong.”11
Appellate courts are split as to the effect of
incontestability on the strength of a registered mark. Some
presume that incontestable status is an indicia of strength.
Sports Authority Inc. v. Prime Hospitality Corp., 89 F.3d
955, 39 USPQ2d 1511, 1514 (2nd Cir. 1996); Dieter v. B & H
Industries of Southwest Florida, Inc., 880 F.2d 322, 11
USPQ2d 1721, 1726 (11th Cir. 1989); Wynn Oil Co. v. Thomas,
839 F.2d 1183, 5 USPQ2d 1944, 1946 (6th Cir. 1988). Other
courts hold that incontestable status refers to the validity
of the registration, not the registered mark’s degree of
strength. Lone Star Steakhouse & Saloon v. Alpha of
Virginia, 43 F.3d 922, 33 USPQ2d 1481, 1490 (4th Cir. 1995);
Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856
F.2d 1445, 8 USPQ2d 1237, 1240 (9th Cir. 1988); M-F-G Corp.

10 Opposer’s Brief, p. 8.
11 Applicant’s Brief, p. 18.
Opposition Nos. 91176445
9
v. EMRA Corp., 817 F.2d 410, 2 USPQ2d 1538, 1539 (7th Cir.
1987); Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d
166, 231 USPQ 634, 637 (5th Cir. 1986).
Incontestability concerns a statutory presumption
flowing from a mark that has been registered for more than
five years (i.e., a registration that has been registered
for more than five years is conclusive evidence of the
registrant’s ownership of the mark, the validity of the
registration, and the registrant’s exclusive right to use
the mark in commerce). Section 33(b) of the Trademark Act
of 1946, 15 U.S.C. §1115(b).
Neither our primary reviewing court, the Court of
Appeals for the Federal Circuit, nor its predecessor, the
Court of Customs and Patent Appeals, has expressly addressed
whether the incontestable status of a federally-registered
mark is an indicia of strength in the likelihood of
confusion analysis.12 However, the CCPA has recognized that
trademark rights are not static and that the strength of a
mark may change over time. Jiffy, Inc. v. Jordan
Industries, Inc., 481 F.2d 1323, 179 USPQ 169, 170 (CCPA

12 We note that opposer’s counsel prosecuted two oppositions
resulting in nonprecendential decisions where the Board held that
incontestable status does not make a registered mark strong for
purposes of determining likelihood of confusion. Tensar Corp. v.
McElroy Metal Mill (Opposition No. 91174290, March 17, 2009) (“We
reject opposer’s argument that incontestable status alone
dictates that the MESA mark is strong and entitled to broader
protection than otherwise may apply”); Panelfold v. ChemRex,
(Opposition No. 91103270, July 12, 2002) (“the fact that a
Opposition Nos. 91176445
10
1973) (“a weak mark need not remain a weak mark forever.
Development of association with the user as a source of the
goods through continued sales and advertising of the goods
may turn a ‘weak’ mark into a strong, distinctive
trademark”); Standard International Corp. v. American Sponge
and Chamois Co., Inc., 394 F.2d 599, 157 USPQ 630, 631 (CCPA
1968) (“a mark which is initially a weak one may, by reason
of subsequent use and promotion, acquire such
distinctiveness that it can function as a significant
indication of a particular producer as source of the goods
with which it is used”). Because trademark rights are not
static, an inherently weak mark may become a strong mark
through extensive promotion.
The Board has previously held that statutory
presumptions do not affect the likelihood of confusion
analysis. Byk-Gulden, Inc. v. Trimen Laboratories, Inc.,
211 USPQ 364, 368 (TTAB 1981), quoting Hyde Park Footwear
Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641
(TTAB 1977):
The statutory presumptions, however, do
not answer the question of whether
applicant’s mark, for the goods
identified in the application, so
resemble either of opposer’s marks as to
be likely to cause confusion, mistake or
deception. The registrations alone are
incompetent to establish any facts with
regard to the nature or extent of

registration has achieved incontestable status does not make a
mark ‘strong’”).
Opposition Nos. 91176445
11
opposer’s use and advertising of its
trademarks or any reputation they enjoy
or what purchasers’ reactions to them
may be.

See also Martha White, Inc. v. American Bakeries Co., 157
USPQ 215, 217 (TTAB 1968) (opposer’s registration is not
evidence of the nature and extent of opposer’s use and
advertising of its mark and, thus, is not probative of
consumer reaction to the mark no matter how long it has been
registered). Accordingly, the fact that opposer’s
federally-registered trademark has achieved incontestable
status means that it is conclusively considered to be valid,
but it does not dictate that the mark is “strong” for
purposes of determining likelihood of confusion. McCarthy
On Trademark and Unfair Competition §§11:82 and 32:155 (4th
ed. 2009).
C. Whether opposer’s Exhibits 5-40 comprising documents
published by universities, state institutions and other
private entities obtained from the Internet are
admissible pursuant to Trademark Rule 2.122(e)?

In opposer’s second notice of reliance, opposer
proffered publications by federal and state agencies,
universities and certain private entities. Pursuant to the
information provided in the notice of reliance, the
publications were obtained from the Internet. Applicant
objected to the admissibility of opposer’s exhibit Nos. 5-40
on the ground that the documents are not publicly available
printed publications in accordance with Trademark Rule
Opposition Nos. 91176445
12
2.122(e) and on the ground that documents obtained through
the Internet are not self-authenticating and, therefore, not
proper subject matter for introduction by notice of
reliance.13
Opposer argues that applicant waived its objections to
opposer’s Exhibits 5-40 because applicant introduced
electronic versions of similar studies by universities and
state agencies through a notice of reliance. However,
applicant introduced its Exhibit Nos. 6-9 through a notice
of reliance pursuant to Trademark Rule 2.120(j)(3)(i),
providing for the introduction of interrogatory responses
through a notice of reliance. Applicant’s exhibit Nos. 6-9
were documents identified by opposer in response to
applicant’s interrogatory No. 18 pursuant to Fed. R. Civ. P.
33(d). Because applicant introduced its exhibit Nos. 6-9
through a notice of reliance pursuant to Trademark Rule
2.120(j)(3)(i), not Trademark Rule 2.122(e), applicant did
not waive its objection to the admissibility of opposer’s
documents through Trademark Rule 2.122(e).
Trademark Rule 2.122(e), 37 CFR §2.122(e), in pertinent
part, reads as follows:

13 Opposer’s Exhibits 5-40. In applicant’s objections to
opposer’s evidentiary record, applicant objected to opposer’s
exhibit Nos. 5-38 and omitted exhibits 39 (private entity
publication) and 40 (university publication). We consider this
to be an oversight and include these two exhibits in our
discussion.
Opposition Nos. 91176445
13
Printed publications, such as books and
periodicals, available to the general
public in libraries or of general
circulation among members of the public
or that segment of the public which is
relevant under an issue in a proceeding,
and official records . . . may be
introduced in evidence by filing a
notice of reliance on the material being
offered. The notice shall specify the
printed publication (including
information sufficient to identify the
source and the date of the publication).

“Printed publications” that are in “general
circulation” may be introduced into evidence through a
notice of reliance. “Documents which constitute printed
publications are essentially self-authenticating,
eliminating the usual requirement that evidence be
authenticated prior to admission.” Boyds Collection Ltd. v.
Herrington & Co., 65 USPQ2d 2017, 2020 (TTAB 2003).14
The Board generally finds that a document identifying
its publication date and source may be introduced into
evidence pursuant to Trademark Rule 2.122(e) if it is in
general circulation. Paris Glove of Canada Ltd. v.
SBC/Sporto Corp., 84 USPQ2d 1856, 1857 (TTAB 2007) (article
from a trade magazine is admissible under 2.122(e) because

14 Documents submitted under notice of reliance pursuant to
Trademark Rule 2.122(e) are generally admissible and probative
only for what they show on their face, and not as proof of the
matters asserted therein. Boyds Collection Ltd. v. Herrington &
Co., 65 USPQ2d at 2020 n.8; Exxon Corp. v. Fill-R-Up Systems,
Inc., 182 USPQ 443, 445 (TTAB 1974); TBMP §708 (2nd ed. Rev. 2004)
and the cases cited therein.
Opposition Nos. 91176445
14
“[o]n its face, it identifies the publication and the date
published”); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705,
1722 (TTAB 1999), rev’d on other grounds, 284 F.Supp.2d 96,
68 USPQ2d 1225 (D.D.C. 2003) (excerpts that are unidentified
as to either source or date are not admissible under a
notice of reliance because the authenticity of the document
cannot be ascertained); Hard Rock Cafe Licensing Corp. v.
Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (excerpt from a
newspaper or periodical is not admissible under 2.122(e) if
it is incomplete, illegible or not fully identified as to
its name and date of the published source); Int’l Assn. of
Fire Chiefs v. H. Marvin Ginn Corp., 225 USPQ 940, 942 n.6
(TTAB 1985), rev’d on other grounds, 782 F.2d 987, 228 USPQ
528 (Fed. Cir. 1986) (excerpts from the Lexis/Nexis database
were admissible through notice of reliance because the
materials “clearly identify the excerpted articles by their
dates of publication and sources, all of which are readily
available in published materials”); see also In re National
Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984), rev’d on
other grounds, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)
(magazine articles obtained through Lexis/Nexis search
admissible because they were clearly identified and
therefore there was “no credibility problem”); In re Capital
Formation Counselors, Inc., 219 USPQ 916, 918 n. 3 (TTAB
1983) (Lexis/Nexis articles are clearly identified by name
Opposition Nos. 91176445
15
and date therefore applicant could have easily checked the
articles).
Rule 2.122(e) is intended to expedite and facilitate
the presentation and evaluation of evidence.
[Rule 2.122(e)] is intended to
facilitate the introduction of books and
publications for what they show on their
face subject to the safeguard that the
party against whom the evidence is
offered is readily able to corroborate
or refute the authenticity of what is
proffered. The assumption underlying
the rule is that a party is or may
readily become familiar with printed
matter in libraries open to the public
or in general circulation. The burden
of showing public availability, in case
of reasonable doubt, lies on the
proponent of the evidence. Private
promotional literature is not presumed
to be publicly available in the sense of
being readily accessible for inspection
in libraries open to the public or of
such currency that the other party is
presumably familiar with it.

Glamorene Products Corp. v. Earl Grissmer Co., Inc., 203
USPQ 1090, 1092 n.5 (TTAB 1979).
In applying the Trademark rules, we must recognize and
adapt to changes in technology, particularly the prevalence
of the Internet. Apropos to the question of whether the
Board should allow materials retrieved from Internet web
pages to be introduced by notice of reliance is the
discussion justifying our decision to admit newswire stories
in ex parte appeals.
This Board would be blind if it did not
recognize that during the past fifteen
Opposition Nos. 91176445
16
years, there has been a dramatic change
in the way Americans receive their news.
In the 1980’s personal computers were in
their infancy as was the transmission of
news stories via the Internet. Put
quite simply, we believe that
communications have changed dramatically
during the past fifteen years such that
by now it is by no means uncommon for
even ordinary consumers . . . to receive
news not only via tangible newspapers
and magazines, but also electronically
through personal computers. Thus, it is
much more likely that newswire stories
will reach the public because they can
be picked up and “broadcast” on the
Internet. In short, while we are not
saying that newswire stories are of the
same probative value as are stories
appearing in magazines and newspapers,
we think that the situation has changed
such that said newswire stories have
decidedly more probative value than they
did when this Board decided the
Professional Tennis Council and Appetito
Provision cases.15

In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB
2003); see also Research In Motion Limited v. NBOR
Corporation, 92 USPQ2d 1926, 1928 (TTAB 2009) (permitting
proof of a pleaded registration by the submission of a
printout of information from the electronic database records
of the USPTO through a notice of reliance although not
expressly authorized by Trademark Rule 2.122(d)(2) in an
effort to “liberalize the means for proving a pleaded
registration”); TMEP §710.01(b) (6th ed. 2009) (“Articles
downloaded from the Internet are admissible as evidence of

15 In re Men’s Inernational Professional Tennis Council, 1 USPQ2d
1917 (TTAB 1986); In re Appetito Provisions Co., 3 USPQ2d 1553
Opposition Nos. 91176445
17
information available to the general public, and of the way
in which a term is being used by the public”);16 Manual of
Patent Examining Procedure (MPEP) §2128 (8th ed. rev. 2008)
(“A reference is proven to be a ‘printed publication’ ‘upon
a satisfactory showing that such document has been
disseminated or otherwise made available to the extent that
persons interested and ordinarily skilled in the subject
matter or art, exercising reasonable diligence, can locate
it’”).
We agree that “printed publication”
should be approached as a unitary
concept. The traditional dichotomy
between “printed” and “publication” is
no longer valid. Given the state of
technology in document duplication, data
storage, and data retrieval systems, the
“probability of dissemination” of any
item very often has little to do with
whether or not it is “printed” in the
sense of that word when it was
introduced into the patent statutes in
1836.

In re Wyer, 655 F.2d 221, 210 USPQ 790, 794 (CCPA
1981)(quoting I.C.E. Corp. v. Armco Steel Corp., 250 F.Supp.
738, 743, 148 USPQ 537, 540 (SDNY 1966)).

(TTAB 1987).
16 Although, the U.S. Patent and Trademark Office’s Internet Usage
Policy that appeared in the Federal Register at 64 Fed. Reg.
33056 (June 21, 1999) was addressed to use of Internet sources in
ex parte examination, the policy noted that “electronic-only
documents are considered to be original publications.” 64 Fed.
Reg. at 33063.
Opposition Nos. 91176445
18
Likewise, the manner in which many “publications,”
including government documents, are maintained and
circulated has dramatically changed since this Board decided
Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998)
(“these printouts must be viewed simply as information
available to the general public at the time opposer’s
counsel accessed the Internet”) and even Paris Glove of Can.
Ltd. v. SBC/Sporto Corp., 84 USPQ2d at 1858-59 (TTAB 2007)
(web pages which are not the equivalent of printed
publications are not admissible under a notice of reliance).
Even the USPTO no longer maintains new trademark files in
printed form but rather the Office’s files are in electronic
form and accessible to all via the Internet, and to that
extent they are both official records and in general
circulation. Today some matter that was once admissible as
a printed publication no longer exists in printed form
(e.g., new magazine “publications” that only exist online).
As this trend continues, more and more “publications” will
exist only online. Therefore, either the utility of the use
of notices of reliance to introduce printed publications and
government records will become limited, or the Board must
adapt the procedure to recognize the changes in how
publications and other documents are kept and “circulated.”
We hold that, if a document obtained from the Internet
identifies its date of publication or date that it was
Opposition Nos. 91176445
19
accessed and printed, and its source (e.g., the URL), it may
be admitted into evidence pursuant to a notice of reliance
in the same manner as a printed publication in general
circulation in accordance with Trademark Rule 2.122(e). Cf.
MPEP §2128 (“An electronic publication, including an on-line
database or Internet publication, is considered to be a
‘printed publication’ within the meaning of 35 U.S.C.
§102(a) and (b) provided the publication was accessible to
persons concerned with the art to which the document
relates”). The Board will henceforth deem a document
obtained from the Internet displaying a date and its source
as presumptively true and genuine. Of course, the document
must be publicly available. The date and source information
on the face of Internet documents allow the nonoffering
party the opportunity to verify the documents. Due to the
transitory nature of the Internet, the party proffering
information obtained through the Internet runs the risk that
the website owner may change the information contained
therein. However, any relevant or significant change to the
information submitted by one party is a matter for rebuttal
by the opposing party.17

17 As was true before this decision, if the parties have any
question about the public availability of information obtained
via the Internet, the better practice would be for the parties to
stipulate that documents obtained through the Internet may be
introduced into evidence through a notice of reliance for the
limited purpose of demonstrating what the documents show on their
face.
Opposition Nos. 91176445
20
By this change, the Board is expanding the types of
documents that may be introduced by notice of reliance to
include not only printed publications in general
circulation, but also documents such as websites,
advertising , business publications, annual reports, studies
or reports prepared for or by a party or non-party, if, and
only if, they can be obtained through the Internet as
publicly available documents. This approach facilitates the
introduction of matter for the limited purpose of
demonstrating what the documents show on their face. We
underscore that a printout from a webpage may have more
limitations on its probative value than traditional printed
publications. A party may increase the weight we will give
such website evidence by submitting testimony and proof of
the extent to which a particular website has been viewed.
Otherwise, it might not have much probative value. The
change in practice articulated herein does not change our
practice with respect to traditional paper documents.18
By liberalizing the practice under Trademark Rule
2.122(e), we understand that there is an opportunity for
abuse (e.g., “needless presentation of cumulative evidence”

18 This may create a situation where identical types of documents
may be treated differently. For example, a corporate annual
report available only in paper form may not be admissible through
a notice of reliance because it is not a document in general
circulation, however, a corporate annual report in digital form
publicly available over the Internet would be admissible through
Opposition Nos. 91176445
21
in violation of Fed. R. Evid. 403).19 We emphasize that
under Rule 2.122(e) the propounding party of internet
documents as well as traditional publications must “indicate
generally the relevance of the material being offered.” For
example, it is not sufficient for the propounding party to
broadly state that the materials are being submitted to
support the claim that there is (or is not) a likelihood of
confusion, or that the mark is (or is not) merely
descriptive. Likelihood of confusion or descriptiveness is
often the only issue in a case and to simply state this fact
is the equivalent of saying that the documents are relevant
to the case. Ordinarily, to meet the requirement to
“indicate generally the relevance of the material being
offered,” the propounding party should associate the
materials with a relevant likelihood of confusion factor
(e.g., the strength of the mark, the meaning or commercial
impression engendered by the mark, etc.) or a specific fact

a notice of reliance because its publication on the Internet
places it in general circulation.
19 It is not necessary for the parties to introduce every document
obtained from an Internet search especially when it includes
duplicative and irrelevant materials. As Judge Rich commented in
In re Societe Generale des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987): “It is indeed
remarkable to see the thoroughness with which NEXIS can
regurgitate a place name casually mentioned in the news.” The
same can be said for the ability of Internet search engines. See
also Blue Man Productions Inc. v. Tarman, 75 USPQ2d 1811, 1817 -
1819 (TTAB 2005), rev’d on other grounds, Civil Action No. 05-
2037 (D.D.C. April 3, 2008)(“when unacceptable material,
duplicative material, and material with no real probative value
is removed, the amount of evidence showing recognition of
Opposition Nos. 91176445
22
relevant to determining a particular issue, such as whether
a mark is merely descriptive. This will ensure that any

opposer’s mark is far less than the eleven-page listing in
opposer’s notice of reliance would lead one to expect”).
Opposition Nos. 91176445
23
adverse party has been fairly apprised of the evidence it
must rebut and the issue for which it was introduced.
Furthermore, if the propounding party introduces the
same document to support more than one element of a claim or
defense, or more than one relevant fact, the propounding
party should indicate the specific element or fact supported
by the document in a group of documents. For example, if
printed materials or Internet web pages introduced through a
notice of reliance are submitted to show the similarity of
the products, the similarity of the channels of trade, and
the strength of the mark, the propounding party should
identify which of the documents or web pages support each
element or fact (e.g., plaintiff’s exhibits 1-10 demonstrate
the similarity of the products, plaintiff’s exhibits 3-5 and
11-15 demonstrate the similarity of the channels of trade,
and plaintiff’s exhibits 7-8, 16 and 16-30 demonstrate the
strength of plaintiff’s mark). However, once a document is
admitted into evidence, it may be relied on by any adverse
party and considered by the Board for any relevant purpose.
Anheuser-Busch, Inc. v. Major Mud & Chemical Co., Inc., 221
USPQ 1191, 1192 n.7 (TTAB 1984). That is, once evidence is
introduced through a notice of reliance, it is “entirely
proper” for any party “to argue the probative effect” of
such evidence. Beecham Inc. v. Helene Curtis Industries,
Opposition Nos. 91176445
24
Inc., 189 USPQ 647, 647 (TTAB 1976). See also Trademark
Rule 2.120(j)(7), 37 CFR § 2.120(j)(7).
The failure to properly “indicate generally the
relevance of the material being offered,” as such an
indication has been described herein, is an evidentiary
defect that can be cured by the propounding party as soon as
it is raised by any adverse party, without reopening the
testimony period of the propounding party. If the adverse
party believes that the propounding party has not met the
requirement to “indicate generally the relevance of the
material being offered,” the adverse party must lodge an
objection before the opening of the next testimony period
following that in which the material was offered into the
record, or risk a finding that any objection on this basis
has been waived.
Even if an adverse party fails to lodge a timely
objection, the Board may sua sponte decline to consider the
proffered evidence if the notice of reliance does not
specify the relevance of the materials.
Finally, we emphasize two points regarding this
evidence. First, even if a party submits a proper notice of
reliance detailing generally the relevance of the material
being offered, it may nonetheless be objectionable under
Fed.R.Evid. 403 on the ground that it constitutes a
“needless presentation of cumulative evidence.” Second, the
Opposition Nos. 91176445
25
documents have little probative value. They are admissible
only to show what has been printed, not the truth of what
has been printed.
In its notice of reliance, opposer explains that “the
attached exhibits [Nos. 5-40] submitted with this Notice of
Reliance are relevant to the similarity of Opposer’s and
Applicant’s respective marks; the issues of the strength and
notoriety of Opposer’s Marks; the nature of, applications,
as well as the channels of trade and customers, for
Opposer’s goods as set forth in Opposer’s registrations.”
Under the practice identified above, opposer’s notice of
reliance would not be acceptable because opposer submitted
the documents to prove three likelihood of confusion
elements, but did not associate each document or group of
documents with a specific likelihood of confusion factor.
Nevertheless, because opposer’s Internet evidence is not
needlessly cumulative, we do not out-of-hand reject the
notice of reliance.
With the exception of opposer’s exhibit Nos. 7, 16, 18,
30, 31 and 36, the documents introduced in opposer’s second
notice of reliance in accordance with Trademark Rule
2.122(e) are admitted into evidence. The specific exhibits
noted above are not admissible into evidence in accordance
with Trademark Rule 2.122(e) because there is no date on the
face of the documents and there is no URL. Thus, the
Opposition Nos. 91176445
26
documents have not been authenticated for purposes of
submission by notice of reliance, nor have they been
authenticated by testimony. We also note that exhibit Nos.
30 and 31 are essentially the same document.
Also, exhibit Nos. 5 and 8-10 are admissible as copies
of official records. Fed.R.Evid. 902(5).
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
testimony and evidence identified below.
A. Opposer’s evidence.
1. A notice of reliance on certified copies of
opposer’s pleaded registrations showing the current status
and title of the registrations.
2. A notice of reliance on dictionary definitions,
official records, printed publications, and Internet web
pages filed in accordance with Trademark Rule 2.122(e). See
the discussion supra.
3. A notice of reliance on certain of applicant’s
discovery responses.
4. A notice of reliance on a certified copy of
opposer’s Registration No. 2700224 for the mark DEER-OFF
showing the current status and title of the registration.
See the discussion supra.
Opposition Nos. 91176445
27
5. A notice of reliance on opposer’s response to
applicant’s interrogatory No. 18 and the documents
identified therein. Opposer asserts that applicant did not
submit opposer’s entire response and that it has therefore
submitted the entire response which in fairness should be
considered so what applicant proffered is not misleading.
Trademark Rule 2.120(j)(4).
B. Applicant’s evidence.
Applicant filed a notice of reliance on the following
items:
1. Opposer’s objections and responses to applicant’s
first set of requests for admission.
2. Opposer’s objections and responses to applicant’s
first set of interrogatories, including four documents
produced in response to interrogatory No. 18.
3. Copies of sixteen registrations that include the
suffix “B GON” or “Be-Gone” owned by applicant showing the
current status and title of the registrations.
4. Copies of ten third-party registrations for deer
repellants containing the word “Deer” as part of the mark.
5. A copy of applicant’s previous application for the
mark DEER-B-GON, abandoned for failure to file a statement
of use, to show that opposer failed to object to the
proposed use of the mark.

Opposition Nos. 91176445
28
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and the products identified in the registrations.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s marks. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
Opposition Nos. 91176445
29
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
Opposition Nos. 91176445
30
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposer contends that its DEER AWAY trademarks “and
products are widely known, and have achieved broad
recognition” as shown by the favorable publicity and
accolades the marks have received.20 Specifically, opposer
is referring to the following publicity and accolades:
1. A March 1, 2005 press release touting DEER AWAY as
“best value among all repellants”;21
2. A November 1, 2006 press release announcing that
opposer’s DEER AWAY and other animal repellant products
“were honored with the first place in the annual 2006
Innovation Awards from Home Improvement Executive, the
magazine geared to executive level readers in the home
improvement industry.”22
3. The USDA National Wildlife Research Center noted
that DEER AWAY “has been effective in several trials
conducted by the Olympia Field Station.”23

20 Opposer’s Brief, pp. 9-10.
21 Opposer’s fifth notice of reliance.
22 Id.
23 Opposer’s second notice of reliance, Exhibit 5.
Opposition Nos. 91176445
31
4. A report from the University of Missouri,
Controlling Deer Damage in Missouri, stating that “[DEER
AWAY has been reported to be 85 to 100 percent effective in
field studies.”24 See also a report from the University of
Nebraska, Managing Deer Damage in Nebraska (reported to be
85 to 100 percent effective);25 a report from Cornell
University, Reducing Deer Damage to Home Gardens and
Landscape Plantings (“reported to be >85% effective”).26
5. The fact that DEER AWAY was referenced in many
state agency and university studies.27
The documents are effective to show that DEER AWAY has
been referenced in governmental studies and university
sponsored articles, studies or reports, as well as two press
releases, and the product has been reported to be effective.
We cannot infer that the mark is famous or enjoys public
renown because there is no evidence regarding the
circulation of these press releases, reports, studies and/or
articles. Furthermore, DEER AWAY was one of many repellants
identified in the studies and it was in no way singled out
as a particularly well-known product.

24 Id at Exhibit 20.
25 Id at Exhibit 23.
26 Id at Exhibit 40.
27 Opposer’s second notice of reliance.
Opposition Nos. 91176445
32
In addition, applicant introduced opposer’s DEER AWAY
sales figures in both dollars and units sold.28 The
information was designated as confidential and filed under
seal so we may only refer to them in general terms. It is
not clear why applicant chose to introduce opposer’s sales
figures but, in any event, on their face the sales figures
are not so substantial as to warrant an inference of
extensive consumer awareness. Moreover, because there is no
context as to market share, the sales figures have little
probative value in determining whether opposer’s marks are
strong.
On this record, we find that consumers have not been
widely exposed to the mark DEER AWAY and/or DEER AWAY
PROFESSIONAL, or that the marks have otherwise become widely
known and, therefore, can be considered famous marks.
B. The similarity or dissimilarity and nature of the goods
described in the application and registrations.

The goods in the application and opposer’s
registrations are legally identical. Applicant is seeking
to register its mark for “animal repellant used to repel
deer and other ruminant animals and rabbits.” The goods
identified in opposer’s pleaded registrations are “repellant
for repelling deer, other big game and rabbits.”

28 Applicant’s notice of reliance, opposer’s responses to
interrogatory Nos. 11 and 12.
Opposition Nos. 91176445
33
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the goods identified in the application and
opposer’s pleaded registrations are legally identical, we
must presume that the channels of trade and classes of
purchasers are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”).
D. The conditions under which and buyers to whom sales are
made, i.e. “impulse” vs. careful, sophisticated
purchasing.

Opposer’s products are sold through retail stores,
catalog and mail order services and through the Internet to
“anyone who buys or uses animal repellant,” to protect
plants trees and bushes. The products sell in the range of
$9.99 to $109.99, depending on the size or amount.29 Since
there are no restrictions or limitations in applicant’s

29 Opposer’s response to applicant’s interrogatory Nos. 10, 20 and
21.
Opposition Nos. 91176445
34
description of goods, we must presume that they too are sold
to anyone who buys or uses animal repellant, including
ordinary consumers.
However, the purchaser of deer repellant has a
reasonably focused need for the product. Deer repellant is
an unusual product in that it is not purchased by an
individual consumer on a frequent basis. A single purchase
of the product should suffice for a reasonably long period
of time (e.g., a season). Opposer advertises that “Just one
application each season provides year round protection.”30
Opposer’s label states that DEER AWAY “Repels Deer Up to 3
Months.”31 The directions instruct the user to “[a]pply a
light dusting of powder to plants” and “[d]o not retreat new
growth.”32
If the damage done by deer is significant enough to
require action, the purchaser would not indiscriminately
purchase any product purported to be a deer repellant. The
product would be selected after a reasonable investigation
(i.e., the consumer wants a product that will effectively
solve the deer problem while not harming the plants). While
the evidence shows that deer repellant may be inexpensive,

30 Opposer’s fifth notice of reliance, opposer’s response to
applicant’s interrogatory No. 18, Document S-00041. See also
Document S-00103-00106.
31 Id at Documents S-00012, 00014, 00016, 00025, 00028. See also
Document S-00032, 00040, 0043, 00049.
32 Id at S-00020, 00022, 00031.
Opposition Nos. 91176445
35
we are not convinced that consumers will exercise a low
degree of care when purchasing the product. In fact, the
problem of protecting plants and shrubs from deer is
significant enough to warrant numerous governmental and
university studies.
The evidence of record does not support opposer’s
contention that because deer repellant is sold at retail as
an “off the shelf” product that consumers will exercise a
low degree of care. Opposer has not met its burden of
showing that this factor weighs in its favor.
E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are legally
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Opposition Nos. 91176445
36
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007).
However, the similarity of the marks in one respect
does not automatically mean that the marks will be found to
be likely to cause confusion even if the goods are
identical.
It should be noted that similarity of
the marks in one respect – sight, sound,
or meaning – will not automatically
result in a finding of likelihood of
confusion even if the goods are
identical or closely related. Rather,
the rule is that taking into account all
of the relevant facts of a particular
case, similarity as to one factor
(sight, sound, or meaning) alone “may be
sufficient to support a holding that the
marks are confusingly similar.” Trak
Inc. v. Traq Inc., 212 USPQ 846, 850
(TTAB 1981)(emphasis added). To the
extent that the above cited statements
from General Foods Corp. v. Wisconsin
Bottling, Inc. [190 USPQ 43, 45 (TTAB
1976)] and In re Mack [197 USPQ 755, 757
(TTAB 1977)] suggest that a finding of
similarity as to sight, sound or meaning
automatically results in a finding of
likelihood of confusion when the goods
are identical or closely related, said
statements are hereby clarified.

In re Lamson Oil Co., 6 USPQ2d at 1042 n. 4 (emphasis in the
original).
Applicant’s mark DEER-B-GON is similar to opposer’s
marks DEER AWAY and DEER AWAY PROFESSIONAL in that they all
Opposition Nos. 91176445
37
start with the word “Deer” and they engender the commercial
impression of getting rid of deer. However, since getting
rid of deer is the purpose of the parties’ deer repellant,
the marks are highly suggestive. The fact that the marks
have a similar highly suggestive meaning is insufficient to
support a likelihood of confusion finding where, as here,
the marks otherwise differ in appearance and sound. Calgon
Corp. v. John H. Breck, Inc., 160 USPQ 343, 344 (TTAB 1968).
The word “Deer” has no source-indicating significance
in the marks at issue because the word “Deer” describes the
subject that the product eliminates. While the marks must
be compared in their entireties when analyzing their
similarity or dissimilarity, there is nothing improper in
stating that for rational reasons, more or less weight has
been given to a particular feature of a mark. In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). Thus, in comparing the marks, overall
DEER-B-GON and DEER AWAY are not similar in appearance or
sound because B-GON and AWAY look and sound different.
The nature of the marks in this case are analogous to
the marks SURE-FIT for slip covers and RITE-FIT for drapes
and slip covers in Sure-Fit Products Company v. Saltzson
Drapery Company, 254 F.2d 158, 117 USPQ 295, 296 (CCPA
1958).
In reaching our decision [to dismiss the
opposition] we have been most strongly
Opposition Nos. 91176445
38
influenced by the fact that the marks in
issue, “Sure-Fit” and “Rite-Fit,” are
the weakest possible type of mark. The
word “Fit,” aside from the third-party
registrations in evidence, is eminently
suitable for use in connection with
goods such as ready-made slip covers,
where proper fit is of the utmost
importance. We need not consider third-
party registrations to recognize that
the word is often used in connection
with the sale of such goods. The word
is distinctly descriptive of a
characteristic of the merchandise in
connection with which it is used.
Appellant's use of such phrases in its
advertising material as “for perfect,
lasting fit,” “for triple-sure fit,”
“smooth, custom-like fit,” “a super-fit
feature,” “fits chairs of this type,”
“to make smooth fit triple-sure,”
“insures proper fit” and “this cover
fits separate-cushion Cogswells,” is
indicative of this fact.

The prefixes “Rite” and “Sure,” when
added to the suffix “Fit,” do little, of
course, to remove the terms from the
descriptive category. “Rite-Fit” is an
obvious misspelling of “Right-Fit” and
is clearly descriptive of a function of
the goods with which the words are used.
And though appellant has obtained a
registration for this mark on the
principal register as a secondary
meaning mark, there is nothing in the
record to indicate that this mark is not
still in the category of a weak mark.

Sure-Fit Products Company v. Saltzson Drapery Company, 117
USPQ at 296.
In comparing the marks, in view of their highly
suggestive nature, we find that the differences in their
sight and sound outweigh the similarity in the meaning and
Opposition Nos. 91176445
39
commercial impression such that consumers encountering the
marks are not likely to be confused.
F. Balancing the factors.
Having carefully considered the parties’ marks in their
entireties, and in light of the evidence adduced herein, we
find that applicant’s mark DEER-B-GON for “animal repellant
used to repel deer and other ruminant animals and rabbits”
is not likely to cause confusion with opposer’s marks DEER
AWAY and DEER AWAY PROFESSIONAL for “repellant for repelling
deer, other big game and rabbits.” We are not convinced
otherwise by the fact that the goods are legally identical
and the channels of trade are the same. First, we note our
conclusion that opposer has not established that consumers
will purchase the involved products on impulse or without
care. In fact, the parties’ deer repellant products are for
a very specific purpose and purchasers will be particular
about purchasing a product that suits this purpose.
Moreover, as indicated above, opposer’s DEER AWAY marks are
highly suggestive and, as we have found above, sufficiently
different from applicant’s highly suggestive mark so as to
be distinguishable. Suggestive marks, in general, are not
entitled to the same scope of protection as arbitrary marks.
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), quoting
Sure-Fit Products Co. v. Saltzson Drapery Co., 117 USPQ at
Opposition Nos. 91176445
40
296 (“where a party chooses a trademark which is inherently
weak, he will not enjoy the wide latitude of protection
afforded the owners of strong trademarks. Where a party
uses a weak mark, his competitors may come closer to his
mark than would be the case with a strong mark without
violating his rights”).
Decision: The opposition is dismissed.