Spot On Pet, LLC

Trademark Trial and Appeal Board

Sep 4, 2018

No. 87221108 (T.T.A.B. Sep. 4, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 4, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Spot On Pet, LLC
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Serial No. 87221108
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Sang N. Dang of Fortis LLP,
for Spot On Pet, LLC.
Jonathon Schlegelmilch, Trademark Examining Attorney, Law Office 108,
Steven Berk, Managing Attorney.
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Before Bergsman, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Spot On Pet, LLC (“Applicant”) seeks registration on the Principal Register of the
mark SPOT ON in standard characters for (as amended) “edible items and supplies
for pets, namely, dietary supplements for pets, medicated pet shampoos and
conditioners,” in International Class 5, and “edible items and supplies for pets,
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namely, pet foods, edible pet treats, edible chews for animals, digestible chewing
bones for dogs,” in International Class 31.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
in both classes under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that it so resembles the following registered marks, owned by different
registrants, as to be likely, when used on or in connection with Applicant’s goods, to
cause confusion, to cause mistake, or to deceive:
1.

for “pet clothing, leashes, collars, and harnesses for pets,” in International
Class 18 and for “beds for household pets,” in International Class 20;2
2. SPOT ON in standard characters for “pet stain removers; odor removers for
pets,” in International Class 3;3 and
3. SPOT ON in typed form for “flea and tick repellant for domestic pets,” in
International Class 5.4

1 Application Serial No. 87221108 was filed on October 31, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
2 Registration No. 4315791 was issued on August 9, 2013. The registrant has disclaimed the
exclusive right to use “DOG” apart from the mark as shown.
3 Registration No. 4141917 was issued on May 15, 2012 and was maintained through the
filing a declaration of continuing use under Section 8 of the Trademark Act, 15 U.S.C. § 1058.
4 Registration No. 2300516 issued on December 14, 1999 and was last renewed on November
15, 2009. Standard character marks were known as “typed” marks until November 2003,
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When the Examining Attorney made the refusal final, Applicant appealed. Applicant
and the Examining Attorney have filed briefs. We affirm the refusal to register.
I. Record on Appeal
The evidence includes use-based, third-party registrations of marks for one or
more of the goods identified in the application, and one or more of the goods identified
in the cited registrations;5 and pages from the petsmart.com website on which one or
more of the goods identified in the application, and one or more of the goods identified
in the cited registrations, are offered under the same mark.6
II. Analysis of Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is record evidence or argument. See, e.g., M2 Software, Inc. v. M2

when Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term “typed
drawing” with “standard character” drawing. A typed mark is the legal equivalent of a
standard character mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed.
Cir. 2012).
5 February 13, 2017 Office Action at 9-48.
6 August 31, 2017 Office Action at 2-97.
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Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).
Two key factors in every § 2(d) case are the similarity of the marks and the
similarity of the goods or services, because 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.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Here, the Examining Attorney also
addresses the third du Pont factor regarding the channels of trade for the subject
goods, while Applicant also addresses the co-existence of the three cited marks among
themselves.
We will confine our analysis to the SPOT ON word marks shown in Registration
Nos. 4141917 and 2300516. If we find a likelihood of confusion as to either of these
marks, we need not find it as to the composite word-and-design mark shown in
Registration No. 4315791; conversely, if we do not find a likelihood of confusion as to
the word marks, we would not find it as to the composite mark. See In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Similarity or Dissimilarity of the Marks
The first du Pont factor considers “‘the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression.’”
Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
“Similarity in any one of these elements may be sufficient to find the marks
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confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (quotation omitted). “The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks.” In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). The evidence
reveals that the typical consumers of Applicant’s and the registrants’ goods are pet
owners.
Applicant’s mark and the marks shown in cited Registration Nos. 4141917 and
2300516 are identical in sound, appearance, connotation and overall commercial
impression. The identity of these marks “weighs heavily in favor of a finding of a
likelihood of confusion.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1471 (TTAB 2016); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d
1744, 1748 (Fed. Cir. 2017); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1204 (Fed. Cir. 2003).
B. The Similarity or Dissimilarity of the Goods
This du Pont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
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(Fed. Cir. 2014); see also Octocom Sys., Inc. v. Houston Computs. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The identified goods need not be
identical or even competitive to find a likelihood of confusion. See, e.g., On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000). “[L]ikelihood of confusion can be found ‘if the respective goods are related in
some manner and/or if the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that they emanate from the same source.’”
Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007)).
Here, because the applied-for mark is identical to the marks shown in cited
Registration Nos. 4141917 and 2300516, “the degree of similarity between the goods
that is required to support a likelihood of confusion declines.” In re i.am.symbolic, llc,
116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed.
Cir. 2017) (citation omitted). “It is only necessary that there be a ‘viable relationship
between the goods’ to support a finding of likelihood of confusion.” Id. (quoting In re
Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009)).
The goods identified in the application are “edible items and supplies for pets,
namely, dietary supplements for pets, medicated pet shampoos and conditioners,”
and “edible items and supplies for pets, namely, pet foods, edible pet treats, edible
chews for animals, digestible chewing bones for dogs.” The goods identified in the two
cited registrations are “pet stain removers; odor removers for pets” and “flea and tick
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repellant for domestic pets,” respectively. By their nature, all of these goods are used
by pet owners in caring for their pets.
Moreover, the Examining Attorney made of record eight use-based, third-party
registrations of marks for one or more of the goods identified in the application, and
one or more of the goods identified in the cited registrations:

6 TTABVUE 10.7 The Examining Attorney also made of record pages from Pet
Smart’s website (petsmart.com), showing the sale, under the same mark, of one or
more of the goods identified in the application, and one or more of the goods identified
in the cited registrations.8 The following are examples:

7 February 13, 2017 Office Action at 9-26, 43-48.
8 August 31, 2017 Office Action at 2-15, 24-31, 56-75, 87-93.
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Serial No. 87221108
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Applicant does not address the Examining Attorney’s evidence, but simply argues
that “[d]ue to differences in the types of goods and/or in the classifications,” consumer
confusion is highly unlikely. 4 TTABVUE 4, 5. These arguments are unavailing.
The fact that some of the goods in the application are classified in International
Class 31, while the goods in the two cited registrations are classified in International
Classes 3 and 5, has no bearing on the issue of whether they are related. “The
classification system was established for the convenience of the [Patent and
Trademark] Office rather than to indicate that goods in the same class are necessarily
related or that classification in different classes indicates that they are not related.”
Nat’l Football League v. Jasper All. Corp., 16 USPQ2d 1212, 1216 (TTAB 1990) (citing
In re Leon Shaffer Golnick Advert., Inc., 185 USPQ 242 (TTAB 1974)); see also Jean
Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (stating
that classification is for the convenience of the Office and is “wholly irrelevant to the
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issue of registrability under section 1052(d), which makes no reference to
classification”).
Similarly, the truism that the subject goods are different does not establish that
there is no likelihood of confusion because, as noted above, goods need not be identical
or even competitive for a likelihood of confusion to exist. On-line Careline, 56 USPQ2d
at 1475. Applicant’s and the registrants’ goods are used in different aspects of pet
care. The Examining Attorney’s evidence establishes at least a “viable relationship”
between these types of pet care goods because pet owners would readily conclude that
Applicant’s goods and the registrants’ goods emanate from the same source when they
are sold under the identical SPOT ON mark. The second du Pont factor supports a
finding of a likelihood of confusion.
C. The Channels of Trade for the Goods
The third du Pont factor is the “similarity or dissimilarity of established, likely-
to-continue trade channels.” du Pont, 177 USPQ at 567. Applicant does not address
this factor. We agree with the Examining Attorney that the record shows “that the
parties’ marketing and trade channels are the same.” 6 TTABVUE 12.9 The PetSmart
website shows that the identified pet care goods are sold through at least one
significant overlapping channel of trade, pet product retailers,10 to an identical class

9 The Examining Attorney argues that “[a]bsent restrictions in an application or registration,
the identified goods are presumed to travel in the same channels of trade to the same classes
of purchasers,” 6 TTABVUE 11-12, citing Viterra, 101 USPQ2d at 1908, but the presumption
discussed in Viterra applies when the goods are identical, which is not the case here.
10 We infer from the Internet evidence that the displayed pet products are also available in
the Pet Smart brick-and-mortar retail outlets.
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of pet owners. The third du Pont factor thus supports a finding of a likelihood of
confusion.
D. Other du Pont Factors
Applicant argues that the co-existence of the three cited registered marks, which
are owned by different registrants, means that the applied-for mark can also co-exist
with each of the cited marks. 4 TTABVUE 4-6. Applicant does not associate this
argument with any particular du Pont factor, but the argument invokes the sixth,
eighth, and twelfth factors, the “number and nature of similar marks in use on similar
goods,” the “length of time during and conditions under which there has been
concurrent use without evidence of actual confusion,” and the “extent of potential
confusion, i.e., whether de minimis or substantial.” i.am.symbolic, 123 USPQ2d at
1751-52 (citing du Pont, 177 USPQ at 567, Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129 (Fed. Cir. 2015), and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671 (Fed. Cir. 2015)). The Examining Attorney responds that each
application must be evaluated on its own merits and that prior actions by other
examining attorneys are not binding on the Patent and Trademark Office or the
Board. 6 TTABVUE 9.
The Examining Attorney is correct that neither the Patent and Trademark Office
nor the Board is bound by the prior decisions to register SPOT ON-formative marks.
See, e.g., In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793
(TTAB 2017). At the same time, however, the co-existence of the two identical cited
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word marks between themselves, and with the slightly different composite word-and-
design mark, is a relevant consideration, see id., but it is only one element in the
balancing of all pertinent du Pont factors. Given our “findings that [Applicant’s] mark
and the registrants’ marks are identical word marks for the same or related goods
with identical trade channels and purchasers,” and the “strength of these DuPont
factors and the limited evidence of third-party use,” i.am.symbolic, 123 USPQ2d at
1752, we conclude that the co-existence of the cited registered marks “does not
outweigh the other du Pont factors in this case.” USA Warriors Ice Hockey Program,
122 USPQ2d at 1793.
E. Conclusion
Applicant’s mark is identical to the two cited word marks, and the subject goods
are related and are offered through the same channels of trade to the same classes of
customers. Although the three cited marks have apparently co-existed among
themselves, given the other du Pont factors, it remains likely that consumers of
Applicant’s SPOT ON pet care products would believe mistakenly that those goods
originate with, or are sponsored or authorized by, the owners of the cited SPOT ON
word marks for pet care products.
Decision: The refusal to register is affirmed.