Wagz, Inc.

Trademark Trial and Appeal Board

Apr 17, 2020

87554773 (T.T.A.B. Apr. 17, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wagz, Inc.
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Serial No. 87554773
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Emily A. Danchuk of Ascentage Law, PLLC,
for Wagz, Inc.
Alexandra Suarez Liebl, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Shaw, Heasley, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Wagz, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
shown below

Serial No. 87554773
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for various pet-related goods in International Classes 6, 7, 9, 14, 18, 20, 21, 25, 28,
and 31.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with respect to the
goods identified in the application as “Automated pet appliances, namely, metal pet
doors,” in International Class 6; “Automated pet appliances, namely, feeders and
waterers,” in International Class 7; “Dog collars; Dog leashes,” in International Class
18; “Dog beds,” in International Class 20; “Pet feeding and drinking bowls,” in
International Class 21; “Dog toys,” in International Class 28; and “Dog food; Edible
dog treats; Pet food,” in International Class 31. No refusal was made as to Classes 9,
14, and 25.
The Examining Attorney bases the refusal to register on a likelihood of confusion
with three registered marks. The first is the standard character mark WAGZ for,
inter alia, “Retail and online retail pet store services,” in International Class 35.2 The
other two are the composite word-and-design marks shown below, the first of which
is owned by the registrant of the standard character WAGZ mark:

1 Application Serial No. 87554773 was filed on August 3, 2017 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. Applicant describes its mark as “the lower case word ‘wagz’ in
a stylized font with a stylized face of a dog integrated into the ‘w’ consisting of a stylized line
above the ‘w’ portraying the outline of the top of the dog’s head and two ears consisting of two
triangular peaks pointing upward in such line, each consisting of a vertical line as the left
side of the triangle and a downward curving line as the right side, two downward curved lines
indicating eyes and a semi-circle with the convex side facing upwards indicating a nose
situated within the ‘w’ and another upward curving line indicating the outline of the dog’s
bottom jaw below the center of the ‘w.’”
2 Registration No. 5368656 issued on January 2, 2018.
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for “Retail pet stores,” in International Class 35;3 and

for “Deodorizers for pets; Non-medicated grooming preparations for dogs, namely,
shampoos, conditioners, wipes, and colognes; Pet care kits comprising shampoo,
conditioner, body spray; Pet fragrances; Pet shampoo and conditioner; Pet stain
removers,” in International Class 3, and “Dog biscuits; Edible chews for dogs; Pet
food; Pet treats,” in International Class 31.4
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. Applicant and the Examining Attorney
have filed briefs.5 We affirm the refusal to register.

3 Registration No. 3879044 issued on November 23, 2010 and has been renewed.
4 Registration No. 4443234 issued on December 3, 2013. A Section 8 declaration of continuing
use of the mark has not been filed as of the date of this opinion, but the registration remains
in effect because time remains within the statutory grace period to file the declaration.
5 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear. Applicant’s request for an extension of time to file a reply brief, 13 TTABVUE, is
denied as moot because Applicant did not file a reply brief within the period of the requested
extension. Cf. In re Dell, Inc., 71 USPQ2d 1725, 1726 n.1 (TTAB 2004) (retroactively granting
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I. Record on Appeal6
The record on appeal includes:
• Webpages of pet product retailers, made of record by the Examining
Attorney;7
• Pages from the USPTO’s Trademark Electronic Search System (“TESS”)
database regarding third-party registrations of marks containing the words
“wag” or “wags,” or containing words including “wag,” for pet- and animal-
related goods and services, made of record by Applicant;8
• Webpages displaying pet products sold under or in connection with Wag-
and Wags- formative marks, made of record by Applicant;9
• The results of Google search engine searches using the search terms “wags,”
“wag dog,” “wags dog,” and “wags pet,”10 made of record by Applicant; and
• Pages from Applicant’s website showing use of the applied-for mark, made
of record by Applicant.11

request for extension of time to file reply brief made when the applicant filed its untimely
reply brief).
6 Citations in this opinion to the application record, including the request for reconsideration
and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
7 November 7, 2017 Office Action at TSDR 15-27; May 30, 2018 Office Action at TSDR 14-20;
December 21, 2018 Final Office Action at TSDR 2-5.
8 May 7, 2018 Response to Office Action at TSDR 6-59; June 21, 2019 Request for
Reconsideration at TSDR 6-315. Applicant included the three cited registrations in its
submissions. Id. at TSDR 59-60, 221-22, 299-300.
9 June 21, 2019 Request for Reconsideration at TSDR 316-98.
10 Id. at TSDR 399-429.
11 Id. at TSDR 430-438.
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II. Analysis of Refusal
Section 2(d) of the Trademark Act prohibits 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 Section 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. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each DuPont factor for which there is
evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019).
We will confine our DuPont analysis to the cited standard character mark WAGZ
for “retail and online retail pet store services” in Registration No. 5368656 (the “’656
Registration”). If we find a likelihood of confusion as to that mark and those services,
we need not find it as to the composite word-and-design marks. Conversely, if we do
not find a likelihood of confusion as to the standard character mark, we would not
find it as to the composite marks. See In re I-Coat Co., 126 USPQ2d 1730, 1734 (TTAB
2018) (citing In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
Two key DuPont factors in every Section 2(d) case are the first two factors,
regarding the similarity or dissimilarity of the marks and 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
Serial No. 87554773
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24, 29 (CCPA 1976). Applicant acknowledges that the “first two DuPont factors -
similarity of the marks and relatedness of the goods/services – are always
indispensable,” 10 TTABVUE 11, but discusses only the first of these two factors in
its brief. Id. at 14-15, 19. Applicant devotes one sentence to the fourth DuPont factor,
the “conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs.
careful, sophisticated purchasing,” DuPont, 177 USPQ at 567, 10 TTABVUE 11, and
focuses primarily on the sixth DuPont factor, which “considers ‘[t]he number and
nature of similar marks in use on similar goods.’” Omaha Steaks Int’l, Inc. v. Greater
Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting
DuPont, 177 USPQ at 567). 10 TTABVUE 12-14, 16-19.
A. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177
USPQ at 567). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB
2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., (No.
18-2236) (Fed. Cir. Sept. 13, 2019).
The proper test regarding similarity “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
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to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks and citation omitted)). “The proper perspective on which the
analysis must focus is on the recollection of the average customer, who retains a
general rather than specific impression of marks.” In re i.am.symbolic, llc, 127
USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).
Applicant focuses solely on the appearance of its mark, 10 TTABVUE 14-15, 19,
thus not disputing that its mark is similar—in fact, identical— in sound and meaning
to the mark shown in the ’656 Registration. Applicant’s mark, which it describes as
“the lower case word ‘wagz’ in a stylized font,”12 is identical in sound to the mark
WAGZ in the ’656 Registration when the marks are spoken. With respect to meaning,
Applicant acknowledges that the word “wag” is “used to refer to a pet’s tail” in the
context of the pet industry. 10 TTABVUE 18. Applicant’s composite “wagz” mark and
the WAGZ mark in the ’656 Registration are both phonetic equivalents of “wags,” the
plural form or third-person present tense form of the word “wag.” As such, both marks
have identical meanings because in the context of pet products and pet store services,
both connote the rapid motions of a pet’s tail in a gesture of happiness, satisfaction,
or excitement. We find that the marks are identical in sound, connotation, and
commercial impression.

12 August 3, 2017 Application at TSDR 1.
Serial No. 87554773
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With respect to appearance, Applicant acknowledges that “[g]enerally, in a
likelihood of confusion analysis, where marks consist of both words and designs, the
word portion of the mark will be given greater weight.” Id. at 14 (citing In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181 (TTAB 2018)). Applicant argues, however, that
“the Federal Circuit has stated that ‘[t]here is no general rule as to whether letters
or designs will dominate in composite marks; nor is the dominance of letters or design
dispositive of the issue.’” Id. at 14-15 (quoting In re Electrolyte Labs., Inc., 913 F.2d
930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)). According to Applicant, “there are cases
where, due to various factors, the design elements of two respective marks are more
likely to be considered by consumers as the distinguishing feature of the marks, and
thus the design elements of the marks are more weighted.” Id. at 15 (citing Ferro
Corp. v. Ronco Labs., 356 F.2d 122, 148 USPQ 497 (CCPA 1966), In re Covalinski,
113 USPQ2d 1166 (TTAB 2014), and In re White Rock Distilleries, Inc., 92 USPQ2d
1282 (TTAB 2009)).
Applicant’s mark is shown again below:

Applicant argues that its “mark is comprised of a unique design element, [and] it is
proper to place a stronger emphasis on Applicant’s design and to accordingly
determine that Applicant’s mark is distinguishable from all other WAG- marks.” Id.
at 19. Applicant argues that its mark
will most likely be met by the consumer visually rather
than aurally (such as via its website, trade show signage,
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labels for pet food, and labeling and packaging for pet
supplies and appliances), and consumers are much more
likely to be able to distinguish the source of the goods by
visualizing the marks, rather than hearing the marks
spoken.
Id.
The Examining Attorney responds that “the design elements in applicant’s mark
do not create a unique commercial impression from that of the registrants’ marks.”
12 TTABVUE 5. She invokes the general principle acknowledged by Applicant that
“[w]hen evaluating a composite mark consisting of words and a design, the word
portion in normally accorded greater weight because it is likely to make a greater
impression upon purchasers, be remembered by them, and be used by them to . . .
request the goods and services.” Id. at 6. We agree with the Examining Attorney that
the general principle applies to Applicant’s mark. See, e.g., In re Viterra, Inc., 671
F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012).
Applicant describes its mark as “the lower case word ‘wagz’ in a stylized font,”
with “a stylized face of a dog integrated into the ‘w.’”13 In that respect, the comparison
of the marks here is similar in nature to that at issue in Viterra, in which the Federal
Circuit discussed the relative weight to be given to the elements of composite word-
and-design marks. We display below the cited mark in Viterra:

13 Id.
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In Viterra, the Board had found that “the literal portion of the X-Seed Mark (i.e., the
words ‘X-Seed’) formed the dominant portion of the registrant’s mark,” Viterra, 101
USPQ2d at 1911, for purposes of its comparison to the applicant’s standard character
mark XCEED. The applicant challenged that finding on appeal, arguing that “the
dominant portion of the X-Seed Mark actually is the stylized letter ‘X’ and cannot
include ‘-Seed,’ particularly because the registrant uses a hyphen to separate ‘X’ from
‘Seed’ and disclaimed the term ‘Seed.’” Id.
The Federal Circuit rejected that argument because
the design feature of the X-Seed Mark is not entirely
distinct from the literal portion of the mark; rather, the
color and design features are incorporated in the letter “X”
and are covered in part by the “-Seed” portion of the mark.
This is not a case, therefore, where a larger design is
separate and independent from the literal features of the
mark. The design itself is a stylized letter that overlaps
with, and is covered by, other literal portions of the mark.
Accordingly, the Board's determination that the entire
literal portion “X-Seed”’ is the dominant portion of the
mark, and not just the stylized “X,” is supported by
substantial evidence.
Id. Here, as in Viterra, the design is integrated into the word “wagz” that comprises
Applicant’s mark. The general principle set forth in Viterra that “the verbal portion
of a word and design mark likely will be the dominant portion,” id., applies to
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Applicant’s mark, rather than the exceptions to that principle discussed in the cases
cited by Applicant.14
The rationale for the general principle is that “‘[t]he verbal portion of the mark is
the one most likely to indicate the origin of the goods to which it is affixed.’” Id.
(quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).
The Viterra court explained that “the literal component of brand names likely will
appear alone when used in text and will be spoken when requested by consumers.”
Id. Applicant’s website at wagz.com makes use of the word “Wagz” alone in multiple
places, including at the top of each page and in text, to identify Applicant and its
products, and to enable consumers to communicate with Applicant for help and
product delivery.15 We display two examples below:

14 The Ferro Corp. and White Rock Distilleries cases cited by Applicant, 10 TTABVUE 15,
involved marks “where a larger design [was] separate and independent from the literal
features of the mark[s].” Viterra, 101 USPQ2d at 1911. In the Covalinski case cited by
Applicant, 10 TTABVUE 15, the Board found that the mark shown below

was “dominated by its design features, particularly the double-letter RR configuration.”
Covalinski, 113 USPQ2d at 1169. The Board held that “these graphic devices serve not only
to draw attention to the RR letters apart from the wording, but also make the letters that
form the ‘a-c-e’ of the word ‘RACEGIRL’ difficult to notice.” Id. at 1168. The design that is
integrated into the letter “w” in Applicant’s mark reinforces the appearance of the mark as
the word “wagz” rather than making the word “difficult to notice.” Id.
15 June 21, 2019 Request for Reconsideration at TSDR 430-438. Applicant’s use of the “™”
symbol with the word “Wagz” in several places indicates that Applicant claims trademark
rights in the word alone.
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16
17
We can infer from such uses that the word “wagz,” rather than the “stylized
face of a dog,” is the element of Applicant’s mark that is “likely to make a greater
impression upon purchasers, to be remembered by them, and to be used by them to
request the goods.” Aquitaine Wine, 126 USPQ2d at 1184. See also CBS, 218 USPQ
at 200 & n.5 (finding that the principle that “the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is affixed” is “particularly
true when a mark appears in textual material, such as catalog descriptions, in which
it is often impossible or impractical to include the design features of the mark,” and
noting that the applicant’s catalog “displays the words ‘Thinker Toys’ without the
light bulb design some fifteen times.”). We find that the word “wagz,” into which the
design of a dog’s face is integrated, should be given greater weight than the design
itself in comparing the marks’ appearance.

16 Id. at TSDR 434.
17 Id. at TSDR 436.
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In making that comparison, because the cited WAGZ “mark is a standard
character mark, we must consider that the literal elements of the mark (the words
and the letters) may be presented in any font style, size or color, including the same
font, size and color as the literal portions of Applicant’s mark,” Aquitaine Wine, 126
USPQ2d at 1186, “because the rights associated with a standard character mark
reside in the wording per se and not in any particular font style, size or color.” Id.
(citing Citigroup Inc. v. Capital City Bank Grp. Inc., 673 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011)). We thus must assume that the standard character WAGZ
mark may be presented as “the lower case word ‘wagz’ in [the] stylized font” described
by Applicant and displayed on Applicant’s website as follows:
18
If the cited WAGZ mark were presented as the “lower case word ‘wagz’” in the
“stylized font” shown in gray above, it would be quite similar in appearance to
Applicant’s mark even though it would not include the design elements depicting “a
stylized face of a dog integrated into the ‘w’.” The “marks ‘must be considered . . . in
light of the fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In
re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting
San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196

18 Id. at TSDR 430. Cf. Citigroup, 98 USPQ2d at 1259 (“illustrations of the mark as actually
used may assist the [Board] in visualizing other forms in which the mark might appear.”).
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USPQ 1, 3 (CCPA 1977)). “There is nothing in the record to persuade us that any of
the differences argued by [Applicant] meaningfully distinguish the appearance of the
respective marks.” Id. Accordingly, we find that the marks are quite similar in
appearance, and identical in sound, connotation, and commercial impression. The
first DuPont factor strongly supports a finding of a likelihood of confusion.
B. Similarity or Dissimilarity of the Goods and Services and the
Channels of Trade
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” while the third
DuPont factor considers “the similarity or dissimilarity of established, likely-to-
continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these
factors is based on the identifications of the goods in the application and the
identification of the services in the ’656 Registration. Id.; Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
It is “not necessary that the goods [and services] be identical or even competitive
to support a finding of a likelihood of confusion.” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
“[L]ikelihood of confusion can be found ‘if the respective goods [and services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.’” Id. (quoting 7-Eleven, 83 USPQ2d at 1724). Goods may be related to services,
and it is “well established that ‘confusion may be likely to occur from the use of the
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same or similar marks for goods, on the one hand, and for services involving those
goods, on the other.’” Detroit Athletic Co., 128 USPQ2d at 1051 (quoting TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1207.01(a)(ii)).
“Apparently conceding the issue, Applicant did not address these du Pont factors
in its brief, so we offer only a brief explanation of our conclusion” on them. In re
Morinaga K.K., 120 USPQ2d 1738, 1740 (TTAB 2016). “We begin with the
identifications of goods and services in the registration and application under
consideration.” In re Country Oven, Inc., 2019 USPQ2d 443903, *5 (TTAB 2019). The
goods are identified in the application as “Automated pet appliances, namely, metal
pet doors” (Class 6); “Automated pet appliances, namely, feeders and waterers” (Class
7); “Dog collars; Dog leashes” (Class 18); “Dog beds” (Class 20); “Pet feeding and
drinking bowls” (Class 21); “Dog toys” (Class 28); and “Dog food; Edible dog treats;
Pet food” (Class 31).19 The services are identified in the ’656 Registration as “retail
and online retail pet store services.”
It is self-evident that “retail pet store[s]” sell pet appliances, pet feeding and
drinking bowls, and pet food, as well as other pet products. See id. (“It is a matter of
common knowledge that retail bakery shops sell bakery products.”). Indeed, selling
pet products is a retail pet store’s raison d’être. The “identification of services [in the

19 We need not consider the relatedness of each good in Classes 7, 18, 21, and 31 in the
application to the services identified in the ’656 Registration. “[I]t is sufficient for finding a
likelihood of confusion if relatedness is established for any item encompassed by the
identification of goods within a particular class in the application.” In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
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’656 Registration] contains no restrictions on the kinds of [pet] products sold,” id., in
the identified “retail pet store[s],” and “‘[i]t is well established that the Board may
not read limitations into an unrestricted registration or application.’” Id. (quoting In
re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017)). Thus,
we must consider the “retail and online retail pet store services” identified in the ’656
Registration “to encompass a broad spectrum of [pet] products that quite obviously
includes goods of the type identified in the [application].” Id. at *5-6 (citing In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988)
(finding that the applicant’s “general merchandise store services” would include the
sale of furniture, the goods identified in the cited registration)). “We find that the
identifications in the application and registration themselves support finding the
goods and services are related.” Id. at *6.
The record confirms the inherent relationship between retail pet stores and pet
products, as it shows that retail pet stores, including online stores, sell pet products
of the sort identified in the involved classes in the application. Applicant itself
functions as an online retail pet store, as it offers multiple pet products for sale
through its website, as well as financing and product support,20 and the PetSmart,21
Petco,22 Petsense,23 and Pet Club24 websites offer an extensive array of pet products,

20June 21, 2019 Request for Reconsideration at TSDR 430-38.
21 May 30, 2018 Office Action at TSDR 14.
22 Id. at TSDR 15.
23 Id. at TSDR 16-17.
24 December 21, 2018 Final Office Action at TSDR 2.
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including pet food, toys, collars and leashes, beds, bowls, feeders, doors, and other
items.
The Federal Circuit has “held that confusion is likely where one party engages in
retail services that sell goods of the type produced by the other party, as here.” Detroit
Athletic Co., 128 USPQ2d at 1051 (citing Hyper Shoppes, 6 USPQ2d at 1026 (finding
similarity between furniture and “general merchandise store services,” and rejecting
the distinction between goods and services as having “little or no legal significance.”)).
Because the owner of the ’656 Registration must be deemed to be “engage[d] in retail
services that sell goods of the type produced by” Applicant, id., the second DuPont
supports a finding of a likelihood of confusion.
There are no restrictions on the channels of trade or classes of consumers for the
involved goods identified in the application. They are thus “presumed to be sold in all
normal channels to all the normal classes of purchasers.” Id. at 1052. Because those
channels include the “retail and online retail pet store[s]” identified in the ’656
Registration, the “trade channels for each mark overlap,” id., and the third DuPont
factor also supports a finding of a likelihood of confusion.
C. Purchasing Conditions
“The fourth DuPont factor considers ‘[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’” Stone
Lion, 110 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567). In Stone Lion, the
Federal Circuit held that “Board precedent requires the decision to be based ‘on the
least sophisticated potential purchasers.’” Id. at 1163 (quoting Gen. Mills, Inc. v. Fage
Serial No. 87554773
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Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on
other grounds, 2014 WL 343267 (TTAB 2014)).
Without specifically invoking the fourth factor, Applicant argues that “since most
of Applicant’s goods are sold for hundreds of dollars, most consumers will carefully
consider their potential purchase and perform further research on Applicant’s
products, thereby noticing the nuances of Applicant’s mark.” 10 TTABVUE 19.
Applicant’s website shows that its goods include “smart” collars, doors, and feeders.25
“Smart” goods are generally “‘highly automated and capable of computing
information.’” In re Cannon Safe, Inc., 116 USPQ2d 1348, 1349 (TTAB 2015) (quoting
In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006), aff’d per curiam, 223 F.
App’x 984 (Fed. Cir. 2007)). The goods identified in Classes 6 and 7 in the application
as “automated pet appliances, namely, metal pet doors” and “automated pet
appliances, namely, feeders and waterers” are “smart” goods, and Applicant’s website
offers the pet doors for $549 and the pet feeders for $249.26 There is no record evidence
regarding the prices charged by other companies for these automated pet appliances,
but we may infer from their general nature and cost that purchasers will exercise a
higher degree of care in purchasing them than in purchasing the other lower-priced
pet products discussed below. See Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14
USPQ2d 1840, 1841 (Fed. Cir. 1990) (“In making purchasing decisions regarding
‘expensive’ goods, the reasonably prudent person standard is elevated to the standard

25 June 21, 2019 Request for Reconsideration at TSDR 430-38.
26 Id. at TSDR 430, 433.
Serial No. 87554773
- 19 -

of the ‘discriminating purchaser.’”) (citation omitted). The fourth DuPont factor
weighs against a finding of a likelihood of confusion as to Applicant’s goods in Classes
6 and 7.
The other goods identified in the application, “Dog collars; Dog leashes,” “Dog
beds,” “Pet feeding and drinking bowls,” “Dog toys, and “Dog food; Edible dog treats,
and Pet food,” contain no limitations as to their nature or price points. As a result,
and notwithstanding Applicant’s offering of a “smart” dog collar for $399,27 we must
presume that those identifications encompass pet products sold at all price points.
See Aquitaine Wine, 126 USPQ2d at 1196 (where the applicant’s and cited registrant’s
identifications of goods were “wine,” the Board “presume[d] that Applicant’s and
Registrant’s wine encompasse[d] inexpensive or moderately-priced wine.”). Applicant
has not shown that these goods are invariably expensive,28 or would be purchased by
their least sophisticated purchasers with anything other than ordinary care. The
fourth DuPont factor is neutral in our analysis of the likelihood of confusion as to the
goods in Classes 18, 20, 21, 28, and 31.
D. The Sixth DuPont Factor
“The Federal Circuit has held that evidence of the extensive registration and use
of a term by others can be powerful evidence of the term’s weakness.” Tao Licensing,

27 Id. at 430.
28 The record shows that these goods are sold at a range of prices, including low ones such as
less than $10 for containers of pet food, less than $10 for pet toys, and less than $15 for
leashes and collars. June 21, 2019 Request for Reconsideration at TSDR 318, 322, 325, 329,
364, 379-80, 412, 418.
Serial No. 87554773
- 20 -

LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017) (citing Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 12015) and Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). “The
purpose of introducing evidence of third-party use is ‘to show that customers have
become so conditioned by a plethora of such similar marks that customers have been
educated to distinguish between different [such] marks on the bases of minute
distinctions,” Omaha Steaks, 128 USPQ2d at 1693 (quoting Palm Bay Imps., 73
USPQ2d at 1694 (internal quotation omitted)), and “to show that a mark is relatively
weak and entitled to only a narrow scope of protection.” Id. (quoting Palm Bay Imps.,
73 USPQ2d at 1693). “[T]hird-party registration evidence that does not equate to
proof of third-party use may bear on conceptual weakness if a term is commonly
registered for similar goods or services.” Tao Licensing, 125 USPQ2d at 1057.
Applicant argues that it “submitted a total of 153 third-party registrations for
WAG-marks for pet-related goods and services,” 10 TTABVUE 16, and that the cited
marks “all exist among a vast sea of over 150 registered WAG-trademarks for pet-
related goods and services, as well as an extensive wave of third-party common law
usage.” Id. at 15. Applicant also argues that all of the cited marks “include the term
‘WAG’ to refer suggestively to the tails of pets and all four trademarks are used in
connection with pet-related goods and services.” Id.
Applicant claims that “the Examining Attorney has staunchly refused to consider
the relevancy of this evidence, asserting insufficiency on various grounds,” id.,
Serial No. 87554773
- 21 -

including because “other word elements were included in those marks (such as
‘WAGZ pet resort’),” id. at 16, and because the evidence did not “show actual use of
the mark under the registrations.” Id. at 16-17. Applicant claims that once evidence
of use of the marks was provided to the Examining Attorney, “she retreated to her
position that the third-party registration [sic] did not show use of ‘WAG-’ alone.” Id.
at 17.
Applicant concludes that all of its “evidence makes it abundantly clear that the
term WAG, when used to refer to a pet’s tail, is extraordinarily popular in the pet
industry and is used to sell an extensive array of pet-focused products and services,”
such that “the term WAG is weak in a trademark capacity.” Id. at 17-18.
The Examining Attorney responds that the “third-party registrations submitted
by the applicant have been considered but found unpersuasive in the likelihood of
confusion analysis for the case at hand.” 12 TTABVUE 6. She argues that “[w]hile
the applicant has included numerous third-party registrations with marks containing
the wording ‘WAG’ in connection with pet related products, the registrations show
use of the term ‘WAG’ in singular form and in combination with other distinguishing
wording and design elements,” and that the “registrations have not shown that the
plural form ‘WAGS’ or phonetic equivalent ‘WAGZ’ alone is weak.” Id.
The Examining Attorney also addresses the specific registrations submitted by
Applicant, arguing that only some of them are for WAG alone and that some are for
unrelated goods and services. Id. at 7. She contends that Applicant “has used the
third party registrations of record to attempt to show that ‘WAG-’ is weak in relation
Serial No. 87554773
- 22 -

to pet products,” but that the registrations “do not make a showing that the plural
form ‘WAGS’ is weak and or that ‘WAGS’ is often used without any other
distinguishing wording.” Id. She argues in the alternative that even if the third-party
uses show that WAG is weak, “weak marks may be barred from registration when
the resemblance to [Registrant’s mark] is striking enough to cause one seeing it to
assume that there is some connection, association or sponsorship between the two.”
Id. at 7-8 (internal quotation and quotation marks omitted). She concludes that
Applicant’s “mark is ‘striking enough’ as to cause consumers to make some connection
to the registrants’ marks” because “Applicant’s mark shares . . . the same wording
with” the ’656 Registration. Id. at 8.
We turn first to Applicant’s registration evidence. Applicant made of record well
over 100 registrations of marks containing “WAG” and covering some sort of pet- or
animal-related goods and services.29 Other than the two cited “Wagz” registrations
that Applicant included, which do “not address the duPont factor of third-party use,”
Max Capital Grp., 93 USPQ2d at 1246, none of the registrations contains the word
“Wagz” that is common to the marks here, and fewer than 20 contain its phonetic
equivalent “Wags.”
Many of the marks combine the word WAG with other elements. Examples include
iWAG; SIMPLY WAG; THE WAG BAG; THE WAG PACK; WAG 4 LIFE; WAG
ATLANTA; WAG AWARE; WAG N’ WOOF; WAG RESORT and design; WASH WAG

29 Applicant submitted a number of the registrations more than once, and some of the
registrations are commonly owned and involve the same or similar marks for various goods
and services.
Serial No. 87554773
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and design; WHERE TAILS GO TO WAG!; WAG N WASH NATURAL FOOD AND
BAKERY and design; THIS IS HOW I WAG; A PLACE THAT’LL MAKE YOUR TAIL
WAG; WAG IT UP!; WAG MORE BARK LESS; PLAYHOUND WORTH EVERY
WAG and design; FASHION JUST GOT SOME WAG IN IT; WAG FASHION and
design; WOBBLE WAG GIGGLE; WAG ON; MAKING A DIFFERENCE, ONE WAG
AT A TIME!; LIVE LOVE WAG; and SOMETHING NEW TO WAG ABOUT.30
A significant number of the marks use WAG to form other words or phrases.
Examples include WAGMASTER; WAGPANTRY; WAGPLATE; WAGWEAR;
WAGGEDY; SWAGGER WAGGER; GET WAGGING and GETWAGGING and
design; WAGGLE VIEW and design; DOGSAWAGGIN’ and design;
WAGGLETOOTH; WAGGING TAILZ and design; THE WAGGLE COMPANY and
design; WAGGY MUTTS; WAG-A-MATIC; WAGKIKI BEACH; WAGTV;
WAGNETIC; WAGGERSDOGWORKS and design; WAGGISH; THE WAGMORE
PET RESORT and design; WAGMORE; NEVER STOP WAGGING; TAILWAGGERS
(stylized); WAGLY; WAGSTER; WAGGIN’ TRAIN; VITAWAG DRIP N’ SIP and
design; WAGGIES BY MAGGIE & FRIENDS and WAGGIES BY MAGGIES &
FRIENDS and design; WAGGLES; WAGTASTIC; SAGGS WAGGIN’ WHEELS;
WAGANDBARK; WAGTOPIA; BIG WAGGLE and design; CAMP WAGGING TAILS
and design; GET WAGGING and design; A TAIL WAGGIN’ GOOD TIME!;
WAGGING TAILS, SMILING FACES; TAIL WAGGIN’ FUN; WAGGIN’ LOVE; TAIL

30 May 7, 2018 Response to Office Action at TSDR 9, 11-12, 15-16, 18, 20, 33-36, 39, 54; June
21, 2019 Request for Reconsideration at TSDR 13-16, 21-28, 43-44, 57-58, 89-90, 97-100, 111-
12, 115-16, 147-48, 159-60, 171-72, 193-94, 195-96, 205-06, 219-20, 235-36.
Serial No. 87554773
- 24 -

WAGGIN’ PETSTOP; WAGALONGS; WAGOLOGIST; WAGSWORTH MANOR PET
RESORT; WAGILICIOUS and design; WAGGING GREEN and design; ZIPPY
WAGMORE; WAGGIN’ TRAIN HAPPY TRAILS TO CHEW; THE WAGGLE BROS
PET RESORT & SPA and design; TAILS R WAGGIN MOBILE PET GROOMING
and design; WAGGERS DOGGIE DAYCARE & TRAINING and design; RESCUE
WAGGIN; WAGGING TALES; WAGBY; WAG-A-TUDE; and WAGGY WALKYS.31
The fact that both groups of these “WAG-” formative marks include “other wording
not present in the involved [Wagz] marks,” I-Coat Co., 126 USPQ2d at 1735, vitiates
their probative value on the issue of whether consumers can distinguish the involved
marks based on any distinctions between them because “none of the [third-party]
marks are as similar to the mark in the cited [WAGZ] registration as is Applicant's
mark.” Id. (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669,
223 USPQ 1281, 1284-85 (Fed. Cir. 1984)). See also Inn at St. John’s, 126 USPQ2d at
1745-46 (citing i.am.symbolic, 123 USPQ2d at 1751).
The third-party registrations of marks containing the word WAGS, the phonetic
equivalent of the word “Wagz” in the involved marks, include the marks FUZZY
WAGS PET CARE and design for pet sitting; GLAD WAGS for puppy food and dog
treats; WAGS ADVANCE for powders for treatment of fleas and ticks; WAGS for
animal rescue services and for providing funds for leasing pets and pet-related goods;

31 May 7, 2018 Response to Office Action at TSDR 42-44, 52; June 21, 2019 Request for
Reconsideration at TSDR 7-8, 17-18, 35-40, 47-48, 61-64, 67-70, 77-82, 87-88, 91-94, 103-10,
119-22, 131-32, 137-38, 141-42, 145-46, 151-52, 157-58, 165-70, 179-80, 185-92, 197-98, 213-
16, 225-26, 233-34, 243-44, 253-56, 259-60, 269-72, 275-80, 285-88, 291-96, 301-02, 314.
Serial No. 87554773
- 25 -

WAGS N’ KISSES for pet food and treats; WAGS PARK for dog park and dog and pet
day care services; WAGS PET CENTER for pet sitting; WALKS AND WAGS, INC.
for dog daycare and pet boarding; WEST COAST WAGS, and WEST COAST WAGS
and design for deodorizers, shampoos, and grooming preparations for pets; WIKI
WAGS and WIKI WAGS and design for dog and pet diapers; WAGS & WHISKERS
PET SALON for pet CPR, massage therapy for dogs, and pet beauty salon services;
HEART HEALTHY! WAGS PLENTY! for dietary and nutritional supplements for
pets; WAGS TO WHISKERS PET SUPPLIES and design for retail store services
featuring pet supplies; PET TRACKER 360 BY PAWS, WHISKERS & WAGS and
design for tracking services for pets and domestic animals; and WIGGLES, WAGS &
WHISKERS for pet accessories and pet clothing.32
With two exceptions, these marks also contain “other wording not present in the
involved [Wagz] marks,” I-Coat Co., 126 USPQ2d at 1735, and thus have little
probative value on the ability of consumers to distinguish the involved marks because
they too are not “as similar to the mark in the cited registration as is Applicant's
mark.” Id. The two registrations of WAGS alone, which is phonetically identical to
the involved marks, cover animal rescue services and providing funds for leasing pets
and pet-related goods, not the goods identified in Applicant’s application, or the
services identified in the ’656 Registration, and Applicant has not shown that the
identified animal rescue and leasing funding services are related to the involved

32 May 7, 2018 Response to Office Action at TSDR 6-8, 45-50, 53, 56, 58-59; June 21, 2019
Request for Reconsideration at TSDR 33-34, 113-14, 143-44, 153-54, 163-64, 201-02, 219-20,
227-28, 231-32, 251-52, 267-68, 273-74, 311.
Serial No. 87554773
- 26 -

goods or services.33 These two WAGS registrations thus have very limited probative
value under the sixth DuPont factor. Inn at St. John’s, 126 USPQ2d at 1745 (citing
i.am.symbolic, 123 USPQ2d at 1751); see also Tao Licensing, 125 USPQ2d at 1058.
Applicant’s third-party use evidence is similarly long on quantity, but short on
quality. The record shows the online sale of pet food, pet toys, pet collars, and other
pet-related goods under the marks Wag; Wobble Wag Giggle; Wag More Bark Less;
Wiki Wags and design; Wags & Wiggles; The Paw Wag Company; Whisk & Wag and
design; Wagging Tails in Heaven; Waggin’ Tails’ Wags & Purrs; A Tail We Could
Wag; Wag-A-Tude; Wags Whiskers; Wags & Weights; Wally Wags; Wag Mat; Wag
and Wiggle; Simply Wag; Wag Haus; Wags N’ Whiskers; Wiggles Wags Whiskers;
ZigZag Wags; Henry Wag; Live Love Wag; Wag Wear; Wag N’ Woof; Wag ‘N Wraps;
Wag Bags; and Heart Healthy! Wags Plenty!34 A number of these uses involve some
of the marks shown in the registrations discussed above, and, as previously discussed,
they and most of the other third-party marks in use have little or no probative value
on the ability of consumers to distinguish the involved Wagz marks because they
contain elements in addition to the words WAG or WAGS.
Applicant also made of record the results of Google search engine searches using
the search terms “wags,” “wag dog,” “wags dog,” and “wags pet.” These searches
yielded map entries and website excerpts regarding entities listed as Mr. Wags Pet

33 The same is true for the registrations of the multi-word WAGS- formative marks for pet
sitting, dog park and dog and pet day care services, dog daycare and pet boarding, and
tracking services for pets and domestic animals.
34 June 21, 2019 Request for Reconsideration at TSDR 316-27, 329-37, 339-43, 345-49, 352-
56, 358-61, 363-67, 370-74, 377-81, 383-86, 388-92, 394-96, 412-23, 425-28.
Serial No. 87554773
- 27 -

Salon & Kennel; Beth’s Wags & Whiskers; Wag Your Tail Grooming; Wags and
Whiskers Pet Care; Wags Wash and Groom Spa; Wags ‘n Wiggles Resort; Woofs and
Wags Pet Lodge; Woofs & Wags; Wags to Riches; Wag N’ Wash Natural Food &
Bakery; Wags Pet Motel; Wag! Dog Walking; Wags West; Wags and Walks;
WagWalking; Wag the Dog NYC; Urban Wag Brooklyn; Wag Club; Wag Labs; Wags
Rescue; Wags Doggie Day Camp & Boarding; Tails-a-Wag’n; WAGS (Westminster
Adoption Group and Services) Pet Adoption; Wags Pet Services; and WAGS
(Wonderful Animals Giving Support) Pet Therapy of Kentucky.35
“Search engine results—which provide little context to discern how a term is
actually used on the webpage that can be accessed through the search result link—
may be insufficient to determine the nature of the use of a term or the relevance of
the search results to registration considerations.” Max Capital Grp., 93 USPQ2d at
1246 (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833
(Fed. Cir. 2007)). In Max Capital Grp., the Board rejected “Google search summary
sheets” as evidence of third-party use of MAX- formative marks for insurance services
because they “contain[ed] many irrelevant listings, or listings from which we cannot
ascertain for what goods or services the term MAX may be used,” and because they
did “not show that third parties actually use MAX as a mark, or how consumers might
encounter any such third-party uses.” Id.
The search results here suffer from the same sort of flaws. The exact services
provided by the listed entities are not clear, and Applicant did not submit pages from

35 Id. at TSDR 399-405, 407-08, and 410-11.
Serial No. 87554773
- 28 -

the websites of any of the listed entities even though the search results provide links
to such sites. Most importantly, Applicant did not show that the listed entities are
actually using the listed names for pet-related goods or services, “or how consumers
might encounter any such third-party uses.” Id.; cf. Anthony’s Pizza & Pasta Int’l,
Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009) (electronic
versions of telephone directories “for numerous restaurants listed under variations of
the name ‘Anthony’s’ in cities throughout the United States” held to be of limited
probative value on the issue of the weakness of plaintiff’s ANTHONY’S PIZZA &
PASTA mark because those listings did “not demonstrate that the public is aware of
the businesses, the number of their customers, or their trading area.”), aff’d, 415 F.
Appx. (Fed. Cir 2010). In addition, as with the vast majority of the marks in the third-
party registrations, and most of the registered and common law marks shown to be
in use, the putative trade names listed in the search results contain elements in
addition to the words Wag or Wags, and thus would have limited probative value even
if Applicant had proven their actual use.
When Applicant’s registration and use evidence is considered in its entirety, it
shows that the words Wag and, to a lesser extent, Wags, have been used extensively
as part of marks for pet-related goods and services, which indicates that the words
likely have a suggestive meaning in the pet industry to the effect that the
consumption of the goods and services sold under those marks will result in happy
pets. Cf. Juice Generation, 115 USPQ2d at 1675 (“Marks that are descriptive or
highly suggestive are entitled to a narrower scope of protection, i.e., are less likely to
Serial No. 87554773
- 29 -

generate confusion over source identification than their more fanciful counterparts.”).
But even weak marks are entitled to protection against a mark that is substantially
similar and is used on similar goods or services, see King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 109 (CCPA 1974), and given the
deficiencies in the evidence discussed above, the third-party registrations and uses
do not show that the cited WAGZ mark has been weakened to such an extent that
there is no likelihood of confusion with the composite Wagz mark in the application.
We find that the sixth DuPont factor is neutral.
E. Balancing the DuPont Factors
The first, second, and third DuPont factors support a finding of a likelihood of
confusion, with the first factor doing so strongly because of the identity of the marks
in sound and connotation and commercial impression, and the close similarity of the
marks in appearance. The fourth DuPont weighs against a finding of a likelihood of
confusion as to the goods in Classes 6 and 7, but is neutral as to the goods in Classes
18, 20, 21, 28, and 31. The sixth DuPont factor is neutral, but even assuming that the
cited WAGZ mark is “not entitled to a broad scope of protection,” Max Capital Grp.,
93 USPQ2d at 1246, and would not bar the registration of “every mark comprising,
in whole or in part,” the words Wag and Wags, or their phonetic equivalents,
Anthony’s Pizza & Pasta, 95 USPQ2d at 1278, the third-party registrations and uses
are insufficient to show that confusion between the involved marks is unlikely. The
resemblance of Applicant’s composite Wagz mark for various pet-related goods to the
cited standard character WAGZ mark for retail pet store services “is striking enough
Serial No. 87554773
- 30 -

to cause one seeing it to assume that there is some connection, association or
sponsorship between the two.” Id. (sustaining opposition to registration of the mark
Anthony’s Coal-Fired Pizza and design for “restaurant services, namely, eat-in and
take-out coal oven pizza and other items,” and cancelling registration of the standard
character mark ANTHONY’S COAL-FIRED PIZZA for those services, because of the
confusing similarity of those marks to plaintiff’s standard character mark
ANTHONY’S PIZZA & PASTA for restaurant services, even though the record
showed that plaintiff’s mark was entitled to a limited scope of protection). We find
that confusion is likely as to all of Applicant’s goods, including the “smart” goods in
Classes 6 and 7, because “given the similarity of the . . . marks, as well as the overlap
in their trade channels, we are not convinced that even careful purchasers would
avoid confusion.” Tao Licensing, 125 USPQ at 1063 (citing Weiss Assocs., 14 USPQ2d
at 1841-42).
We find, on the basis of the record as a whole, that pet owners who are familiar
with the cited WAGZ mark for retail pet store services and who are exposed to
Applicant’s composite Wagz mark for the various pet products in Classes 6, 7, 18, 20,
21, 28, and 31 in the application are likely to believe mistakenly that those goods
originate with, or are authorized or sponsored by, the provider of the retail pet store
services under the WAGZ mark.
Decision: The refusal to register as to Classes 6, 7, 18, 20, 21, 28, and 31 is
affirmed. The application will proceed to publication for opposition as to the goods in
Classes 9, 14, and 25.