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Federal Circuit: Evidence Collected After ITU TM App Filed is Relevant to Likelihood of Confusion


On July 9, 2012, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) refusal of Midwestern Pet Foods’ (“Midwestern”) application for the mark WAGGIN’ STRIPS due to a likelihood of confusion with another mark, BEGGIN’ STRIPS, owned by Societe des Produits Nestle (“Nestle”).

Midwestern filed an intent-to-use application for the WAGGIN’ STRIPS mark in connection with “pet food and edible treats” on November 21, 2003.  The application was approved by the USPTO and published for opposition on September 14, 2004.  Nestle opposed the registration on the grounds of (1) priority and likelihood of confusion, (2) diliution, and (3) that applicant lacks a bona fide intent to use the mark in commerce.  Nestle alleged that it began using the mark BEGGIN’ STRIPS in connection with dog snacks as early as 1988, and that its mark became well known and famous to the public prior to Midwestern’s use of the BEGGIN’ STRIPS mark.

The TTAB rejected Nestle’s claim of trademark dilution because it found that Nestle had not shown its mark had the fame necessary to support a dilution claim.  However, the TTAB upheld Nestle’s claim of likelihood of confusion claim “principally because the goods are identical, the channels of trade and classes of purchasers are the same, and the marks are similar in appearance, sound, connotation, and commercial impression.  Accordingly, the TTAB sustained Nestle’s opposition of Midwestern’s application.  Midwestern appealed the TTAB’s decision to the Federal Circuit.

Midwestern argued on appeal that the TTAB improperly allowed Nestle to rely on evidence of the fame of Nestle’s mark because the evidence postdated the filing of Midwestern’s mark and that Midwestern’s mark was not confusingly similar to Nestle’s mark.  Midwestern argued that, in analyzing the likelihood of confusion, evidence of fame of an opposer’s mark must predate the applicant’s filing date.

The Federal Circuit countered that, while evidence of post-application fame is not relevant to the issue of dilution, such evidence is relevant to the issue of likelihood of confusion.  A party asserting likelihood of confusion does not need to establish that its mark had become famous prior to the filing date of an intent-to-use application.  Moreover, the amount of public recognition necessary to sustain a likelihood of confusion argument is lower than the level of recognition necessary to sustain a dilution argument.

The Federal Circuit also found that, while Nestle’s mark was not a famous mark, it was nonetheless entitled to the broadest scope of protection due to the evidence presented by Nestle showing secondary meaning and efforts made by Nestle in the good will of the mark.

The Federal Circuit finally considered whether Nestle’s failure to provide survey evidence showing secondary meaning in support of likelihood of confusion should be considered as evidence against such confusion.  To this question, the Federal Circuit concluded, “While there may be cases in which the evidence of likelihood of confusion is not strong enough to support a finding to that effect in the absence of survey evidence, this is not such a case.”

The Federal Circuit, therefore, upheld the TTAB’s finding that Midwestern’s mark was confusingly similar to Nestle’s mark.

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