Confusing Similarity Goes to the Dogs

In an appeal from the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (TTAB), the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB’s decision to deny federal registration of the trademark WAGGIN’ STRIPS based on a likelihood of confusion with a pre-existing registration for the mark BEGGIN’ STRIPS. Midwestern Pet Foods v. Societe Des Produits Nestle, Case No. 11-1482 (Fed. Cir., July 9, 2012) (Bryson, J.) (Dyk, J., concurring-in-part and dissenting-in-part).

Nestle adopted the mark BEGGIN’ STRIPS for pet treats in 1988. The mark was registered with the U.S. Patent and Trademark Office (USPTO) in 1989. In November 2003, appellant Midwestern Pet Foods, Inc. (Midwestern) filed an intent to use application for the mark WAGGIN’ STRIPS for pet food and edible pet treats. Nestle opposed the application before the TTAB arguing, in part, likelihood of confusion between the marks. The TTAB upheld Nestle’s claim of likelihood of confusion principally based on similarity of the marks, identical goods, and similar channels of trade and purchasers. Midwestern appealed.

The Federal Circuit held that the TTAB’s finding of a likelihood of confusion between the marks was supported by substantial evidence. The marks were used in connection with identical goods, pet food, which are inexpensive items catering to ordinary consumers who would exercise no more than ordinary care when selecting a product. The Court also supported the TTAB’s finding that the marks contained similarities in format, structure and syntax; the marks both share the term “STRIPS” and the first words “beg” and “wag” both convey behavior exhibited by dogs in connection with food. Finally, Nestle offered substantial evidence of national sales and advertising that demonstrated the mark engendered a “high degree of recognition,” (though falling short of “fame”) and was entitled to a broad level of protection. Although Nestle did not introduce consumer survey evidence in support of likelihood of confusion, the Court held that such evidence was not required. The Federal Circuit went on to affirm the TTAB holding that the WAGGIN’ STRIPS mark was confusingly similar to Nestle’s mark BEGGIN’ STRIPS.

Concurring in part and dissenting in part, Circuit Judge Dyk agreed with the majority’s holding regarding the likelihood of confusion issue, but disagreed that Nestle was not obligated under federal discovery rules to disclose in discovery the evidence it introduced at trial.