The Board sustained Kimberly-Clark’s opposition to registration of the word + design mark shown below left, on the ground of likelihood of confusion with K-C’s registered mark shown below right, both for bathroom tissue. The Board observed that, although the words in a word + design mark like applicant’s are usually accorded greater weight, in this case opposer K-C’s mark comprises only the image of a puppy with its paw on a roll of toilet paper, “so rather than using words to call for Opposer’s goods, consumers might identify Opposer’s brand another way, perhaps by recalling and mentioning the dog, or ‘the puppy with toilet paper.'” Kimberly-Clark Worldwide, Inc. v. Matosantos Commercial Corp., Opposition No. 91218800 (January 26, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).
Because the involved goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of purchasers. These factors not only weigh heavily in favor of a finding of likely confusion, but also reduce the degree of similarity between the marks necessary for such a finding.
The Board noted that the marks have obvious differences but concluded that the differences are outweighed by the even more obvious similarities. “Perhaps most importantly, Applicant’s and Opposer’s dogs look similar.”
Each party refers to its dog as a “puppy.” Both puppies are sitting and looking at the camera, and they are both light-colored. Applicant’s dog is described as having “beige ears,” the same color as Opposer’s dog’s ears. Applicant’s dog has “black eyes, and black nose,” while Opposer’s has “green and black eyes and black nose.” The puppies also appear to potentially be the same breed, in whole or in part. As Applicant states in its brief, “the images speak for themselves.”
In addition to the possibility that consumers may recollect K-C’s brand by remembering the “puppy with toilet paper,” some may believe, when encountering Applicant’s toilet paper, that K-C has begun using the words TENDER PUFF BATHROOM TISSUE to identify its product, which was formerly identified only by the dog design.
The Board pointed out that it has often found a likelihood of confusion when, as here, marks are used for highly similar or identical goods and include similar designs, even if there are also literal or other differences between the marks. Among the examples provided: In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971) (both for bath products).
A common theme found in these cases is the recognition that “consumers generally do not encounter competing marks side-by-side, where their differences become more obvious.” In sum, side-by-side comparison is not the proper approach. Here, the involved marks “both prominently display puppies, with significant similarities, to identify identical products, and the marks create the same general overall commercial impression.”
The Board declined to find that K-C’s mark is famous or even strong, due to lack of evidence. On the other hand, there was no evidence that dogs have any “toilet paper-related meaning” or that dog designs are used by any third party as a source-identifier for toilet paper. Finally, the Board observed that although some consumers may exercise some care in purchasing this product, the Board’s decision must be based upon the least discriminating consumers who may exercise only an ordinary degree of care.
The Board concluded that confusion is likely, and it therefore sustained the opposition.