[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The USPTO refused to register the mark RUFF CHEWERS, in standard characters (CHEWERS disclaimed), for dog and pet toys, finding the mark likely to cause confusion with the registered mark RUFF CHEW, in the stylized form shown below, for pet beds. On appeal, Applicant convinced the Board of one of the following arguments: (1) that the marks are distinguishable, (2) that consumers of the products are highly sophisticated, (3) that the registered mark is weak, (4) that the registered mark does not currently appear to be used in commerce, or (5) that the USPTO has allowed similar pairs of marks to co-exist on the Principal Register. Which do you think the Board found disfavored a finding of likelihood of confusion? Do you think it outweighed the remaining du Pont factors? In re Lavelle Industries, Inc., Serial No. 87420189 (June 12, 2019) [not precedential] (Opinion by Judge Angela Lykos).

The Marks: Applicant argued that the registered mark’s stylized font, design element, and color scheme distinguish the marks. Focusing on the literal portion of the marks, the Board noted that the only distinction was Applicant’s addition of the suffix “-ers.” Accordingly, “the presence of the common design element consisting of a brown rectangle enclosing the stylized wording ROUGH CHEW fail[ed] to mitigate the similar sound, appearance, and connotation of the marks.” Applicant also specified that it had no intention to use its mark in a similar stylization. However, since the applied-for mark was in standard character form, the Board found this point to be irrelevant. Thus, the first du Pont factor weighed in favor of finding a likelihood of confusion.

The Goods and Trade Channels: Here, the Board considered the goods to be complementary, observing that the “products may be used together for pets who take their toys to bed.” Turning to internet evidence presented by Examining Attorney Rachael Dickson, the Board determined that many online retailers sell both goods under the same mark. Therefore, “[c]onsumers may expect to find both Applicant’s and Registrant’s goods emanating from a common source.” The Board then found that the goods traveled in similar trade channels based on evidence of web sites specializing in pet care and animal products and common knowledge that brick-and-mortar pet stores would sell both pet toys and beds. And so, the second and third du Pont factors weighed in favor of finding a likelihood of confusion.

Conditions of Sale: Applicant asserted that the goods offered by both parties are not impulse purchases and that consumers exercise a high degree of care when buying pet products. Specifically, Applicant maintained: “millennials care deeply about their pets and consider them ‘starter children,’ making these consumers are [sic] ‘very discriminating and discerning purchsers [sic] of pet products.’” The Board rejected this argument, pointing out that caring deeply about pets does not immunize consumers from source confusion. Looking to the record, the Board found that pet beds and toys can be sold for a relatively low price, citing a travel dog bed with a retail price of $19.39 and a ball dog toy for $7.99-$8.95. Because the goods can be sold for a low price, consumers are not likely to deliberate over their purchases, and therefore the Board found this factor weighed in favor of finding a likelihood of confusion.

Strength of the Cited Mark: Here, Applicant provided Google search results of “ruff chew bed.” The Board observed that “[a] search result summary from a search engine, such as . . . Google, which shows use of a phrase as key words by the search engine is of limited probative value.” See TBMP § 1208.03. Nonetheless, the Board gave the search engine results probative weight since the summary provided sufficient information to understand the context of the words’ usage. Additionally, Applicant submitted seven active third-party registrations as evidence that the words “rough” and “chew” are relatively weak in connection with dog and pet toys. Taking all of the evidence into account, the Board agreed that the registered mark is relatively weak. Therefore, the sixth du Pont factor disfavored a finding of likelihood of confusion.

Other Factors: Finally, Applicant argued that Registrant’s mark does not currently appear to be used in commerce and also that the USPTO has allowed four similar pairs of marks to co-exist on the Principal Register. The Board promptly dismissed these arguments, finding them irrelevant in an ex parte proceeding and of limited utility. Accordingly, the Board found the thirteenth du Pont factor to be neutral.

Conclusion: Finding that the weakness of the registered mark did not outweigh the other relevant du Pont factors, the Board affirmed this Section 2(d) refusal to register.

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KKM comment: Looks like the Board wasn’t willing to throw Applicant a bone in this case.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.