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Federal Circuit Upholds Refusal to Register WAGGIN' STRIPS Based on Confusion with BEGGIN' STRIPS
Practical Law Legal Update 6-520-2943 (Approx. 4 pages)
Federal Circuit Upholds Refusal to Register WAGGIN' STRIPS Based on Confusion with BEGGIN' STRIPS
by PLC Intellectual Property & Technology
| Published on 09 Jul 2012 • USA (National/Federal) |
On July 9, 2012, in Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's refusal to register Midwestern Pet Foods' mark WAGGIN' STRIPS based on likelihood of confusion with Nestle's BEGGIN' STRIPS mark, both for pet treats. In upholding the refusal the Federal Circuit highlighted the differences in the fame standards for likelihood of confusion and dilution and declined to draw a negative inference from Nestle's failure to conduct a consumer confusion survey.
Key Litigated Issues
The key substantive litigated issues in Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., were whether:
- The Trademark Trial and Appeal Board (TTAB) erred in refusing registration of Midwestern's trademark WAGGIN' STRIPS based on a likelihood of confusion with Nestle's BEGGIN' STRIPS mark, both for pet food.
- In support of a likelihood of confusion claim, a party can rely on evidence of its mark's fame that postdates the filing date of the applicant's intent-to-use trademark application.
- A negative inference is drawn from an opposer's failure to conduct a confusion survey.
The court also considered Midwestern's argument that certain Nestle evidence should be excluded because it was not produced in response to discovery requests.
Background
Nestle's BEGGIN' STRIPS mark for pet treats has been in use since 1988. It was registered in 1989. Midwestern manufactures and sells dog and cat treats. Intending to introduce a new product, Midwestern filed an intent-to-use application with the USPTO seeking to register the mark WAGGIN' STRIPS for pet food and treats. Nestle opposed registration of the WAGGIN' STRIPS mark based on claimed likelihood of confusion with its BEGGIN' STRIPS mark. Nestle also asserted a dilution claim.
The TTAB sustained Nestle's opposition to Midwestern's application based on likelihood of confusion. In particular the TTAB noted that the goods were identical, the channels of trade and classes of purchasers were the same and the marks were similar. However, the TTAB rejected Nestle's trademark dilution claim because it found that Nestle had not shown that its BEGGIN' STRIPS mark satisfied the fame standard for dilution purposes.
Outcome
In its July 9, 2012 opinion, the Federal Circuit affirmed the TTAB, holding that there was substantial evidence to support the TTAB's finding of a likelihood of confusion between Midwestern's WAGGIN' STRIPS and Nestle's BEGGIN' STRIPS, noting in particular:
- The strength of the BEGGIN' STRIPS mark.
- The similarities between the marks.
- The identical nature of the products.
- The overlap in trade channels and customers.
In its ruling the Federal Circuit made several notable findings.
Fame Requirements
Midwestern argued that the TTAB improperly allowed Nestle to rely on certain evidence of the BEGGIN' STRIPS mark's fame in analyzing likelihood of confusion. Midwestern argued that, as is the case with dilution claims, an opposer's fame evidence must pre-date the applicant's intent-to-use application filing date.
The Federal Circuit held that while evidence of post-application fame is not relevant to a dilution claim, it is relevant to a likelihood of confusion claim. The court explained that fame is not necessarily the same for likelihood of confusion purposes and dilution purposes. A mark may have acquired sufficient public recognition to demonstrate that it is a strong mark for likelihood of confusion purposes without meeting the stringent requirements to establish that it is a famous mark for dilution purposes.
Likelihood of Confusion and Consumer Survey Evidence
In connection with its likelihood of confusion analysis, the Federal Circuit noted that Nestle did not introduce consumer survey evidence in support of its showing of a likelihood of confusion. However the court indicated that Nestle was not required to conduct a survey and it declined to draw an adverse inference from the failure to conduct a survey. However, the court did suggest that there may be cases where likelihood of confusion can only be found if the evidence includes a survey.
Discovery Sanctions
The Federal Circuit also held that the TTAB did not abuse its discretion by refusing to strike Nestle's advertising, marketing and sales evidence for its BEGGIN' STRIPS mark. The court noted that, while Nestle did not produce the evidence in response to Midwestern's discovery requests, Nestle had not represented that the evidence did not exist, but rather had raised objections to its productions. The court noted that it was incumbent on Midwestern to move to compel production of the requested materials because the case was initiated before (and was not subject to) the 2007 amendments to TTAB procedure requiring mandatory disclosure of documents to be relied on at trial.
Practical Implications
The Federal Circuit's decision is important as it highlights and clarifies the different standards for showing fame of an opposer's mark for likelihood of confusion and dilution. Opposer's can take comfort from the court's holding that, unlike dilution cases, evidence after an applicant's intent-to-use application filing date can be used to show fame or strength of the opposer's mark for likelihood of confusion purposes. Parties to TTAB litigations should also take note that while the court did not require a consumer survey, and did not draw a negative inference from its absence, it did suggest that there may be cases where a likelihood of confusion can only be found if the evidence includes a survey.