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In determining that no likelihood of confusion would result from the applicant’s registration of “Fido Lay” as a trademark for dog snacks, the U.S. Patent and Trademarks Office’s Trademark Trial and Appeal Board failed to accord proper weight to the fame of the opposer’s “Frito-Lay” mark for human snacks, the U.S. Court of Appeals for the Federal Circuit ruled June 7 ( Recot Inc. v. Becton, Fed. Cir., No. 99-1291, 6/7/00). The court, in an opinion by Judge Raymond C. Clevenger III, vacated and remanded the TTAB’s dismissal of the opposition after finding that the board also failed to consider all relevant evidence of whether the parties’ products were related and improperly dissected the marks. Recot Inc. sells snack foods under the “Frito-Lay” mark nationwide. It holds a greater than 50 percent market share of the snack food market and every year up to 90 percent of U.S. households purchase at least one “Frito-Lay” brand product. Becton, by contrast, sells natural dog treats in his pet food stores in the Birmingham, Ala., area. He applied to register the “Fido Lay” mark for those snacks. Recot opposed the registration. The board dismissed Recot’s opposition, holding that Becton’s mark was not likely to cause confusion with the “Frito-Lay” marks because the goods were “so different in nature” and the marks were sufficiently dissimilar in meaning. Recot appealed. When looking at whether an applied-for mark will be likely to cause confusion with an existing mark, the PTO considers factors derived from In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973): Here, Recot argued that the board failed to accord proper weight to the fame of its “Frito-Lay” mark. The fifth DuPont factor�the mark’s fame�plays a “dominant” role in the balancing process, the court acknowledged. “Famous marks thus enjoy a wide latitude of legal protection.” While the board conceded that the “Frito-Lay” mark’s fame was “unquestionably established,” it did not treat the fame factor as important because the dog treats sold under the “Fido Lay” mark are “completely unrelated” to the human snacks sold by the opposer. In doing so, the board erred, the court said. “We think that the Board’s rule�that the fame of the FRITO-LAY marks extends no further than the products with which the marks are currently used�undercuts the legal standard of protection for famous marks,” the court wrote. “Famous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark.” This reasoning applies even where the parties’ goods are unrelated, the court continued, “because the fame of a mark may also affect the likelihood that consumers will be confused when purchasing these products.” Thus, the court held that the fame of a mark must always be accorded its full weight when determining the likelihood of confusion. Because the board erred in discounting the fame of the opposer’s mark, the court vacated its decision and remanded for further consideration. OTHER FACTORS AT ISSUE The court also took exception to the board’s conclusions regarding several other DuPont factors. First, in considering the “relatedness of the goods” factor, the board found that the parties’ goods were not identical or closely related. But, the court found, the board refused to consider lay evidence that several large companies produce and sell both pet and human food in deciding whether a consumer would reasonably believe that the dog treats originated from the same source as “Frito-Lay” brand products. This evidence was “extremely pertinent,” the court said, because it shows that goods can be related in consumers’ minds even if they are not actually related�or even similar. The board will have an opportunity to reconsider this factor on remand, the court wrote. Second, the fourth factor�the conditions under which and to whom sales are made�was undervalued by the board, according to the court. While the board acknowledged that both parties’ goods are inexpensive and may be purchased on impulse, it accorded this factor less weight based on its conclusion that the goods were unrelated. “Once again,” the court wrote, “the fact that the goods themselves are different�dog food and human food�does not compel a conclusion that consumers may not confuse the origin of the foods in hasty, economically painless transactions. Further, the potential for confusion in these circumstances is accentuated by the significance of a famous mark.” On remand, the board must give this factor its full weight, the court held. Third, Recot argued that the board erred by improperly dissecting the mark by considering only its connotation when evaluating the first DuPont factor�the similarity or dissimilarity of the marks. The court agreed. “The similarity or dissimilarity of the marks in their entirety is to be considered with respect to appearance, sound, and connotation.” All relevant facts pertaining to those factors must be considered before the board can determine similarity or dissimilarity, according to the court. In this case, the court explained, the board considered only the connotation of part of the marks�”Frito” having a different connotation than “Fido”�before concluding that the marks were dissimilar and left different commercial impressions. Thus, the board must take into account the marks’ appearances and sound on remand. Finally, Recot took issue with the board’s finding of good faith and its failure to give Recot any benefit under the “channels of trade” factor. As to the applicant’s alleged bad faith, the court said that absent proof that Becton’s explanation for adopting the mark was untrue, Recot failed to bolster its claim to a likelihood of confusion between the marks. The court also found no error in the board’s holding on the “channels of trade” factor, since there was no evidence the parties’ products were sold in close proximity to one another.

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