To the Commissioner for Trademarks:

Response

This Response answers the Office Action issued on February 7, 2023 for Application Serial No. 97397244 (the “Application”) for the mark PEACE, LOVE AND BELLY RUBS (the “Mark”) owned by Spectrum Brands Pet LLC (the “Applicant”). Please see the following remarks.

Likelihood of Confusion Refusal

The Examiner has initially refused registration based on a likelihood of confusion with Reg. Nos. 5893237, 6750856, and 4877118 under Section 2(d) of the Trademark Act. Applicant respectfully disagrees and submits there is no likelihood of confusion for the following reasons.

1. Applicant’s Mark is Sufficiently Different to Avoid Confusion

a. The Marks Must Be Compared in Their Entireties

One of the factors considered in the likelihood of confusion analysis is the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). It is well settled that “even close similarity between two marks is not dispositive of the issue of likelihood of confusion.” See, e.g. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979) (finding no likelihood of confusion between DRIZZLER for golf jackets and DRIZZLE for coats). Similarity in and of itself is not the test; whether the similarity is likely to provoke confusion is the crucial question. See Pfizer, Inc. v. Astra Pharm. Prods., 33 U.S.P.Q.2d 1545, 1559 (S.D.N.Y. 1994).

In this case, the Examiner claims the cited registrations are similar to Applicant’s Mark because they include “PEACE, LOVE” or “BELLYRUB”. However, under the anti-dissection rule, it is inappropriate to ignore or not consider the impact of additional words in the parties’ marks. As stated by the Supreme Court, “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason, it should be considered in its entirety.” Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920). “When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared.” Opryland USA Inc. v. The Great American Music Show Inc., 23 U.S.P.Q.2d 1471, 1473 (Fed. Cir. 1992). Here, when the parties’ marks are considered in their entireties—as they must be—they are not confusingly similar.

The fact the parties’ marks contain “PEACE, LOVE” or “BELLYRUB” is not determinative. Indeed, case law clearly establishes that the sharing of a common element does not end the inquiry. Many cases exist where no likelihood of confusion was found between marks that shared a common element and were used for goods and/or services that were competitive or related. Examples of such cases abound, and include the following: ConAgra, Inc. v. George A. Hormel & Co., 26 U.S.P.Q.2d 1316 (8th Cir. 1993) (no confusion between HEALTHY CHOICE and HEALTH SELECTIONS, both for food products); Colony Foods, Inc. v. Sagemark Ltd., 222 U.S.P.Q. 185 (Fed. Cir. 1984) (no confusion between HOBO JOE'S and HUNGRY HOBO both for restaurants); Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 U.S.P.Q.2d 1901 (T.T.A.B. 2007) (holding LEADING JEWELERS OF THE WORLD when compared in its entirety to MEMBER LEADING JEWELERS GUILD offers a different commercial impression and therefore is not so similar as to cause confusion); Harry Fischer Corp. v. Keneth Knits, Inc., 207 U.S.P.Q. 1019 (T.T.A.B. 1980) (MALCOLM KENNETH for men’s and women’s coats not likely to be confused with KENETH KNITS for women’s and children’s knitted tops, pants and shorts); Consolidated Cigar Corp. v. R.J. Reynolds Tobacco Co., 181 U.S.P.Q. 44 (C.C.P.A. 1973) (no likelihood of confusion between DUTCH MASTERS for cigars and DUTCH APPLE for tobacco); House of Worsted-Tex, Inc. v. Superba Cravats, Inc., 128 U.S.P.Q. 119 (C.C.P.A. 1960) (no likelihood of confusion between IVY LEAGUE for clothing and IVY HALL for neckties); Smith v. Tobacco By-Products & Chemical Corp., 113 U.S.P.Q. 339 (C.C.P.A. 1957) (no likelihood of confusion between the marks GREEN LEAF and BLACK LEAF, both for plant spray, despite the fact that both marks contained the word LEAF).

b. The Parties’ Marks Have Different Overall Appearances, Sounds and Meanings

One of the factors to consider in the likelihood of confusion analysis is the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). It is well settled that “even close similarity between two marks is not dispositive of the issue of likelihood of confusion.” See, e.g. McGregor-Doniger, Inc. v. Drizzle Inc., 202 U.S.P.Q. 81, 89 (2d Cir. 1979) (finding no likelihood of confusion between DRIZZLER for golf jackets and DRIZZLE for coats). In several cases, the Board has found that a likelihood of confusion does not exist between marks that share a common element and that are used with goods and/or services that are related. See, e.g., In re Farm Fresh Catfish Co., 231 U.S.P.Q. 495 (T.T.A.B. 1986) (“CATFISH BOBBERS” for fish not likely to be confused with “BOBBER” for restaurant services); In re Shawnee Milling Co., 225 U.S.P.Q. 747 (T.T.A.B. 1985) (“GOLDEN CRUST” for flour not likely to be confused with “ADOLPH’S GOLD’N CRUST & Design” for coating and seasoning for food items); Harry Fischer Corp. v. Keneth Knits, Inc., 207 U.S.P.Q. 1019 (T.T.A.B. 1980) (“MALCOLM KENNETH” for men’s and women’s coats not likely to be confused with “KENETH KNITS” for women’s and children’s knitted tops, pants and shorts). Similarity in and of itself is not the test; whether the similarity is likely to provoke confusion is the crucial question. See Pfizer, Inc. v. Astra Pharm. Prods., 33 U.S.P.Q.2d 1545, 1559 (S.D.N.Y. 1994).

Contrast with Reg. Nos. 6750856 & 4877118

Here, Applicant’s Mark begins with “PEACE, LOVE AND”, while cited Reg. Nos. 6750856 and 4877118 are only the words “BELLYRUBS” and “BELLYRUB” respectively. As the Board has found, when marks begin differently, consumers are less likely to become confused, as the beginning of a mark is typically the most important or prominent in the eyes of consumers. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 94 U.S.P.Q.2d 1645, 1664 (T.T.A.B. 2010), aff’d, 637 F.3d 1344 (Fed. Cir. 2011) (various CAPITAL CITY BANK marks held not likely to be confused with CITIBANK where the term “Capital City” was the dominant and most distinguishing element of the applicant’s marks, due to its appearance at the beginning); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 U.S.P.Q.2d 1689, 1692-93 (Fed. Cir. 2005). As such, consumers will recognize “PEACE, LOVE AND” as distinguishing elements in Applicant’s Mark. Furthermore, the inclusion of the additional wording in Applicant’s Mark gives it a different overall appearance and pronunciation.

Additionally, a difference in commercial impression is sufficient to find no confusion, even if the marks at issue have phonetic and visual similarities. In re Nobody’s Perfect Inc., 44 U.S.P.Q.2d 1054, 1057 (T.T.A.B. 1997) (unpublished) (“[N]otwithstanding the substantial phonetic and visual similarities in the respective marks and the closely related nature of applicant’s services and registrant’s goods . . . in light of the significant differences in connotation, [NOBODY’S PERFECT] is sufficiently distinguishable in commercial impression from [NO BODY’S PERFECT] that confusion as to origin or affiliation is not likely.”); see also In re Sears, Roebuck & Co., 2 U.S.P.Q.2d 1312, 1314 (T.T.A.B. 1987) (finding that CROSS-OVER for bras and CROSSOVER for woman’s sportswear was not likely to cause confusion because the marks created different commercial impressions).

Applicant’s Mark begins with “PEACE, LOVE AND”, which invokes the well-known structure of phrases associated with the hippie movement, such as “peace, love and freedom” and “peace, love and community” (see Wikipedia page attached as Exhibit A). This type of phrase has also been used in artistic works like the well-known song “(What’s So Funny ‘Bout) Peace, Love, and Understanding” (see Wikipedia page attached as Exhibit B). Moreover, this structure is also commonly used in various fields, e.g. PEACE LOVE & LITTLE DONUTS in connection with donuts, PEACE LOVE AND PIZZA in connection with pizza, PEACE LOVE & DREAMS in connection with pajamas, PEACE, LOVE, and WOODSTOCK in connection with museum services, and PEACE, LOVE & HAPPINESS in connection with environmental conservation (see Exhibit C). As such, consumers encountering Applicant’s Mark would understand it as a play on the “PEACE, LOVE AND” phrases implying the ethos of harmony and understanding.

In contrast, cited Reg. Nos. 6750856 and 4877118 are only the words “BELLYRUBS” and “BELLYRUB” respectively. Therefore, these cited registrations are not plays on words as well as do not suggest the harmony and understanding associated with the hippie movement. Thus, they have different connotations than Applicant’s Mark.

In addition, while examining attorneys are not bound by the decisions of other examiners, the Trademark Office has previously found Reg. Nos. 6750856 and 4877118 can coexist with the following third party registrations including “BELLY RUB” at the end of longer phrases in connection with pet related items (see Registration Certificates and Trademark Office records attached as Exhibit D):

· GROOM, GRUB AND BELLY RUB Reg. No. 5190333 covering “dog grooming services” and

· WAGGING TAILS AND BELLY RUBS Reg. No. 5812730 covering “pet sitting”.

If the above registrations comprised of longer phrases can coexist with Reg. Nos. 6750856 and 4877118 in the pet space, Applicant’s Mark should be able to coexist as well.

Thus, Applicant’s Mark is sufficiently different in overall appearance, pronunciation and commercial impression to avoid confusion.

Contrast with Reg. Nos. 5893237

For Reg. No. 5893237, the Examiner claimed the cited registration is similar to Applicant’s Mark because they include “PEACE LOVE”. However, as explained above, “PEACE LOVE AND” is a well-known structure associated with the hippie movement (see Exhibits A & B). Furthermore, it is used in a variety of fields, e.g. PEACE LOVE & LITTLE DONUTS in connection with donuts, PEACE LOVE AND PIZZA in connection with pizza, PEACE LOVE & DREAMS in connection with pajamas, PEACE, LOVE, and WOODSTOCK in connection with museum services, and PEACE, LOVE & HAPPINESS in connection with environmental conservation (see Exhibit C). As such, consumers are accustomed to seeing the “PEACE LOVE AND” structure in connection with various goods and services. Therefore, they would recognize that marks using “PEACE LOVE AND” do not necessarily identify the same source. Rather, consumers would look to other elements in these types of marks to differentiate between them.

Thus, consumers will recognize that Applicant’s Mark ends in “AND BELLY RUBS”, while the cited registration ends in “N PAWS”. As these elements have different spellings and sounds, Applicant’s Mark as a whole has a different appearance and pronunciation than Reg. No. 5893237. Furthermore, “PAWS” refers to an animal’s foot and “BELLY RUBS” refers to a person petting an animal, giving the marks different overall meanings. This difference is at least as great as in In re Sears, Roebuck & Co., where the court found that CROSS-OVER for bras and CROSSOVER for woman’s sportswear was not likely to cause confusion because the marks created different commercial impressions. In re Sears, Roebuck & Co., 2 U.S.P.Q.2d 1312, 1314 (T.T.A.B. 1987).

Moreover, while examining attorneys are not bound by the decisions of other examiners, the Trademark Office has previously found Reg. No. 5893237 can coexist with the following third party registrations covering pet related items (see Registration Certificates and Trademark Office Records attached as Exhibit E):

· PEACE LOVE DOGS Reg. No. 4394947 covering “pet day care services”;

· PEACE LOVE PUP Reg. No. 4749333 covering “dog apparel; dog clothing”; and

· PEACE LOVE AND RUBBER DUCKS Reg. No. 5481030 covering “pet toys”.

Similar here, Applicant’s Mark includes “PEACE LOVE” and ends differently from the cited registration. Furthermore, PEACE LOVE DOGS Reg. No. 4394947 and PEACE LOVE PUP Reg. No. 4749333 are more alike to PEACE LOVE N PAWS Reg. No. 5893237 because they end with terms that are closer in length, i.e. “PAWS” (four letters), “DOGS” (four letters ), “PUP” (three letters), than “BELLY RUBS” (nine letters). Therefore, if the above third party registrations can coexist with Reg. No. 5893237, than Applicant’s Mark should be able to coexist as well.

Therefore, Applicant’s Mark is sufficiently different in overall appearance, pronunciation and commercial impression to avoid confusion with Reg. No. 5893237.

Conclusion

In light of the above, Applicant requests the likelihood of confusion refusal be withdrawn and the Application be approved for publication.