Michael J. Foycik Jr., Esq.

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BEGGIN' STRIPS v. WAGGIN' STRIPS TRADEMARK CASE, IN THE NEWS
by Miichael J. Foycik
Experienced Trademark Attorney
info@internationalpatentservice.com

This recent trademark decision by the highest IP court, the CAFC, pits Midwestern Pet Foods' trademark BEGGIN' STRIPS against Societe Des Produits Nestle S.A.'s trademark WAGGIN' STRIPS.

The appeal is from an Opposition proceeding before the TTAB, and issued on July 9, 2012.

There are two important elements of this recent decision by the CAFC. One of these important elements relates to the level and timing of evidence that can be submitted in Opposition to a trademark filed on an intent-to-use basis, where the law has been evolving.

Survey evidence was introduced after the filing date of the WAGGIN' STRIPS intent-to-use application, and normally any evidence of use by an Opposer which takes place after the filing date cannot be used. However, the CAFC carved out a very significant exception to this, by ruling that such evidence of substantial consumer use relates to the likelihood of confusion issue, rather than the right-to-use issue that normally exists in such instances.

The CAFC ruled that the trademark WAGGIN' STRIPS is likely to confuse consumers purchasing products having the trademark BEGGIN' STRIPS. Thus, the BEGGIN' STRIPS trademark owner was the prevailing party in this action. This itself is a significant finding, since there are important differences in beginning portions of these trademarks, and may indicate a greater willingness by this court to protect existing trademark rights.

The other important element is the level of disclosure by the prevailing party. Here, there was an evidentiary issue: Midwestern Pet Foods used evidence at trial that was not provided during the discovery phase of the case, which - in a usual federal courtroom - would not be acceptable. This is particularly true when, as here, that evidence was requested by their opponent but was never produced until the time of trial. In the normal course of events, the party failing to produce such evidence when requested, could be barred from using that evidence at trial. This is an important difference in the rules as they apply to the TTAB. There has been a change in the rules after the time of the occurrence, and it is possible that under the new rules the result could have been different. It is noteworthy that there was a vigorous dissenting opinion in this decision.