Midwestern Pet Foods Inc. v. Société des
Produits Nestlés S.A., Fed. Cir., No. 2011-1482, 7/9/12
Case Summary: The Federal Circuit rules that the TTAB did not err in
failing to exclude evidence that a party in an opposition proceeding had failed
to produce in response to discovery requests.
Key Takeaway: The court affirms the TTAB's refusal to register the mark
'Waggin' Strips' upon a finding of likelihood of confusion with 'Beggin'
By Anandashankar Mazumdar
There was sufficient evidence in the record to establish that the term
“Waggin' Strips” used in connection with pet treats would create a likelihood of
confusion with the existing “Beggin' Strips” trademark, the U.S. Court of
Appeals for the Federal Circuit ruled July 9 (Midwestern Pet Foods Inc. v. Société des Produits
Nestlés S.A., Fed. Cir., No. 2011-1482, 7/9/12).
Affirming the board's refusal to register, the court found that there was
sufficient evidence to support a finding of likelihood of confusion and no
reversible procedural error.
Société des Produits Nestlés S.A. is an entity affiliated with
Switzerland-based Nestlé S.A., a global consumer products company founded in
1867. Nestlé holds a U.S. trademark registration for the term “Beggin' Strips,”
which has been used since 1988 in connection with pet treats.
Midwestern Pet Foods Inc. based in Evansville, Ind., produces pet foods and
treats under the name “Pro Pac.” Midwestern submitted an application with the
Patent and Trademark Office to register the term “Waggin' Strips” for pet food
In 2005, Nestlé entered an opposition, asserting that registration of
Midwestern's Waggin' Strips mark would create a likelihood of confusion with its
“Beggin' Strips” mark. Nestlé also asserted a claim of trademark dilution.
The Trademark Trial and Appeal Board first rejected the dilution claim after
finding that Nestlé had failed to establish that “Beggin' Strips” was a famous
mark. However, the board found likelihood of confusion and sustained the
opposition, rejecting Midwestern's request for registration.
Judge William Curtis Bryson first rejected Midwestern's arguments that the
board had committed error in certain evidentiary matters.
Specifically, Midwestern objected to the admission of evidence by Nestlé
regarding its advertising, sales, and marketing related to the “Beggin' Strips”
mark. According to Midwestern, this evidence should not have been admitted
because Nestlé had failed to produce it in response to Midwestern's discovery
First, the court said, this opposition was initiated prior to 2007, when
mandatory disclosure rules were adopted by the board. Thus, Nestlé did not bear
the obligation to specify in advance of trial what evidence it intended to
present. Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d
2040 (T.T.A.B. 1989).
“For cases governed by the pre-2007 procedures, the Board has routinely held
that parties do not have a right to disclosure of the documents and witnesses
the opposing party intends to rely on at trial,” the court said.
In addition, the court noted that when Nestlé refused to produce certain
documents during discovery, under Trademark Manual of Board Procedure §523.04,
Midwestern bore the burden to move to compel disclosure or modify its
interrogatories if it was dissatisfied with Nestlé's responses.
Absent such objection from Midwestern, the court said, Nestlé did not face
the choice of either producing the documents during discovery or being barred
from entering them into evidence at trial.
“The Board has applied that principle consistently for years, even in cases
in which the party that objected to the production of the disputed materials
later sought to introduce some of the same materials at trial,” the court
To the extent that this procedure represented a departure from the Federal
Rules of Civil Procedure, the court said, the board had discretion to adopt its
Next, the court found no error in the board's admission of evidence of the
fame of Nestlé's mark when that evidence post-dated the filing of Midwestern's
However, the court said, the fact that such evidence did not exist prior to
Midwestern's filing was relevant only to the question of dilution, not to the
question of a likelihood of confusion. Post-filing evidence is indeed admissible
for the latter, the court said.
Finally, turning to the substantive question, the court found no error in the
board's finding of a likelihood of confusion.
The court affirmed the board's conclusions that the similarity of the goods,
the channels of trade, and the target consumers for the relevant Midwestern and
Nestlé goods weighed strongly in favor of confusion. Comparing the marks, the
[T]he two marks have the same format,
structure, and syntax. Both consist of two words. The second word in each mark
is identical. The first word in each mark ends with GGIN', the IN' being the
informal -IN' suffix of the present participle form of the verb. While the two
verbs are different, the verb in both marks consists of a single syllable, and
the marks have generally similar pronunciations, cadences, and intonations.
Beyond that, the verbs “wag” and “beg” both suggest dog behavior, and in
particular both convey the excitement exhibited by dogs during
That some similar third-party marks existed in the pet market--“Bark n
Bac'n,” “Waggin' Train Brand Woofles,” and “Mini Bacon Flavor Strips”--did not
weigh against Nestlé because either the marks or the products they were
associated with were substantially different so as not to be relevant to the
The court rejected Midwestern's argument that the failure of Nestlé to
present survey evidence killed its claim of likelihood of confusion. Given the
similarity of the goods in question, the similarity of the channels in trade,
and the relevant consumer market, the court said that there was sufficient
evidence to establish a likelihood of confusion even without survey
The court's opinion was joined by Senior Judge Haldane Robert Mayer.
Judge Timothy B. Dyk concurred with the likelihood of confusion portion of
the majority's opinion, but dissented on the evidentiary questions.
According to the dissenting opinion, discovery in opposition proceedings
before the board has been governed by the Federal Rules of Civil Procedure since
1972. Trademark Inter Partes Procedure, 37 Fed. Reg. 7,605 (Apr. 18, 1972), 37
The dissent said:
[T]he fact that the Board had not yet
adopted the automatic disclosure requirement at the time this case was filed
does nothing to undermine the fact that a party is required, under the pre-2007
document production provisions, to produce the documents on which it intends to
rely if so requested during discovery. The 2007 amendment does no more than
emphasize the importance of avoiding surprise in Board proceedings by requiring
parties to automatically produce the documents on which they intend to rely
“without awaiting a discovery request.”
Having asserted that the Federal Rules of Civil Procedure were thus
applicable, the dissent then stated that under Rule 26(e), Midwestern did not
bear the burden to move to compel production or waive its right to be aware of
evidence that Nestlé intended to enter at trial.
Thus, according to the dissent, the matter should be remanded back to the
board to consider whether Nestlé's evidence should have been excluded as a
sanction for violation of Rule 26(e).
Midwestern was represented by Timothy D. Pecseny of Blank Rome, Philadelphia.
Nestlé was represented by Thomas A. Polcyn of Thompson Coburn, St. Louis.
Opinion at http://pub.bna.com/ptcj/MidwesternJuly9.pdf