Nestlé Did Not Violate Discovery Rules In Opposing Registration of ‘Waggin' Strips

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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.

'Beggin' Strips' in Commerce Since 1988.

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 and treats.

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.

Midwestern appealed.

No Error by Board in Evidentiary Matters.

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 requests.

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 said.

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 own rules.

Date of Evidence Not Relevant for Confusion.

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 registration application.

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.

Likelihood of Confusion Supported by Evidence.

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 court said:

[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 feeding.  


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 instant matter.

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 evidence.

The court's opinion was joined by Senior Judge Haldane Robert Mayer.

Dissent on Evidentiary Grounds.

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 C.F.R. §2.120.

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.

By Anandashankar Mazumdar  

Opinion at

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