United States: Grrrr . . . Paw Print Trademarks Can Co-Exist

Jack Wolfskin Ausrustung Fur Draussen GmbH & Company KGAA v. New Millennium Sports, S.L.U.

On appeal from the Trademark Trial and Appeal Board (TTAB or Board), the U.S. Court of Appeals for the Federal Circuit reversed the Board's decision on the issue of likelihood of confusion with regard to two parties' paw print trademarks explaining that the Board did not properly compare the parties' marks as a whole and failed to give proper weight to "significant evidence" of paw prints appearing in third-party trademark registrations in connection with clothing. However, the court affirmed the Board's dismissal of a cancellation claim. Jack Wolfskin Ausrustung Fur Draussen GmbH & Company KGAA v. New Millennium Sports, S.L.U., Case No. 14-1789 (Fed. Cir, Aug. 19, 2015) (Chen, J.).

Outdoor apparel and clothing company, Jack Wolfskin, filed an application to register a "nonhuman paw print" design for use in connection with clothing goods and products for the outdoors. New Millennium Sports filed a Notice of Opposition at the TTAB opposing the registration of Jack Wolfskin's trademark application alleging a likelihood of confusion with New Millennium's prior trademark registration for its design mark comprising the stylized word "KELME" adjacent a paw print. In response, Jack Wolfskin filed a counterclaim for cancellation of New Millennium's registration, claiming that the company had abandoned use of the KELME & Paw Print Design mark.

The TTAB rejected the trademark cancellation counterclaim, finding that New Millennium did not abandon its trademark registration, and sustained the opposition on the grounds that Jack Wolfskin's paw print trademark was likely to cause consumer confusion with New Millennium's prior registration. Jack Wolfskin appealed.


On appeal, Jack Wolfson argued that New Millennium ceased using the registered version of its KELME & Paw Print Design trademark because the company was using a modified or modernized version of the trademark that was arguably different from the mark as depicted in the company's 1994 registration. The evidence before the Board suggested that the KELME & Paw Print Design trademark was used by New Millennium exactly as it appeared on its certificate of registration between the years 1994 to 2004, after which the design mark was changed slightly. In dismissing the cancellation counterclaim, the Board relied on the concept of "tacking," which provides a trademark owner the ability to rely on an earlier form of a mark when later using a modified version, so long as the modified version creates the same, continuous commercial impression as the registered mark.

The Federal Circuit agreed with the TTAB finding that any changes to the word element of the mark were "minor stylistic alterations." As for the paw print portion of the trademark, the court reaffirmed the Board's conclusion that the design could not be interpreted as anything other than a paw and determined that the modernized version of the full trademark created the same, continuous commercial impression.

Likelihood of Confusion

On the issue of likelihood of confusion, the Board considered seven relevant DuPont likelihood of confusion factors and concluded that the Jack Wolfskin paw print design mark "so closely resembles opposer's registered mark as to be likely to cause confusion . . . as to the source of applicant's goods." On appeal, Jack Wolfskin argued that the Board's conclusion was erroneous due to a lack of substantial evidence supporting two DuPont factors, namely, the similarity of the marks and the number and nature of similar marks in use in commerce.

The Federal Circuit agreed, noting that the similarity or dissimilarity of the marks should be compared in their entireties, and that it is improper to dissect a mark when it contains both text and design elements. The court also stated that the "verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed." In this regard, the court determined that the Board failed to account for the literal element of the KELME & Paw Print Design trademark and found no evidence to indicate that consumers recognize the paw print alone as being associated with New Millennium.

The Federal Circuit next looked at evidence demonstrating that numerous paw print design trademarks have been registered with the U.S. Patent and Trademark Office in connection with clothing goods. The Board gave this evidence little weight because there was no proof that such third-party marks were actually in use in commerce and because a large portion of the marks were used in connection with school athletic teams and pet-related goods. However, the Court found that the Board erred in its review of the evidence, and instead stated that the evidence of the third-party paw print trademarks demonstrates the degree to which such marks are used in "ordinary parlance." Because of the ubiquitous use of paw print trademarks in connection with clothing goods, the Court found that consumers are conditioned to look for differences in such "weak" marks, as well as additional indicia of origin, such as the dominant KELME portion of New Millennium's trademark. The Federal Circuit concluded that the Board's likelihood of confusion analysis was not supported by substantial evidence and reversed and remanded for further consideration.

Practice Note: While a USPTO examining attorney or the TTAB may not always consider the existence of third-party trademark registrations to be persuasive in order to overcome a "likelihood of confusion" refusal, this case is an important reminder that such evidence can be highly effective when the marks at issue may be considered "weak" or relatively commonplace on the USPTO register and in commerce.

Grrrr . . . Paw Print Trademarks Can Co-Exist

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions