Midwestern Pet Foods, Inc. v. Societe Des Produits Nestle S.A.
685 F.3d 1046
Fed. Cir.2012Background
- Nestlé’s BEGGIN’ STRIPS is a long-used registered mark (since 1989) for pet treats; Midwestern sought to register WAGGIN’ STRIPS for similar goods.
- Midwestern’s discovery requests to Nestlé were met with objections, promises to produce non-privileged documents, and a protective order; Midwestern did not compel production or narrow requests.
- The TTAB heard evidence from Nestlé (advertising, sales, marketing, fame) and Midwestern (limited objections) and upheld likelihood of confusion.
- The Board relied on discovery responses and deemed that Midwestern waived objections by not moving to compel production.
- The Board later allowed Nestlé to use post-application fame evidence for likelihood of confusion (not for dilution).
- Midwestern challenges the Board’s discovery rulings and the admissibility of Nestlé’s post-application fame evidence; the majority affirms the Board’s decision on likelihood of confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Nestlé’s post-application fame evidence was properly considered | Midwestern argues post-application fame is improper for likelihood of confusion | Nestlé contends post-application fame is relevant to likelihood of confusion | Yes, permissible for confusion analysis |
| Whether the Board erred in admitting Nestlé’s discovery-related evidence | Midwestern contends Nestlé violated discovery and supplementation rules | Nestlé argues pre-2007 rules allowed discretion and no mandatory disclosure | No reversible error; Board did not abuse discretion |
| Whether the Board properly found a likelihood of confusion between WAGGIN’ STRIPS and BEGGIN’ STRIPS | Midwestern argues marks are not sufficiently similar | Nestlé argues marks are similar in overall commercial impression and goods are identical | Yes, likelihood of confusion supported by substantial evidence |
| Whether evidence of third-party marks undermines likelihood of confusion | Midwestern claims numerous similar marks weaken Nestlé’s claim | Most third-party marks are dissimilar or not relevant | Yes, not persuasive |
Key Cases Cited
- Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367 (Fed. Cir. 2002) (fame measured by sales and advertising, broad protection for strong marks)
- Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369 (Fed. Cir. 2005) (fame varies along a spectrum; strong marks get broader protection)
- Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164 (TTAB 2001) (evidence of fame not strictly prefiling required for confusion)
- Charrette Corp. v. Bowater Communications Papers, Inc., 13 U.S.P.Q.2d 2040 (TTAB 1989) (pre-2007 discovery rules allowed different disclosure practices)
- Time Warner Entm’t Co. v. Jones, 65 U.S.P.Q.2d 1650 (TTAB 2002) (Board procedure and disclosure practices)