Recot, Inc. (“Recot”) opposes the application of M.C. Becton (“Becton”) to register the mark FIDO LAY for natural agricultural products, namely edible dog treats. The Trademark Trial and Appeal Board (“Board”) dismissed the opposition on the ground that there was no likelihood that consumers would confuse FIDO LAY with Recot’s FRITO-LAY marks.
See Recot, Inc. v. Becton,
Opposition No. 96,518,
I
Recot owns six federal registrations for the mark FRITO-LAY and related marks, all of which are incontestable, as illustrated below:
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Five of the registrations are for use with a wide range of snack foods, including numerous varieties of chips, pretzels, crisps, crackers, dips, salsas, cookies, and like foods. One registration is for use with several nonfood items, such as housewares, clothing, caps, lapel pins, stationery, and totebags.
*1326 Recot, through its predecessors in interest and through its affiliated company Frito-Lay, Inc. (collectively referred to as “Recot”), has manufactured and sold a wide variety of snack food under its mark, FRITO-LAY, for over thirty years. Recot now sells FRITO-LAY products nationwide in supermarkets, grocery stores, mass merchandisers and wholesale clubs, convenience stores, food services, and vending machines. In 1995, retail sales of FRITO-LAY products exceeded $6 billion, and FRITO-LAY products enjoyed a greater than 50 percent market share in the estimated $12.1 billion domestic snack chip industry. In any given year, up to 90 percent of American households purchase at least one FRITO-LAY brand snack. Recot spent about $80 million in 1996 on advertising and promotion for products with the FRITO-LAY mark. Recot also licenses for manufacture, promotion, and sale many widely varying goods bearing the FRITO-LAY mark, such as housewares, stationery, and clothing.
The applicant, Becton, sells natural dog treats — pig’s ears, smoked turkey feet and the like-under the FIDO LAY mark in his pet food stores in the Birmingham, Alabama area and in Birmingham-area supermarkets. About 800-1100 units of FIDO LAY products have been sold. Becton also sells T-shirts and hats bearing the FIDO LAY mark.
In January 1994, Becton sought federal registration of its FIDO LAY mark. Re-cot opposed the mark as likely to cause confusion with its FRITO-LAY marks. The Board dismissed Recot’s opposition, holding that there was no likelihood of confusion between the marks. The Board found that applicant’s and opposer’s goods are “simply not identical, nor otherwise related.”
Recot,
II
The United States Patent and Trademark Office may refuse to register a trademark that so resembles a registered mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d) (1994). Whether a likelihood of confusion exists is a question of law, based on underlying factual determinations.
See Lloyd’s Food Prods., Inc. v. Eli’s, Inc.,
Our review of the Board’s ultimate conclusion is plenary.
See Giant Food, Inc. v. Nation’s Foodservice, Inc.,
A
Recot argues that the Board failed to accord proper weight to the fame of the FRITO-LAY mark. The fifth
DuPont
factor, fame of the prior mark, when present, plays a “dominant” role in the process of balancing the
DuPont
factors.
See Kenner Parker,
The Board acknowledged that the fame of Recot’s mark was “unquestionably established,” and indeed, Becton conceded this fame. Yet the Board did not treat the fame factor as “important” in this case because the dog treats sold under the FIDO LAY mark are “completely unrelated” to the human snacks sold under the FRITO-LAY marks.
Recot,
The Board erred when it limited the weight accorded to the fame of the FRITO-LAY mark. We ■ think that the Board’s rule — that the fame of the FRITO-LAY marks extends no further than the products with which the marks are currently used — undercuts the legal standard of protection for famous marks. Famous marks are - accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark.
See Kenner Parker,
When an opposer’s trademark is a strong, famous mark, it can never be “of little consequence.” The fame of a trademark may affect the likelihood purchasers will be confused inasmuch as less care may be taken in purchasing a product under a famous name.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
This reasoning applies with equal force when evaluating the likelihood of confusion between marks that are used with goods that are not closely related, because- the fame of a mark may also affect the likelihood that consumers will be confused when purchasing these products. Indeed, it is precisely these circumstances which demand great vigilance on the part of a competitor who is approaching a famous mark, for, as the present case illustrates, the lure of undercutting or dis
*1328
counting the fame of a mark is especially seductive.
See Recot,
slip op. at 19 (“It is applicant’s position that opposer’s marks are famous for a variety of human food products, but that the fame of opposer’s marks does not extend beyond that field.... ”). Accordingly, we hold that the fame of the mark must always be accorded full weight when determining the likelihood of confusion. When a famous mark is at issue, a competitor must pause to consider carefully whether the fame of the mark, accorded its full weight, casts a “long shadow which competitors must avoid.”
Kenner Parker,
The Board also erred when it distinguished this court’s precedent on the ground that our prior cases concerned products that were identical or closely related. Indeed, this court and its predecessor court have consistently stated that fame of the mark is a dominant factor in the likelihood of confusion analysis for a famous mark, independent of the consideration of the relatedness of the goods.
See, e.g., American Sugar Refining Co. v. Andreassen,
B
The next
DuPont
factor we consider is the “relatedness of the goods.”
DuPont,
The Board erred when it refused to consider the lay evidence that several large companies produce and sell both pet and human food in deciding whether a consumer would reasonably believe that FIDO LAY dog treats originated from the same source as FRITO-LAY human snacks. Indeed, the evidence seems extremely pertinent to the question of whether, absent any evidence of current
*1329
use of the FRITO-LAY marks for pet food, a consumer would likely think that FRITO-LAY produced, sponsored, or licensed its mark for use for pet snack products.
See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc.,
C
Recot asserts that the Board erred when it considered the fourth
DuPont
factor, the conditions under which, and buyers to whom, sales are made. The Board acknowledged the evidence that both Recot’s and Becton’s goods are inexpensive and may be purchased on impulse, but without explanation accorded this factor less weight based on its conclusion that the goods were unrelated. When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.
See Kimberly-Clark Corp. v. H. Douglas Enter., Ltd.,
D
Recot argues that the Board erred because it improperly dissected the mark by considering only the connotation of the marks when considering the first
DuPont
factor, the similarity or dissimilarity of the marks. We agree with Recot. The similarity or dissimilarity of the marks in their entirety is to be considered with respect to appearance, sound, and connotation.
See DuPont,
In this case, however, the Board only considered the connotation of part of the marks — FRITO having a different connotation than FIDO — before concluding that the marks were very dissimilar, and had different commercial impressions.
See Recot,
Ill
Recot perceives two additional flaws in the Board’s decision. First, Recot argues that the Board erred in finding that Becton adopted FIDO LAY in good faith. Instead, Recot thinks that Becton simply copied the FRITO-LAY mark. Before the Board, Becton testified that his stepson came up with the idea of the mark one day at the pet store, when he offered a customer’s dog a tasty treat, commanding “Fido! Lay!” to get the dog to behave. Although Becton admitted that he knew of the FRITO-LAY mark, he testified that FIDO LAY “just rang a bell” that day in the pet shop.
The Board found no reason to reject Becton’s mark origin explanation. Recot asks us, as it asked the Board, to reject Becton’s explanation as far-fetched, and to rule that Becton simply purloined FIDO LAY from Recot’s mark. We decline Re-cot’s invitation. Absent a showing that Becton’s explanation is untrue, Recot fails to bolster its claim to a likelihood of confusion between the marks. Because we do not reverse the Board’s finding, we need not reach Recot’s argument that, as a matter of law, evidence of intent to copy should give rise to a presumption of a likelihood of confusion.
Second, Recot asserts that the Board erred in failing to give it any benefit under the
DuPont
factor that considers channels of trade. Since the goods to which the marks are applied in this case are sold in like channels of trade, such as supermarkets, Recot argues that it should have received credit for its position under the channels of trade consideration. The Board did not weigh this factor in Recot’s favor, because the law is that products should not be deemed related simply because they are sold in the same kind of establishments.
See Federated Foods, Inc. v. Fort Howard Paper Co.,
CONCLUSION
Because the Board improperly discounted the fame of the FRITO-LAY marks, did not consider all of the relevant evidence when determining if the products were related, and improperly dissected the marks, we vacate the Board’s decision and remand the case to the Board for further proceedings consistent with this decision.
COSTS
No costs.
VACATED AND REMANDED