Brainy Bytes, LLCv.Mindworx Educational Services

Trademark Trial and Appeal Board

May 23, 2019

91233793 (T.T.A.B. May. 23, 2019)

Mailed: May 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Brainy Bytes, LLC
v.
Mindworx Educational Services
_____

Opposition No. 91233793
_____

Michael R. Hirsh of Hirsh & Heuser, LLC
for Brainy Bytes, LLC.

James T. Hollin, Jr. of J. T. Hollin Attorney at Law, P.C.
for Mindworx Educational Services.
_____

Before Bergsman, Shaw and Adlin, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Mindworx Educational Services (Applicant) seeks registration on the Principal
Register of the mark BRAIN BITES (in standard character form) for “printed
teaching materials in the field of gifted education, special education and general
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91223793

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education that promotes critical thinking and problem solving skills for 21st Century
Learning geared toward teachers, students and parents in grades K-12,” in Class 16.1
Brainy Bytes, LLC (Opposer) filed a Notice of Opposition to registration of
Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based
on Opposer’s previously-used mark BRAINY BYTES for “after-school classes,
summer camps, year round camps, workshops, and 1st through 12th grade classroom
instruction for children in STEM (Science, Technology, Engineering, and Math).”2
Applicant, in its Answer, denied the salient allegations in the Notice of Opposition.
Also, Applicant alleged 18 purported “affirmative defenses” which are merely
amplifications of its defense to Opposer’s Notice of Opposition.
I. Preliminary Issues
A. Unpleaded Laches Defense
Applicant, in its brief, asserted the affirmative defense of laches.3 Applicant did
not plead laches as an affirmative defense in its Answer and never filed a motion to
amend its Answer to assert laches as an affirmative defense. Because Applicant failed
to plead laches as an affirmative defense and because laches was not tried by express
or implied consent, Applicant is precluded from asserting and relying on the
affirmative defense of laches. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715,
1720 (TTAB 2008) (an unpleaded defense cannot be relied on by defendant unless the

1 Serial No. 86567412, filed March 17, 2015, under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere as of August 1, 2014
and first use in commerce as of February 9, 2015.
2 Notice of Opposition ¶7 (1 TTABVUE 4).
3 Applicant’s Brief, p. 11 (28 TTABVUE 12).
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defendant’s answer is amended or deemed amended pursuant to Fed.R.Civ.P. 15(a)
or 15(b)); U.S. Olympic Comm. v. Bata Shoe Co., Inc., 225 USPQ 340, 341 (TTAB
1984) (“Since respondent has failed to plead this defense [laches] in its answer, it may
not now be heard to argue laches in response to petitioner’s motion for summary
judgment.”); Primal Feeling Ctr. of New England Inc. v. Janov, 201 USPQ 44, 57 n.9
(TTAB 1978) (laches raised for the first time in defendant’s brief cannot be considered
because it was not pleaded).
In any event, in a trademark opposition proceeding, laches cannot start to run
until the mark is published for opposition. Nat’ Cable Tele. Assoc., Inc. v. Am. Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). Before
publication, no opposition is possible. Thus, where the Notice of Opposition is timely
filed, Applicant is precluded from asserting laches because there is no delay, let alone
undue delay, in filing the Notice of Opposition. See DAK Indus. Inc. v. Daiichi Kosho
Co., Ltd., 25 USPQ2d 1622, 1624 (TTAB 1993).
B. Applicant’s fraud claim.
Applicant, in its brief, for the first time, raises the issue that “The Opposer
Fraudulently Listed An Incorrect First Date Of Use In The Second Application for
Trademark.”4 As best we understand the claim, Applicant is arguing that in filing its
application for the mark BRAINY BYTES (Serial No. 86971627), Opposer claimed a
date of first use based upon Opposer’s use of BRAINY BYTES TECH FOR KIDS even
though Opposer has never used BRAINY BYTES as a standalone mark.

4 Applicant’s Brief, p. 16 (28 TTABVUE 17).
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Applicant did not plead fraud as an affirmative defense in its Answer, nor did
Applicant seek to amend its Answer to plead such an affirmative defense. Further,
whether Opposer committed fraud was not tried by express or implied consent. Thus,
Applicant is precluded from relying this purported fraud claim. In any event, fraud
is not an available claim against a pending application.
Even were we to deem the notice of opposition amended so as to assert this basis,
if a mark was in use at the time an application is filed, a false claim as to the date of
first use does not constitute fraud. See Hiraga v. Arena, 90 USPQ2d 1102, 1107
(TTAB 2009) (false dates of use are not a proper basis for a claim alleging fraud on
the USPTO); Western Worldwide Enterprises Group Inc. v. Qingdao Brewery, 17
USPQ2d 1137, 1141 (TTAB 1990) (“The Board repeatedly has held that the fact that
a party has set forth an erroneous date of first use does not constitute fraud unless,
inter alia, there was no valid use of the mark until after the filing of the [Section 1(a)]
application.”). That is because the USPTO does not rely on the dates of use claimed
by an applicant in an application. See Trademark Rule 2.122(b)(2), 37 C.F.R. §
2.122(b)(2) (“The allegation in an application for registration, or in a registration, of
a date of use is not evidence on behalf of the applicant or registrant; a date of use of
a mark must be established by competent evidence.”).
We analyze Opposer’s purported use of BRAINY BYTES in our analysis of priority
discussed below.
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C. Applicant’s claim that Opposer lacked a bona fide intent to use the mark
BRAINY BYTES in commerce.
Applicant argues that “Opposer has not alleged an intent to use its pending mark
‘BRAINY BYTES’ in commerce.”5 That is because Opposer is relying on its common
law rights in and actual use of the mark BRAINY BYTES for unique and
customizable after-school classes, summer camps, year round camps, workshops, and
1st through 12th grade classroom instruction for children in STEM (Science,
Technology, Engineering, and Math) subjects” since at least as early as July 18,
2014.6
We analyze Opposer’s purported use of BRAINY BYTES in our analysis of priority
discussed below.
D. Evidence attached to Applicant’s Brief.
Applicant attached exhibits to its brief. It attached: (i) a copy of the prosecution
history of Opposer’s application Serial No. 86334767; (ii) the prosecution history of
the application at issue; and (iii) a copy of the ESTTA cover sheet for the Notice of
Opposition filed by Tech 4 Kids, Inc. against Opposer’s application Serial No.
86334767. A brief may not be used to introduce evidence. Exhibits and other
evidentiary material attached to a party’s brief can be given no consideration unless
they were properly made of record during the time for taking testimony. See Syngenta
Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009); Bass
Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1848

5 Applicant’s Brief, p. 12 (28 TTABVUE 13).
6 Notice of Opposition ¶¶7 and 8 (1 TTABVUE 4).
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(TTAB 2008); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB
2008). Accordingly, the exhibits attached to Applicant’s brief will be given no
consideration unless they were properly introduced during the parties’ testimony
periods.7
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The parties introduced the following
testimony and evidence.
A. Opposer’s testimony and evidence.
1. The testimony declaration of Ena Hackaday, Opposer’s founder and
Managing Member;8

2. The discovery deposition of Dr. Sheila Walden, Applicant’s President;9

7 Pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of each application
specified in the Notice of Opposition forms part of the record of the proceeding without any
action by the parties and reference may be made to the file for any relevant and competent
purpose.
8 20 TTABVUE.
9 20 TTABVUE 8-146. Opposer introduced the Walden discovery deposition as Exhibit 1 to
the Hackaday Testimony Declaration rather than through a notice of reliance pursuant to
Trademark Rule 2.120(k)(1), 37 C.F.R. § 2.120(k)(1) (The discovery deposition of a party or of
anyone who at the time of taking the deposition was an officer, director or managing agent
of a party, or a person designated by a party pursuant to Rule 30(b)(6)or Rule 31(a) of the
Federal Rules of Civil Procedure, may be offered in evidence by an adverse party.”).
Opposer introduced the entire discovery deposition even though only a small portion was
relevant. In order to avoid creating an overly large record of irrelevant evidence, parties
should, where appropriate, file only those portions of a discovery deposition transcript that
are relevant to the pleaded claims, counterclaims, or affirmative defenses. See Sports
Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 (TTAB 2001) (“[E]ach
party has submitted discovery deposition transcripts in toto, i.e., has made no apparent effort
to identify and introduce only those portions that are relevant to our determination of the
pleaded claims. While not improper, it is more effective to file only those portions that are
relevant and explain their relevancy in the notice of reliance”) (citing Wear-Guard Corp. v.
Van Dyne-Crotty Inc., 18 USPQ2d 1804, 1805 n.1 (TTAB 1990) and Marion Labs. Inc. v.
Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1217 n.9 (TTAB 1988)).
Opposition No. 91223793

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3. Notice of reliance on Opposer’s application Serial No. 86334767 for the
mark BRAINY BYTES TECH 4 KIDS and design;10 and

4. Notice of reliance on Opposer’s application Serial No. 86971627 for the
mark BRAINY BYTES.11

B. Applicant’s testimony and evidence.
1. Testimony declaration of Dr. Sheila Walden;12
2. Testimony declaration of Brittne R. Walden, Dr. Walden’s daughter;13
3. Testimony declaration of Lisa Butler, a friend and colleague of Dr.
Walden;14
4. Notice of reliance on Opposer’s responses to Applicant’s first requests for
admission;15

10 19 TTABVUE 2. Because Opposer did not introduce a copy of the application, we cannot
consider it. The Board does not take judicial notice of records that reside in the USPTO. See
Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (“[W]e do not rely on
petitioner’s application for registration because petitioner did not properly introduce his
pending application, nor did petitioner introduce, by testimony or documentation, evidence
that the application was refused and suspended pending the outcome of this cancellation
proceeding”); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1485 n.4
(TTAB 2007) (refusing to take judicial notice of applications and registrations filed by the
same applicant); Beech Aircraft Corp. v. Lightning Aircraft Co. , 1 USPQ2d 1290, 1293 (TTAB
1986) (“[T]he Board does not take judicial notice of application and registration files that
reside in the Patent and Trademark Office.”).
11 19 TTABVUE 2. Because Opposer did not introduce a copy of the application, we cannot
consider it. See footnote 10.
12 23 TTABVUE 2-20.
13 23 TTABVUE 21-22.
14 23 TTABVUE 23-24.
15 24 TTABVUE 7-23. Denials to admission requests cannot be submitted under notice of
reliance. See Ayoub, Inc. v. ACS Ayoub Carpet Servs., 118 USPQ2d 1392, 1395 n.9 (TTAB
2016); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 n.11 (TTAB
2015) (Board considered only opposer’s admissions, not denials, in response to applicant’s
requests for admission); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1477 (TTAB 2014)
(objection to submission of denial to admission request sustained; “rule does not extend to
Opposition No. 91223793

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5. Notice of reliance on Opposer’s supplemental responses to Applicant’s first
requests for admission;16
6. Notice of reliance on Opposer’s responses to Applicant’s first request for
production of documents;17 and
7. Notice of reliance on Opposer’s responses to Applicant’s first set of
interrogatories.18
III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has “both a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis for
its belief of damage.” See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).

denials”); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 (TTAB 2008) (denials
to requests for admission inadmissible). Unlike an admission, the denial of a request for
admission establishes neither the truth nor the falsity of the assertion, but rather leaves the
matter for proof at trial. See Life Zone Inc., 87 USPQ2d at 1957 n.10.
16 24 TTABVUE 25-26.
17 24 TTABVUE 27-40. Responses to document production requests are admissible solely for
the purpose of showing that a party stated that there are no responsive documents. See City
Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB
2013); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written
responses to document requests indicating that no documents exist may be submitted by
notice of reliance); Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1217
n.8 (TTAB 2011).
18 24 TTABVUE 41-47.
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Ena Hackaday, Opposer’s founder and Managing Member, testified that
1. Opposer is “a curriculum writing, technology, and education company that
provides education services and instruction to K-12th grade students.”;19
2. Opposer began using BRAINY BYTES as a trademark in “early 2014”;20 and
3. Opposer “offers STEM courses and curriculum to the general public through
its website (www.brainy-bytes.com) and instructor led classes in after-school
programs, birthday parties, and summer camps.”;21 and
This testimony is sufficient to prove that Opposer has a real interest in the
proceeding and that Opposer will be damaged by the registration of Applicant’s mark.
See Giersch v. Scripps Networks, 90 USPQ2d at 1022 (common law use sufficient to
establish standing). Therefore, Opposer has proven its standing.
IV. Priority
In order for Opposer to prevail on its Section 2(d) claim, it must prove that it has
a proprietary interest in the BRAINY BYTES mark and that it obtained that interest
prior to the actual or constructive first use by Applicant of Applicant’s mark BRAIN
BITES. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209
USPQ 40, 43 (CCPA 1981); Life Zone, 87 USPQ2d at 1959; Larami Corp. v. Talk to
Me Programs Inc., 36 USPQ2d 1840, 1845 (TTAB 1995). Miller Brewing Co. v.
Anheuser-Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).

19 Hackaday Testimony Decl. ¶2 (20 TTABVUE 2).
20 Hackaday Testimony Decl. ¶4 (20 TTABVUE 2).
21 Hackaday Testimony Decl. ¶5 (20 TTABVUE 3).
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These proprietary rights may arise from a prior
registration, prior trademark or service mark use, prior use
as a trade name, prior use analogous to trademark or
service mark use, or any other use sufficient to establish
proprietary rights.
Herbko Int’l, 64 USPQ2d at 1378.
Since Applicant’s constructive date of first use is March 17, 2015, the filing date
of its application, Opposer must prove that it used its mark BRAINY BYTES prior to
that date. As noted above, Ena Hackaday testified that “[i]n early 2014 [Opposer] was
formed … and the company began using the mark BRAINY BYTES in a trademark
manner to our customers, vendors, and the general public.”22
7. On July 18, 2014, I sent out an email flier to our
customers and prospects via email that announced the
public launch of the name and the mark BRAINY BYTES.
Attached hereto as Exhibit 2 is a true and correct email
announcement advertising a launch event for home
schooling and after school classes to be held in the Fall of
2014. At the launch event, materials were distributed to
attendees that included the BRAINY BYTES mark. I also
distributed “Event Registration Forms” that made use of
the BRAINY BYTES mark.23
However, Exhibit 2 does not display the BRAINY BYTES mark.24 Accordingly,
Opposer did not prove that it first used BRAINY BYTES at that time.

22 Hackaday Testimony Decl. ¶4 (20 TTABVUE 2).
23 Id. at ¶7 (20 TTABVUE 3).
24 Id. at 20 TTABVUE 147.
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On the other hand, Hackaday Exhibit 5 are two invoices dated September 9, 2014
and September 30, 2014, for classes in “Fall 2014.”25 The relevant portion of one of
the invoices is reproduced below:26

Hackaday Exhibit 10 includes an email booking “Steven’s 11th Birthday Party
with Brainy Bytes” on September 6, 2014 and a copy of the PayPal receipt.27
Finally, Hackaday Exhibit 15 is an invoice dated December 9, 2014 displaying
BRAINY BYTES as reproduced below:28

25 Id. at ¶11 and Exhibit 5 (20 TTABVUE 4 and 152-153).
26 Id. at 20 TTABVUE 153. The use of BRAINY BYTES, LLC on the invoice is service mark
use, as well as trade name use which is sufficient to support a priority claim. Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d) provides that no mark shall be registered which so
resembles a mark or trade name previously used in the United States that it is likely to cause
confusion.
27 Id. at 20 TTABVUE 169-170. This email exchange shows that 11 year old Steven’s parents
perceive BRAINY BYTES to be Opposer’s service mark.
28 Id. at 20 TTABVUE 179.
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Use of a mark in connection with services requires that the services be performed
for others. See Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301,
1305 (Fed. Cir. 2009) (the use requirement for service marks is met when (i) the mark
is “used or displayed in the sale or advertising of services” and (ii) the services are
“rendered in commerce”); see also Lyons v. Am. Coll. of Veterinary Sports Med. &
Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1027 (Fed.Cir. 2017) (“[T]o meet the use
requirement for a service mark, an applicant must use the mark in advertising or sale
of a service, and show that the service was actually rendered in interstate commerce
or in more than one state, or in this and a foreign country, by a person engaged in
commerce.”); Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed.
Cir. 2015) (use in commerce means that the mark must be used in conjunction with
the services described in the application).
Use in commerce. The term “use in commerce” means the
bona fide use of a mark in the ordinary course of trade, and
not made merely to reserve a right in a mark. For purposes
of this chapter, a mark shall be deemed to be in use in
commerce—
(2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one
State or in the United States and a foreign country and the
person rendering the services is engaged in commerce in
connection with the services.
Section 45 of the Trademark Act, 15 U.S.C. § 1127. Thus, it is not enough that
Opposer used BRAINY BYTES to merely advertise its services, Opposer must have
actually performed the services. In this regard, we find that Opposer’s priority date
is September 6, 2014, “Steven’s 11th Birthday Party with Brainy Bytes.”
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Because Opposer’s September 6, 2014 priority date is earlier than Applicant’s
March 17, 2015 application filing date, i.e. its constructive first use date, Applicant
must prove an actual date of first use prior to September 6, 2014. In her discovery
deposition, Dr. Walden’s testimony about Applicant’s first use of the BRAIN BITES
mark was not consistent, it was unclear, and it was unconvincing. Dr. Walden did not
know whether Arrowhead Printing first printed flyers and brochures displaying the
mark BRAIN BITES in 2014 or 2015.29 She testified that she started advertising
BRAIN BITES at conferences in June or July 2014, noting that she was “working on
it all summer” “prior to using it in the classroom for that school year.”30 If we
understand correctly, she was advertising the unfinished BRAIN BITES materials at
conferences “prior to when it was used in commerce.”31
Q. When do you recall was your first opportunity to sell
something that was branded as Brain Bites? To
actually to have a product to sell that was labeled
Brain Bites?
A. Like I said, I did a workshop with the teachers in the
county. That was prior to the conference in March.
Q. March of what year?
A. 2015.
Q. Okay.
A. So I know I sold it at that conference. But prior to
that when I had it printed up in 2014, I did a

29 Walden Discovery Dep., p. 56 (20 TTABVUE 63).
30 Walden Discovery Dep., pp. 73-75 (20 TTABVUE 80-82).
31 Walden Discovery Dep., p. 76 (20 TTABVUE 82); see also id. at p. 91 (20 TTABVUE 98) (“I
would say, Applicant started using the Challenged Mark prior to July 14, prior to offering or
commercially.”).
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conference with my gifted teachers and so I sold it
then in 2014.
Q. When was that conference with your gifted teachers?
A. It was - - it was after school started. It was August,
September 2014.32
* * *
Q. When - - tell me the details surrounding your first
use of the term with - - first use of the materials with
the term Brainy - - Brain Bites on them.
A. The circumstances?
Q. Where were you? How were you using it?
A. I was in the classroom. I was in the classroom. And,
like I said, I was using the program. And it just said,
you know - - I was thinking - - teaching 21st century
skills one bite at a time. And that’s - - they’re bites,
so I was teaching information. So - -
Q. Okay.
A. - - and that’s how it came about.
Q. All right.
A. You know, little bites of information.
Q. All right. And just to make sure I understand, that
was not - - that was just handwritten material from
you in those first uses; is that correct?
A. Yes.
Q. All right. Was -- were you paid for those during that
time for those classes that you were teaching?
A. At that time I was in my classroom teaching.
Q. Okay. That was your teaching job?

32 Walden Discovery Dep., pp. 78-79 (20 TTABVUE 85-86).
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A. Yes. That was my teaching job, yes.33
Upon subsequent questioning regarding her response to Opposer’s interrogatory
in which Dr. Walden stated that Applicant “started using the challenged mark
[BRAIN BITES] in the classroom July 14, 2014 prior to offering it commercially,”34
Dr. Walden testified that she could not “unequivocally say” that Applicant used the
mark on that date.35 Dr. Walden testified that it would be accurate to say that
“Applicant started using the Challenged Mark prior to July 14, prior to offering it
commercially.”36 She did not remember the exact date.37 In fact, Dr. Walden could not
recall why she chose July 14, 2014 as Applicant’s date of first use anywhere.38 Nor
could she explain why she selected February 9, 2015 as the date Applicant first used
BRAIN BITES in commerce.39
Q. For the July 14th, 2014 date that you have listed in
your discovery answers and your questions, do you
have any written documentation that would
substantiate or tend to substantiate that for use of
the Brain Bites Mark?
A. I don’t know.

33 Walden Discovery Dep., pp. 94-95 (20 TTABVUE 101-102).
34 Walden Discovery Dep., p. 81 (20 (TTABVUE 88).
35 Walden Discovery Dep., pp. 87-88 (20 TTABVUE 94-95) (“I can’t say that it was used on
July - - whatever that date - - on that day. I can’t say that. It used on that date prior to going
commercially. It was used in 2014 - - early 2014 - - and as I said earlier.”); see also id. at p.
91 (20 TTABVUE 98).
36 Walden Discovery Dep., pp. 91-92 (20 TTABVUE 98-99).
37 Walden Discovery Dep., p. 92 (20 TTABVUE 99).
38 Walden Discovery Dep., pp. 97-99 (20 TTABVUE 104-106).
39 Walden Discovery Dep., pp. 101-103 (20 TTABVUE 108-110).
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Q. And I gave a litany of examples; checks, invoices, e-
mails, memos, written letters, credit card
statements, anything?
A. At this point I don’t know.40
* * *
Q. Same question for the day that you put as your first
use in commerce on your trademark application,
which was 2/9/2015. In your searching through
documents in preparation for providing documents
to us through the discovery process, did you find any
documents, checks, invoices, et cetera that
substantiated that 2/9/2015 date?
A. I do not recall at this time.41
* * *
Q. The first time you sold the book; Brain Bite book on
your website?
A. I don’t recall the date, yeah. I don’t.
* * *
Q. Do you recall the first sale of a Brain Bite book on
Amazon?
A. I do not recall the date. Yeah. I do not, yeah.42
During Applicant’s testimony period, Dr. Sheila Walden, Applicant’s President
testified that

40 Walden Discovery Dep., p. 105 (20 TTABVUE 112).
41 Walden Discovery Dep., p. 107 (20 TTABVUE 114).
42 Walden Discovery Dep., p. 109 (20 TTABVUE 116).
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1. Her daughter Brittne Walden conceived the mark “in the late Spring of 2014”;43
and
2. Applicant has made “continued and consistent use of the mark, “BRAIN
BITES,” since and before the first date of use, as shown on the USPTO
application.”44
Lisa Butler, Dr. Walden’s friend and colleague, testified that in the Spring of 2014
she noticed that Dr. Walden was using BRAIN BITES “as a descriptive title of her
educational materials”45 and attempting to sell BRAIN BITES educational
materials.46Also, Brittne Walden testified that “[b]eginning in 2015, I personally
observed Dr. Walden extending efforts to sell and market her educational training
materials in various school districts, under the marketing name of BRAIN BITES.”47
Dr. Walden’s Exhibit D is “advertising and marketing materials concerned with
the BRAIN BITES business.”48 Only the Amazon.com webpage has a date: 2015.49
The first problem we have with Dr. Walden’s testimony is that she never expressly
stated how Applicant used BRAIN BITES as a trademark so as to fall within the

43 S. Walden Testimony Decl. ¶5 (23 TTABVUE 3); see also B. Walden Testimony Decl. ¶3 (23
TTABVUE 21) (“During summer 2014, I communicated to Dr. Walden my concept of her
using the trade name, ‘BRAIN BITES’ as descriptive of her educational training materials.”).
44 S. Walden Testimony Decl. ¶25 (23 TTABVUE 6-7). In the application, Applicant claims
first use anywhere as of August 1, 2014 and first use in commerce as of February 9, 2015.
45 Butler Testimony Decl. ¶4 (23 TTABVUE 23).
46 Id. at ¶5 (23 TTABVUE 23).
47 B. Walden Testimony Decl. ¶4 (23 TTABVUE 21).
48 S. Walden Testimony Decl. ¶20 (23 TTABVUE 5-6 and 15-18).
49 Id. at 23 TTABVUE 15.
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definition of “use” as set forth in the Trademark Act as discussed above. In other
words, Dr. Walden has not persuaded us that she understands the meaning of
trademark use. This is especially concerning because Dr. Walden testified that
Applicant started using BRAIN BITES prior to offering it commercially. This creates
doubt as to whether Dr. Walden knows the meaning of trademark use, and we do not
know when Applicant started using BRAIN BITES in commerce.
Also, after her discovery deposition and during Applicant’s testimony period, Dr.
Walden had the opportunity to clarify her understanding of trademark use and to
explicitly testify as to when Applicant first used the mark BRAIN BITES anywhere
and in commerce. Dr. Walden testified that “[c]ontrary to previous admissions and
earlier testimony by me …”, her daughter Brittne Walden conceived the mark BRAIN
BITES during the late Spring of 2014.50 Dr. Walden doubled down on her discovery
testimony affirming the dates of first use set forth in Applicant’s trademark
application without testifying about what, if anything, she did to confirm those dates,
or if she even understood the meaning of trademark use.51

50 S. Walden Testimony Decl. ¶5 (23 TTABVUE 3). Trademark rights are not created by the
conception of using a word or term as a trademark; trademark rights require use in trade.
Aycock Eng’g, 90 USPQ2d at 1306-07 (“[m]ere adoption (selection) of a mark accompanied by
preparations to begin its use are insufficient . . . for claiming ownership of and applying to
register the mark.”) (quoting Intermed Commc’ns, Inc. v. Chaney, 197 USPQ 501, 507 (TTAB
1977)); Hamilton Burr Publ’g Co. v. E.W. Commc’n, Inc., 216 USPQ 802, 805 (TTAB 1982);
Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 309 (TTAB 1979) (“[T]he fact
that a party first conceived the mark and discussed it and/or used it within an organization
or with persons outside of the organization, other than potential customers, in anticipation
of and in preparation for a subsequent use in trade does not constitute an ‘open’ use and
therefore is insufficient to establish priority of use as of the time of these activities.”); E.I. du
Pont de Nemours and Co. v. G.C. Murphy Co., 199 USPQ 807, 812 (TTAB 1978).
51 S. Walden Testimony Decl. ¶25 (23 TTABVUE 6-7).
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Further, Applicant’s other witnesses, Brittne Walden and Lisa Butler, testified
that they witnessed Applicant attempting to sell BRAIN BITES educational
materials; not that Applicant made any sales.52
Dr. Walden’s testimony about how Applicant used the mark BRAIN BITES in
2014 is vague and inconsistent and does not persuade us that Applicant made use of
the mark in commerce on educational materials sold to others. At best, Applicant
made use of the mark in August or September 2014 at a conference for teachers of
gifted students.53 In view of the uncertainty of Dr. Walden’s testimony and lack of
documentation, we find that Applicant’s date of first use can be no earlier than
September 30, 2014, the last day of the specified time period identified in Dr.
Walden’s testimony. See Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse,
Inc., 89 USPQ2d at 1856; EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213
USPQ 597, 598 n.5 (TTAB 1982) (documentary evidence showed first use in 1977, the
month and day were unknown, therefore, the Board could not presume any date
earlier than the last day of the proved period). See also Osage Oil & Trans., Inc. v.
Standard Oil Co., 226 USPQ 905, 911 n.22 (TTAB 1985) (evidence established first
use in 1968-1969, therefore December 31, 1969 is date of first use).
Finally, Ms. Butler’s testimony cannot be correct if Brittne Walden’s testimony
that she conceived the name BRAIN BITES in the Summer of 2014 is correct (Dr.

52 Butler Testimony Decl. ¶5 (23 TTABVUE 23); B. Walden Testimony Decl. ¶4 (23 TTABVUE
21).
53 Walden Discovery Dep., pp. 78-79 (20 TTABVUE 85-86).
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Walden testified that it was late Spring), so it is unclear whether Ms. Butler saw
Applicant using BRAIN BITES in the Spring of 2014.
Applicant argues that during discovery Opposer did not produce any documents
showing Opposer’s use of the mark BRAINY BYTES.54 However, Opposer’s responses
to Applicant’s request for production of documents indicate that Opposer produced
responsive documents when available.55 Because Applicant did not object to the
documents introduced in the Ena Hackaday testimony declaration, those documents
are properly of record and considered in our priority analysis.
Applicant also argues that Opposer has not shown that it has made use of the
mark BRAINY BYTES.56 As discussed above, we find that Hackaday Exhibit 10, an
email booking “Steven’s 11th Birthday Party with Brainy Bytes” on September 6,
2014 and a copy of the PayPal receipt,57 shows that at least one client perceives
BRAINY BYTES as Opposer’s service mark corroborating Opposer’s claim of common
law use of the mark BRAINY BYTES.
We find that Opposer has proven that it used its BRAINY BYTES mark prior to
Applicant’s constructive use or actual use.
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood

54 Applicant’s Brief, pp. 8-9 (28 TTABVUE 9-10).
55 14 TTABVUE 27-40.
56 Applicant’s Brief, p. 8 (28 TTABVUE 9).
57 Hackaday Testimony Decl. Exhibit 10 (20 TTABVUE 169-170).
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of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du
Pont factor that is relevant or for which there is evidence of record. See M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its
own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods’”) (quoting Herbko Int’l, 64 USPQ2d at 1380)).

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A. The strength of Opposer’s BRAINY BYTES mark, including the number of
similar marks in use in connection with similar services.

In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on
marketplace recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Top Tobacco, L.P. v. N. Atlantic Operating Co., Inc., 101 USPQ2d 1163,
1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent
strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”). Market strength
is the extent to which the relevant public recognizes a mark as denoting a single
source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899. In other words,
it is analogous to acquired distinctiveness. For purposes of analysis of likelihood of
confusion, a mark’s renown “varies along a spectrum from very strong to very weak.”
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted).

Opposition No. 91223793

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1. Inherent strength
BRAINY BYTES is an arbitrary term when used in connection with “after-school
classes, summer camps, year round camps, workshops, and 1st through 12th grade
classroom instruction for children in STEM (Science, Technology, Engineering, and
Math)” because the mark consists of “known word[s] used in an unexpected or
uncommon way.” Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330,
71 USPQ2d 1173 (Fed. Cir. 2004) (defining an arbitrary mark as a “known word used
in an unexpected or uncommon way” and observing that such marks are typically
strong); see also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are
conceptually strong trademarks).
2. Commercial strength
There is no testimony or evidence regarding the commercial strength of Opposer’s
BRAINY BYTES mark.
3. The number and nature of similar marks in use in connection with similar
goods or services.

There is no testimony or evidence regarding third-party use of BRAINY BYTES
or similar marks. However, Dr. Walden testified that she conducted a search of the
USPTO Trademark Electronic Search System (TESS) “and found several
trademark/service marks using the ‘common words and phrases’ disputed here that
are used by both Opposer and [Applicant].”58 Dr. Walden presented her findings in a

58 S. Walden Testimony Decl. ¶16 (27 TTABVUE 4-5).
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table comprising the serial number, registration number, if any, word mark, “check
status,” and Live/Dead.59 There were six third-party records: two active third-party
registrations, one inactive third-party registration, and three abandoned
applications.
A search summary, as introduced by Dr. Walden, is not sufficient to make the
third-party applications or registrations of record. See TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) § 704.03(b)(1)(B) (2018); see also Edom Labs.,
Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (listing of third-party marks
downloaded from Office database does not make registrations of record).
Because Dr. Walden did not include the description of goods or services in her
table, we do not know whether the registrations are relevant. See Nat’l Cable
Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 19 USPQ2d at 1430 (“None of the
third party marks and uses of ACE made of record are nearly as closely related to the
activities of the parties as the virtually identical uses of the parties are to each other.
Thus, we agree with the Board that nothing in the record shows a narrowing of
Editors’ identification with A.C.E./ACE by third party marks with respect to the
relevant public, namely, the film industry or even the broader entertainment
industry. In sum, Cable’s argument that it can use ACE because ACE is a ‘weak’
mark, as an abstract proposition, is not only unpersuasive but essentially
meaningless.”); Key Chem., Inc. v. Kelite Chem. Corp., 464 F.2d 1040, 175 USPQ 99,
101 (CCPA 1972) (“Nor is our conclusion altered by the presence in the record of about

59 S. Walden Testimony Decl. ¶16 (27 TTABVUE 5).
Opposition No. 91223793

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40 third-party registrations which embody the word ‘KEY’. The great majority of
those registered marks are for goods unrelated to those in issue, and there is no
evidence that they are in continued use. We, therefore, can give them but little weight
in the circumstances present here.”); Anderson, Clayton & Co. v. Christie Food Prods.
Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987) (“The other third-party registrations
relating to marks in unrelated fields are of no probative value”).
The third-party application evidence proves only that the applications were filed
on a certain date; applications are not evidence of use of the marks. Nike Inc. v. WNBA
Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd.
v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Likewise, cancelled or
expired registrations have no probative value other than to show that the registration
once issued. Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive
notice of anything.”); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747
(TTAB 1987).
Finally, while the Federal Circuit has held that “extensive evidence of third-party
use and registrations is ‘powerful on its face,’ even where the specific extent and
impact of the usage has not been established,” see Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)), this record of two
third-party registrations is not persuasive because neither third-party registration is
Opposition No. 91223793

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relevant without the description of goods or services. Assuming arguendo, that the
two third-party registrations are related to Opposer’s educational services, two third-
party registrations do not rise to the same level of persuasiveness as the voluminous
evidence in Juice Generation and Jack Wolfskin.
4. Conclusion as to the strength of Opposer’s BRAINY BYTES mark
Considering the record as a whole, including evidence pertaining to both inherent
strength and the number and nature of third-party marks in use in connection with
similar goods or services, we find that because Opposer’s BRAINY BYTES is an
arbitrary term, it is appropriately placed on the “strong” side of the “‘spectrum from
very strong to very weak.’” Joseph Phelps Vineyards, 122 USPQ2d at 1734.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
Opposition No. 91223793

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1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); see also Midwestern Pet Foods, Inc.
v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
Opposer’s mark is BRAINY BYTES and Applicant’s mark is BRAIN BITES. The
marks are similar in appearance and sound. The only differences are Opposer’s mark
is BRAINY rather than BRAIN and Opposer spells BYTES with a “Y” instead of an
“I.” Slight differences in marks do not normally create dissimilar marks. See Crocker
Nat’l Bank v. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Assn,
811 F.2d 1490, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (COMMCASH and
COMMUNICASH are similar); In re Great Lakes Canning, Inc., 227 USPQ 483, 485
(TTAB 1985) (“Moreover, although there are certain differences between the [marks’
CAYNA and CANA] appearance, namely, the inclusion of the letter ‘Y’ and the design
feature in applicant’s mark, there are also obvious similarities between them.
Considering the similarities between the marks in sound and appearance, and taking
into account the normal fallibility of human memory over a period of time (a factor
that becomes important if a purchaser encounters one of these products and some
weeks, months, or even years later comes across the other), we believe that the marks
create substantially similar commercial impressions”); see also U.S. Mineral Prods.
Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB 1977) (“‘AFCO’ and ‘CAFCO,’ which
Opposition No. 91223793

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differ only as to the letter ‘C’ in USM’s mark, are substantially similar in appearance
and sound”); In re Bear Brand Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The
mark of the applicant, ‘KIKS’ and the cited mark ‘KIKI’ differ only in the terminal
letter of each mark. While differing in sound, the marks are similar in appearance
and have a somewhat similar connotation”).
The marks also have engender similar commercial impressions. Opposer’s mark
is BRAINY BYTES. Opposer’s mark means and engenders the commercial
impression of intelligent units of information.60 Applicant’s mark is BRAIN BITES.
It means and engenders the commercial impression of small pieces of information.61
As noted above, Dr. Walden testified that she was imparting “21st century skills on
bite at a time.”62 Thus, both marks engender the commercial impression of small
pieces of information for the enhancement of customers’ brains.
We find that Applicant’s mark BRAIN BITES is similar to Opposer’s mark BRAIN
BITES in appearance, sound, and commercial impression.

60 “Brainy” is defined as “intelligent; clever, intellectual.”Dictionary.com/browse/brainy#
based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed May 16, 2019.
“Bytes” is defined as “the combination of bits used to represent a particular letter, number,
or special character,” or “a unit of computer information that is equal to eight bits.”
Dictionary.com/browse/bytes?s=t based on the RANDOM HOUSE UNABRIDGED DICTIONARY
(2019); Merriam-Webster.com/bytes accessed May 16, 2019, both accessed May 16, 2019.
61 “Brain” is defined, inter alia, as “the center of thought, understanding,, etc.; mind; intellect”
and “understanding; intellectual power; intelligence.” Dictionary.com/browse/brain?s=t
based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed May 16, 2019.
A synonym for “Bite,” the plural of “Bites,” is a “mouthful of food,” a “piece,” or a “sample.”
ROGET’S 21ST CENTURY THESAURUS (3rd ed. 2013) (thesaurus.com/browse/bite) accessed May
16, 2019.
62 Walden Discovery Dep., p 94 (20 TTABVUE 101).
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C. The similarity or dissimilarity and nature of the goods and services.

Applicant is seeking to register its BRAIN BITES mark for “printed teaching
materials in the field of gifted education, special education and general education
that promotes critical thinking and problem solving skills for 21st Century Learning
geared toward teachers, students and parents in grades K-12.” Dr. Walden testified
that Applicant consults with teachers and students and that it conducts professional
training for teachers and administrators, but she did not testify as to whether
Applicant identified the consulting and training services as BRAIN BITES services.63
Opposer is basing its opposition on its BRAINY BYTES mark for conducting
“after-school classes, summer camps, year round camps, workshops, and 1st through
12th grade classroom instruction for children in STEM (Science, Technology,
Engineering, and Math).”64 Ms. Hackaday founded Opposer “to provide STEM
education and instruction to grade school classrooms,”65 which it offers to the “general
public through its website … and instructor led classes in after-school programs,
birthday parties, and summer camps.”66 Despite testifying that Opposer has
continuously used BRAINY BYTES for “providing its educational goods and services

63 S. Walden Discovery Dep., p. 30 (20 TTABVUE 36).
64 Notice of Opposition ¶ (1 TTABVUE); see also Hackaday Testimony Decl. ¶1 (20 TTAVUE
2) (Opposer is “a curriculum writing, technology, and education company that provides
education services and instruction to K-12th grade students.”).
65 Id. at ¶3 (20 TTABVUE 2).
66 Id. at ¶5 (20 TTABVUE 3).
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to consumers of such goods and services, and advertising and marking such goods
and services to those same consumers,”67 Ms. Hackaday did not identify any products.
Nevertheless, “printed teaching materials in the field of gifted education, special
education and general education that promotes critical thinking and problem solving
skills for 21st Century Learning geared toward teachers, students and parents in
grades K-12” and “after-school classes, summer camps, year round camps, workshops,
and 1st through 12th grade classroom instruction for children in STEM (Science,
Technology, Engineering, and Math),” are complementary because it is well known
that educational materials are used in conducting educational instruction. In other
words, printed educational materials and educational services may related in the
mind of the relevant consuming public. Consumers familiar with Opposer’s
previously-used BRAINY BYTES mark in connection with educational services upon
encountering Applicant’s BRAIN BITES mark for printed teaching materials may
mistakenly believe that the goods and services emanate from a single source. See In
re Seiler, 289 F.2d 674, 129 USPQ 347, 347-48 (CCPA 1961) (finding that caterers
were likely to sell specialty food products as well as to offer catering services); In re
RSI Sys., LLC, 88 USPQ2d 1445, 1449 (TTAB 2008) (consumers familiar with
applicant’s document imaging services are likely to assume that registrant is now the
source of software that performs some of the same functions); In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992) (because coats are a product that may be
purchased at registrant’s retail outlets, consumers may mistakenly believe that there

67 Id. at ¶11 (20 TTABVUE 4).
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is a common source between the sources of each because of the similarity of the
marks).
We find that the goods and services are related.
D. Established, likely-to-continue channels of trade and classes of consumers.

Applicant’s BRAIN BITES “printed teaching materials in the field of gifted
education, special education and general education that promotes critical thinking
and problem solving skills for 21st Century Learning geared toward teachers,
students and parents in grades K-12” may be sold to teachers, students, and parents.
Because there are no restrictions as to the channels of trade, we presume that the
educational materials are offered in all channels of trade that would be normal for
such products. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002); CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983). Such channels of trade could include brick
and mortar book stores, online bookstores, Applicant’s website, social media websites,
and educational conferences and seminars.
Ms. Hackaday testified that Opposer offers its BRAINY BYTES “educational and
instructional services to K-12th grade students” to its “customers, vendors, and the
general public”68 through its website and “instructor led classes in after-school

68 Hackaday Testimony Decl. ¶4 (20 TTABVUE 2).
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programs, birthday parties, and summer camps.”69 Hackaday Exhibit 16 is an
example of Opposer’s use of Facebook.70
The channels of trade overlap because both parties may offer their goods or
services through their websites, educational conferences and seminars, and social
media. Further, both companies may offer their goods or services to teachers/school
districts, students and parents.
E. The conditions under which sales are made.

Because both parties offer their goods or services to students and parents and
because all purchasers of educational services and printed educational materials may
not exercise a high degree of purchaser care, we find that this du Pont factor favors
finding that there is a likelihood of confusion. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014)
(recognizing Board precedent requiring consideration of the “least sophisticated
consumer”); In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992)
(finding that all purchasers of wine may not be discriminating because while some
may have preferred brands, “there are just as likely to be purchasers who delight in
trying new taste treats.”).
F. Analyzing the du Pont factors.

Despite the fact that Opposer failed to meet its burden of proving that Applicant’s
printed educational materials are related to Opposer’s educational services, because

69 Id. at ¶5 (20 TTABVUE 3).
70 Id. at (20 TTABVUE 180).
Opposition No. 91223793

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the marks are similar, the goods and services are offered in some of the same channels
of trade and to some of the same classes of consumers, and all the classes of consumers
may not exercise a high degree of purchasing care, we find that Applicant’s mark
BRAIN BITES for “printed teaching materials in the field of gifted education, special
education and general education that promotes critical thinking and problem solving
skills for 21st Century Learning geared toward teachers, students and parents in
grades K-12” is likely to cause confusion with Opposer’s previously-used mark
BRAINY BYTES for “after-school classes, summer camps, year round camps,
workshops, and 1st through 12th grade classroom instruction for children in STEM
(Science, Technology, Engineering, and Math).”
Decision: The opposition is sustained and registration to Applicant is refused.