Brother Max Limited

Trademark Trial and Appeal Board

Mar 21, 2011

No. 77758207 (T.T.A.B. Mar. 21, 2011)

Mailed:
March 21, 2011
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brother Max Limited
________

Serial No. 77758207
_______

Jonathan Morris Gold for Brother Max Limited.

Cynthia Tripi, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Kuhlke and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Brother Max Limited seeks registration on the Principal
Register of the mark SCOOP (in standard character format) for
goods identified as “high chairs for babies and infants;
cushions for high chairs for babies and infants” in
International Class 20.1
The Trademark Examining Attorney issued a final refusal
to register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). She has taken the

1 Application Serial No. 77758207 was filed on June 12, 2009
seeking registration under Trademark Act Section 44(e), 15 U.S.C.
§ 1051(e), based upon U.K. Registration No. 2495995.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77758207
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position that applicant’s mark, when used in connection with
the identified goods, so resembles the following mark:

registered for
“bed and bath products, namely; blankets, bed
sheets, pillow cases, duvet covers, shams, bath
linen, washcloths and towels” in International
Class 24;2 and

“furniture and bed pillows” in International Class
20,3

as to be likely to cause confusion, to cause mistake or to
deceive.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. The Trademark
Examining Attorney and applicant have briefed the issues in
this appeal. We affirm the refusal to register.
In urging registrability, applicant argues: that the
cited mark contains a “graphic element,” which appears to be

2 Registration No. 2912562 issued on December 21, 2004.

3 Registration No. 3117610 issued on July 18, 2006.

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a substantial part of the mark; that the record shows that
its goods are narrowly defined inasmuch as they relate only
to goods for a particular use, namely for use with babies
and infants, while the earlier cited registrations recite
goods in the nature of general furnishings; that consumers
of applicant’s type of products are more demanding of
safety, etc., than is the average consumer; that these
customers prefer those establishments that specialize in
products for infants and babies; and finally in its reply
brief, applicant argues that registrant’s identification of
goods in the ‘610 registration (e.g., “furniture and bed
pillows”) is ambiguous, and in fairness, should have been
interpreted as if it were “furniture pillows” and “bed
pillows” rather than furniture and pillows, as the
Trademark Examining Attorney interpreted it.
By contrast, the Trademark Examining Attorney contends
that the marks are similar, the goods are related and will
move through similar channels of trade.
As we turn to a consideration of likelihood of
confusion, our determination is based upon our analysis of
all of the probative facts in evidence that are relevant to
the factors bearing on this issue. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The legal briefs filed herein confirm that in this case, the
Serial No. 77758207
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two key considerations in our likelihood of confusion
analysis are the similarities between the marks and the
relationship between the goods. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The literal portions of the two marks
are identical, and applicant does not contend otherwise.
Applicant’s only argument as to the differences in the
two marks is that the cited mark contains a graphic element,
which comprises a substantial portion of the mark.
However, the Trademark Examining Attorney correctly
notes that the “graphic element” in registrant’s marks is
a simple, oval-shaped carrier device. She has
demonstrated the common usage of concentric ovals as
carriers for composite marks for similar goods. We have
printed out a dozen of more than twenty representative
third-party marks that were the subject of the
registrations she proffered:
Serial No. 77758207
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Hence, we agree that registrant’s concentric oval
carrier device is largely devoid of source-indicating
significance, and the marks are nearly identical in sound,
meaning and commercial impression, and that this factor
weighs heavily in favor of a finding of likelihood of
confusion.
When the marks are essentially identical, as noted
above, the relationship between the involved goods need not
be as close to support a holding of likelihood of confusion
as might apply where more significant differences exist
between the marks. In re Opus One Inc., 60 USPQ2d 1812,
1815 (TTAB 2001); In re Melville Corp., 18 USPQ2d 1386, 1387
(TTAB 1991); In re Concordia International Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983); and Amcor, Inc. v. Amcor
Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
According to applicant, registrant’s goods are limited
to a separate “general furnishings market” while applicant’s
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goods are limited to a specialized “babies and infants
market.” However, the respective identifications of goods
are not so restricted. Furthermore, the evidence of record
does not support this conclusion. Rather, the website
evidence shows that department stores and retailers of
general home furnishings in the United States carry bed and
bath products, including pillows, pillow cases and specialty
cushions, as well as high chairs. Conversely, specialty
outlets selling products for babies and infants carry not
only high chairs and cushions for high chairs, but also
other furnishings, bedding and bath products.
The following third-party registrations have probative
value to the extent that they serve to suggest that the
goods listed therein are of a kind that may emanate from a
single source under the same trademark:
for, inter alia, “ … high chairs
… step stools, tables, chairs …” in
International Class 20;
“comforters, sheets, curtains, dust
ruffles, and blankets” in
International Class 24;4
for, inter alia, “children's
furniture, namely, play yards, …
booster seats, toy chests and … play
pens, … and high chairs” in
International Class 20;
“decorative textile wall coverings,
bath towels, hooded bath towels, wash
cloths, wash mitts; bedding, namely,

4 Registration No. 1658849 issued on October 1, 1991; renewed.

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blankets, comforters, bed sheets,
mattress pads, crib bumpers and crib
canopies” in International Class 24;5
for, inter alia, “high chairs,
playpens, … dressers, armoires, chest
of drawers, changing tables for
babies, combination changing tables
and dressers, tables, chairs,
director’s chairs, rocking chairs,
desks, furniture toy boxes, toy
chests, benches, non-metal bins, step
stools, … bed headboards, vanities,
stools, mattresses for cribs and
cradles” in International Class 20;
“ … bed blankets and children's
blankets, and sheets for beds, cribs
and cradles, crib bumpers and bumper
pads for cradles, comforters, pillow
cases, dust ruffles, bed canopies,
play blankets … ” in International
Class 24;6
for, inter alia, “furniture for
babies and children, namely,
mattresses, cribs, bumper guards for
cribs, tables, chairs, high chairs,
booster seats, work benches, step
stools, playpens; … pillows” in
International Class 20;
“textile and textile goods, namely, …
bath linens, namely, bath towels,
hooded towels, wash cloths; bed
linens, namely, bed sheets, crib
sheets, bed skirts, pillow cases,
pillow shams, quilts, coverlets,
bedspreads, bed blankets, crib
blankets, receiving blankets, crib
bumpers, comforters, comforter
covers” in International Class 24;
DWELLSTUDIO for, inter alia, “furniture, nursery
and children's furniture, namely,
cribs, changing tables, gliders;
infant chairs, high chairs, and
infant bouncers; bean bag chairs and
bean bag pillows; pillows; throw

5 Registration No. 2908910 issued on December 7, 2004.

6 Registration No. 3346003 issued on November 27, 2007.
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pillows; and storage racks” in
International Class 20;
“oven mitts; hand towels, bath
towels; kitchen towels and dish
towels; place mats not of paper;
cloth table napkins, table linens,
fabric table runners, fabric shower
curtains, fabric window treatments,
namely, draperies and curtains; duvet
covers, duvets, and pillow shams and
pillow cases; crib sheet sets, bed
sheets, crib bumpers, bed blankets,
throw pillows; crib skirts, hooded
towels, and burp cloths” in
International Class 24;7
for, inter alia, “furniture, nursery
and children's furniture, namely,
cribs, changing tables, and gliders,
infant chairs, high chairs, and
infant bouncers; pillows; throw
pillows” in International Class 20;
“oven mitts; kitchen towels and dish
towels; fabric window treatments,
namely, draperies and curtains; duvet
covers, duvets, comforter covers,
comforters, and pillow shams and
pillow cases; crib sheet sets, bed
sheets, crib bumpers, bed blankets,
throw blankets, throw pillows; crib
skirts, hooded towels, and burp
cloths” in International Class 24;8

For the first time in its reply brief, applicant put
forward an entirely new argument, attempting to minimize the
value of the showing of the Trademark Examining Attorney
throughout the prosecution of this application as to the
relationship of the respective goods. Specifically,
applicant argued that the identification of goods in the

7 Registration No. 3652596 issued on July 7, 2009.

8 Registration No. 3655861 issued on July 14, 2009.
Serial No. 77758207
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cited Registration No. 3117610 (“furniture and bed pillows”)
is unclear and ambiguous, inasmuch as it could be read as
“furniture pillows” and “bed pillows.”
However, we believe the correct reading of “furniture
and bed pillows” is the one chosen by the Trademark
Examining Attorney, namely, “furniture” and “bed pillows.”
Consistent with this interpretation, the Trademark
Examining Attorney used dictionary definitions to show
that the term “furniture” encompasses “high chairs.”
Moreover, she repeatedly chose third-party registrations
and websites showing that items of “furniture” that
applicant acknowledges are prevalent in the “general
furnishings market” (e.g., gliders, ottomans, dressers,
easy chairs, etc.) are otherwise related to high chairs.
Indeed, the evidence showing the relationship of furniture
generally to high chairs is quite strong.
Nonetheless, even if we were to accept applicant’s
belated interpretation of registrant’s International Class
20 goods, the third-party registrations (reviewed above)
and websites placed into the record by the Trademark
Examining Attorney demonstrate a relationship between
registrant’s and applicant’s “soft furnishings” close
enough to support a finding of likelihood of confusion on
the facts of this case.
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As to specific evidence of the relationship between
bedding and bath products and similar types of soft
furnishings marketed by registrant, and applicant’s listed
goods, the Trademark Examining Attorney has provided
excerpts from web pages showing that these respective
goods are commonly sold under the same marks and/or
marketed through the same channels of trade:

Carter’s Classic Comfort
Reclining Wood High Chair 9
Carter's Tree Tops Crib
Sheet 10 IKEA Junior Chair IKEA Fitted Sheet
11

May we gush for a minute? You’ll be
charmed for sure by our adorable
baby crib bedding sets.

Oak Windsor High Chair Crib Bedding 12 Stokke - Tripp Trapp High Chair Baby Set
Stokke - Premium Tripp Trapp
High Chair Cushion13

9 www.buybuybaby.com

10 http://www.toysrus.com

11 www.ikea.com

12 http://www.ababy.com/

13 www.allmodernbaby.com

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In support of its interpretation of registrant’s
goods, applicant suggests in its reply brief that the
Office might find value in visiting
registrant’s website, alleged at
www.scoopnyc.com. Inasmuch as applicant
submitted this new material for the first time with its
reply brief, it is untimely and we have given it no
consideration. See 37 C.F.R. § 2.142(d); In re Fitch IBCA
Inc., 64 USPQ2d 1058, 1059 n2 (TTAB 2002). Clearly, the
Trademark Examining Attorney had no opportunity to rebut
this new evidence of limited probative value. Cf. In re IP
Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB
2007).14
Finally, as to the alleged level of care with which
consumers will pursue these goods, we find nothing in the
record to support applicant’s argument that parents in
search of high chairs or cushions for high chairs will go to
extraordinary efforts in their selection process in order to
ensure “safety” for a child. In other words, the record in

14 We hasten to add that even if information from this
website had been proffered earlier in the prosecution of
this application, and the owner of this enterprise had been
demonstrated to be registrant’s alter ego, it flies in the
face of our trademark statute and rules to permit applicant
to use extrinsic evidence to narrow or alter the scope of
registrant’s listed goods.

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this case does not support a finding that the purchasers of
applicant’s goods will exercise a degree of care greater
than the typical care parents would display when purchasing
any other goods for their children.
In conclusion, we find that the marks are nearly
identical, the goods are related and, at least in the case
of some retailers, will move through the same channels of
trade to the same classes of ordinary consumers.
Decision: The refusal to register under Section 2(d)
of the Act is hereby affirmed.