Creative Clouds Inc.

Trademark Trial and Appeal Board

Sep 5, 2017

No. 87262758 (T.T.A.B. Sep. 5, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: September 5, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Creative Clouds, Inc.
_____

Serial No. 87262758
_____

Gene Bolmarcich of Law Office of Gene Bolmarcich,
for Creative Clouds, Inc.
Michele-Lynn Swain, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Zervas, Kuhlke and Coggins,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Creative Clouds, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark WISH NOVELTY in standard characters (NOVELTY disclaimed) for “Mail
order catalog services featuring party supplies” in International Class 35.1

1 Application Serial No. 87262758 was filed on December 8, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b), based upon Applicant’s allegation of a bona fide intention
to use the mark in commerce. The application originally listed “mail order catalog services
featuring party supplies, gift, decoration, toy and novelty items; wholesale distributorships
featuring party supplies, gift, decoration, toy and novelty items.” As part of its response to
the refusal under Section 2(d), Applicant amended the identification of services.
Serial No. 87262758
- 2 -
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified services, so resembles
the mark as registered on the Principal Register for the following services:
Retail store services featuring clothing and accessories, footwear,
handbags, eyewear, headwear, cosmetics, jewelry, candles, candle
sticks, plates, and posters; and on-line retail store services featuring
clothing, clothing accessories, fashion accessories, footwear, handbags,
eyewear, headwear, cosmetics, jewelry, candles, candle sticks, plates,
and posters; in International Class 35;2

as to be likely to cause confusion, mistake or deception.3
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration, which the Examining Attorney denied, and appealed to this Board.
We affirm the refusal to register.

2 Registration No. 3783165 (for the retail store services), issued on May 4, 2010, Sections 8 &
15 combined declaration accepted and acknowledged; and Registration No. 4242361 (for the
on-line retail store services), issued on November 13, 2012. The Section 2(d) refusal does not
pertain to the following items listed in the Class 35 services in Registration Nos. 3783165
and 4242361: toiletries, house wares, watches, magazines, books, skateboards, cologne and
eau de toilet.
3 The Examining Attorney also attached prior pending Application Serial No. 86910878 for
the mark WISH for “retail store featuring party products” to the first Office Action, but did
not refer to it in the body of the Office Action. The Board may remand an application for
further examination where an issue not previously raised may render the mark
unregistrable. Trademark Rule 2.142(f), 37 CFR § 2.142(f). Here, the issue was raised to the
extent it was attached to the Office Action, but not raised in the body of the Office Action.
Because that issue is not before us on appeal, this case is ripe for decision, and in view of our
determination below, we do not remand for consideration of that prior pending application.
We note, however, in the event this decision is reversed in any further appeal, and
Application Serial No. 86910878 is still pending or registered, the case should also be
remanded as that application could present a further bar to registration.
Serial No. 87262758
- 3 -
Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the du Pont list of factors,
only factors that are “relevant and of record” need be considered).
Similarity/Dissimilarity of the Marks
We consider Applicant’s mark WISH NOVELTY and Registrant’s mark
and compare them “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du
Pont, 177 USPQ at 567). When comparing marks, the test is not whether the marks
can be distinguished in a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the services offered under the respective marks is likely to result.
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103
USPQ2d 1435, 1440 (Fed. Cir. 2012). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812
Serial No. 87262758
- 4 -
(TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB
2007)). Further, marks “‘must be considered … in light of the fallibility of memory
….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks.
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there
is nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056,
1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985); see also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). The
word NOVELTY, defined as “a small inexpensive object such as a toy or piece of
jewelry,” is merely descriptive of those goods sold in connection with Applicant’s
services as “party supplies,” as the wording “party supplies” in Applicant’s recitation
of services may include novelties; and NOVELTY has been disclaimed.4 See, e.g., In
re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)

4 MACMILLAN DICTIONARY (www.macmillandictionary.com), March 17, 2017 Office Action
at 12. “Novelty” is also defined as “A small mass-produced article, such as a toy or trinket.”
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2017), May
9, 2017 Office Action at 3. The goods as originally identified included “toy and novelty items”
explicitly.
Serial No. 87262758
- 5 -
(affirming TTAB’s finding that “DELTA,” not the disclaimed generic term “CAFE,” is
the dominant portion of the mark THE DELTA CAFE); In re Binion, 93 USPQ2d
1531, 1534 (TTAB 2009) (finding that “BINION’S,” not the disclaimed descriptive
wording “ROADHOUSE,” is the dominant portion of the mark BINION’S
ROADHOUSE).
In addition, the word WISH is the first word in Applicant’s mark. Consumers are
generally more inclined to focus on the first word, prefix, or syllable in any trademark
or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692; In re Integrated Embedded, 102 USPQ2d 1504, 1513
(TTAB 2016); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988). As a result of the mere descriptiveness of the term NOVELTY and the
placement of the term WISH as the first term in the mark, WISH is the dominant
portion of Applicant’s mark. Moreover, the dominant portion of Applicant’s mark
comprises the entirety of the literal portion of Registrant’s mark.
While NOVELTY identifies the subject matter of Applicant’s services, it does not
alter the meaning or commercial impression of the word WISH. It is well settled that
marks containing additional wording may be confusingly similar. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161 (STONE LION CAPITAL
incorporated entirety of registered marks LION CAPITAL and LION). Moreover,
WISH has the same meaning in Registrant’s mark, as it does in Applicant’s mark, in
connection with the subject matter of Registrant’s services, i.e., to desire, or to be
Serial No. 87262758
- 6 -
something desired.5 We are not persuaded by Applicant’s argument that WISH
NOVELTY has an “incongruous appearance” (4 TTABVUE 5) or that it does not
convey the meaning of satisfying a wish because Applicant’s services feature a narrow
range of goods. Narrow or broad in scope the products for sale may still “satisfy one’s
wishes.” 4 TTABVUE 5.
Finally, Applicant’s mark is in standard characters and is not limited to any
particular depiction. The rights associated with a mark in standard characters reside
in the wording and not in any particular display. In re RSI Sys., LLC, 88 USPQ2d
1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB
1988); TMEP § 1207.01(c)(iii) (April 2017). We must consider Applicant’s mark
regardless of font style, size, or color, including Registrant’s stylization and depictions
minimizing the word NOVELTY. In re Viterra Inc., 101 USPQ2d at 1910; Citigroup
Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-1259 (Fed.
Cir. 2011).
Overall, we find that the marks are highly similar in appearance, sound,
connotation and commercial impression and that this du Pont factor weighs strongly
in favor of finding a likelihood of confusion.

5 Dictionary.com based on the RANDOM HOUSE DICTIONARY (2017). The Board may take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or regular fixed editions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 87262758
- 7 -
Similarity of the Services/Channels of Trade/Consumers
With regard to the services, channels of trade and classes of consumers, we must
make our determinations under these factors based on the services as they are
identified in the application and cited registration. See In re Dixie Rests. Inc., 41
USPQ2d at 1534. See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 110
USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether
‘the consuming public may perceive [the respective services of the parties] as related
enough to cause confusion about the source or origin of the goods and services.’” In re
St. Helena Hosp., 113 USPQ2d at 1086 (quoting Hewlett Packard, 62 USPQ2d at
1004). It is well settled that Applicant’s and Registrant’s services do not have to be
identical or directly competitive to support a finding that there is a likelihood of
confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000). It is sufficient if the respective services are related in some
manner and/or that the conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances that could, because
of the similarity of the marks used in connection therewith, give rise to the mistaken
belief that they emanate from or are associated with a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
The Examining Attorney submitted webpages from third-party retailers showing
that individual retailers, “including party supplies retailers, provide party supplies
Serial No. 87262758
- 8 -
as well as clothing, accessories, footwear, handbags, eyewear, headwear, cosmetics,
jewelry, candles, candle sticks, plates, and posters through mail order catalogs, brick
and mortar stores and online retail store services under a single store name.” 14
TTABVUE 8. The following are a few examples from the Examining Attorney’s
“representative summary of the evidence”:
Party City: offering mail order catalogs, retail store and
online store retail services featuring party supplies,
candles, clothing, cosmetics, footwear, eyewear, headwear,
handbags, posters and plates (May 9, 2017 Office Action at
4-18);
Pottery Barn Kids: offering mail order catalogs, retail store
and online retail store services featuring party supplies,
clothing, jewelry, bags and plates (Id. at 19-27);
Ikea: offering mail order catalogs, retail store and online
store services featuring party supplies, plates and candles
(Id. at 31-37);
U.S. Toy Company: offering mail order catalogs, retail
store and online retail store services featuring party
supplies, candles, plates and clothing (Id. at 60-77); and
Justice: offering mail order catalogs, retail store and online
retail store services featuring handbags, jewelry, clothing
and party supplies (Id. at 78-84).
The Examining Attorney also submitted numerous use-based, third-party
registrations which cover both mail order catalog services and online retail store
services both offering party supplies and various items featured by Registrant’s
services (clothing, footwear, jewelry, posters, etc.), under a single mark.6 Third-party
registrations which individually cover a number of different services that are based

6 May 7, 2017 Office Action at 90-100.
Serial No. 87262758
- 9 -
on use in commerce may have some probative value to the extent that they serve to
suggest that the listed services are of a type which may emanate from the same
source. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert
Trostel 29 USPQ2d at 1785-86; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). The registrations listed below are representative.
Registration
No.
Mark Services
5070113 FUN365 Online retail store, mail order catalog and
online catalog services featuring party
supplies, wedding supplies, … jewelry,
stickers, stationery, indoor and outdoor
décor, costumes, games, banners, apparel,
tableware, gifts, decorations, toys, arts and
crafts and novelty items …
4638571 LIFE’S BETTER IN
COSTUME
Online retail store services featuring
costumes, clothing, footwear, make-up,
wigs, masks, hats, children’s toys, games,
books, gifts, party supplies and party
decorations; electronic and mail order
catalog services featuring costumes,
clothing, footwear, make-up, wigs, masks,
hats, children’s toys, games, books, gifts,
party supplies and party decorations
3349346 COSTUME EXPRESS online retail store and mail order catalog
services featuring costumes, party supplies
and clothing
5162703 LIVE JUSTICE Retail store services, mail order catalog
services and on-line retail store services,
all the foregoing featuring clothing,
personal care products, paper goods,
electronics, writing instruments, home
furnishings, jewelry, watches, bags,
sporting goods, toys and candy
4211954 RED ZONE Retail store, on-line retail store and mail
order catalog services featuring clothing,
footwear, boots, shoes, socks, hats, caps,
outerwear, bags, blankets, watches,
jewelry, posters, … books, prints, framed
art, flags, banners, pennants, decals,
Serial No. 87262758
- 10 -
magnets, stickers, stationery, stationery
boxes, sports memorabilia, novelty gift
items, home decorations, holiday
decorations, toys, puzzles, footballs, gift
bags, gift boxes, gift wrap, paper gift wrap
bows, dinnerware, glassware, serving
trays, platters and bowls …

We find this evidence sufficient to establish that “Mail order catalog services
featuring party supplies” and “Retail store services [and online retail store services]
featuring clothing and accessories, footwear, handbags, eyewear, headwear,
cosmetics, jewelry, candles, candle sticks, plates, and posters,” are related in that
they are of a type that commonly originate from the same source and are used by the
same consumers. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
As noted by the Examining Attorney, Applicant’s use of “party supplies” in the
identification of services is a broad term not limited to type or specific items, and the
Internet materials submitted into the record demonstrate that “party supplies” can
encompass a wide assortment of products. Based on the record “party supplies”
encompasses the same products identified in the cited registrations such as plates,
party hats, candles, posters, costume clothing and novelty jewelry and eyewear.
In addition, because the identification of services in the registration and
application do not include any restrictions or limitations as to trade channels, we
presume the respective services are or would be marketed in all normal trade
channels for such services. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch
Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re
Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read
Serial No. 87262758
- 11 -
any restrictions or limitations into the registrant’s description of goods.”); In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). As shown by the website
printouts, retailers offer retail services online, through mail order catalogs and at
brick and mortar stores, all under a single mark.
Applicant argues that:
[T]he examining attorney only sought to prove “that it is
not uncommon for companies to sell party supplies as well
as candles, clothing, shoes under the same mark”.
However, this is not the same as evidence showing a single
entity providing both “mail order catalog services featuring
party supplies” AND “retail services featuring clothing and
accessories, footwear, handbags, eyewear, headwear,
cosmetics, jewelry, candles, candle sticks, plates, and
posters”. In other words, any relevant evidence must show
that there are entities that are both i) a mail order catalog
service for party supplies and ii) a retailer of various
consumer products, and that they perform these two
different services under a common mark. How can evidence
that shows an entity providing a single service be probative
of whether two different services are related? Applicant has
identified a single service in its application and the owner
of the cited registrations also identifies a single service in
each registration. Applicant believes that a proper
consideration of Applicant’s argument herein will allow the
Board to correct what Applicant perceives as a mistake
that is frequently made in the examination (and refusal of)
trademark applications that cover retail services at the
USPTO. … A party supply store (e.g. Party City) is neither
the same as a supermarket (even though the latter
virtually always sells at least some items that are party
supplies) nor is it common that the former (e.g. Party City)
also operate supermarkets (e.g. Giant). Applicant contends
that it is also not the case that consumers would expect
Party City to also be in the supermarket business.
4 TTABVUE 5.
Applicant’s argument is essentially a variation on the failed argument that as
actually used the services are not related. See, e.g., In re Bercut-Vandervoort & Co.,
Serial No. 87262758
- 12 -
229 USPQ 763, 764–65 (TTAB 1986) (an applicant may not restrict the scope of its
goods or services or the scope of the services covered in the registration by extrinsic
argument or evidence). See also In re La Peregrina Ltd., 86 USPQ2d 1645, 1647
(TTAB 2008). Applicant argues that because registrant is a “clothing store” and
Applicant is a “party supply store” their services are not related, or at least the
evidence does not show a “clothing store” and separately a “party supply store” –
stores that are limited by type – offer services under a single mark. Even if we were
to require such evidence to establish relatedness, the identifications do not clearly
delineate the services in that way. Registrant’s services are retail stores that feature
a variety of items including some that fall into the category of goods sold as party
supplies. See, e.g., evidence from Party City and Justice, supra. Thus, Applicant’s
“party supplies” encompass the items featured in Registrant’s services, e.g., “posters.”
Finally, the record shows a store perhaps known more for housewares and furniture
also offers clothing and party supplies. See Pottery Barn, supra. Thus, this type of
store delineation Applicant posits is not persuasive, at least not here where the
featured items more closely align, as opposed to, for example, an auto supply shop
and a pet supply store. Here, where the marks are so similar, consumers could view
WISH NOVELTY as the expansion of Registrant’s retail store services further into
party supply and additional novelty items.
In view thereof, these du Pont factors also favor a finding of likelihood of confusion.
Serial No. 87262758
- 13 -
Conclusion
Because the marks are similar, the services are related, and the channels of trade
and consumers overlap, we find that confusion is likely between Applicant’s mark
WISH NOVELTY and Registrant’s mark .
Decision: The refusal to register Applicant’s mark is affirmed.