CustomStart L.L.C.

Trademark Trial and Appeal Board

Sep 25, 2014

No. 85492534 (T.T.A.B. Sep. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re CustomStart L.L.C.
_____

Serial No.
_____

Deborah K. Henscheid of Ingrassia Fisher & Lorenz, PC,
for CustomStart L.L.C.
Howard Smiga, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Kuhlke, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
CustomStart L.L.C. (“Applicant”) seeks registration on the Principal Register of
the mark BEE KIND (in standard characters) for
Paper, cardboard and goods made from these materials,
namely, stationery items, namely, writing paper, printing
paper, notepads, adhesive note paper, and envelopes;
greeting cards; stickers; table napkins of paper; cardboard
packaging; paper bags for packaging; paper ribbon; paper
Serial No. 85492534
- 2 -

tags; paper labels; posters; plastic bags for packaging, in
International Class 16.1
The Trademark Examining Attorney issued a final refusal to register the mark
pursuant to Section 2 of the Trademark Act, 15 U.S.C. § 1052(d), citing the
following Registration as a bar to registration:
Registration No.: 41748622
Mark:
For: stationery, note cards and greeting cards in
International Class 16.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key

1 Application Serial No. 85492534 was filed on December 12, 2011, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under § 1(b) of the
Trademark Act.
2 Registration No. 4174862 issued on July 17, 2012, based on an application filed on
November 14, 2011.
Serial No. 85492534
- 3 -

considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. Similarity of Goods, Channels of Trade and Classes of Customers
We first consider the du Pont factor involving the similarity or dissimilarity of
Applicant’s goods (stationery items, namely, writing paper, printing paper,
notepads, adhesive note paper, and envelopes; greeting cards; stickers; table
napkins of paper; cardboard packaging; paper bags for packaging; paper ribbon;
paper tags; paper labels; posters; plastic bags for packaging), in relation to the
goods in the cited registration (stationery, note cards and greeting cards), and their
channels of trade and classes of consumers.
In determining the similarity of Applicant’s and registrant’s goods, it is
sufficient if likelihood of confusion for each Class of goods is established for any
item encompassed by the identification of goods for that Class. See In re Wacker
Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Because
the identifications of goods in the subject application and the cited registration both
include “greeting cards,” the goods are identical in part. Moreover, registrant’s
“stationery” encompasses Applicant’s “stationery items, namely writing paper,” and
as such these goods are legally identical. The relatedness of Applicant’s and
Serial No. 85492534
- 4 -

registrant’s remaining goods is established by Applicant’s concession that the goods
are similar.3
Because the goods are identical in part and otherwise related, and because we
also note that neither identifications of goods contains a limitation of any kind with
respect to consumers or channels of trade, we presume that the goods move in the
same channels of trade and are sold to the same classes of consumers. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”).
Based on the identical and related nature of the unrestricted goods set forth in
the application and cited registration, the du Pont factors of the similarity of the
goods, trade channels and customers strongly favor a finding of likelihood of
confusion.
B. Similarity of the Marks
We now turn to the du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, meaning and commercial

3 Applicant’s Appeal Brief, 8 TTABVUE 3.
Serial No. 85492534
- 5 -

impression which is the determinative factor in this appeal. du Pont, 177 USPQ at
567. We make the determination of the similarity of the marks with the
understanding that where the goods of the applicant and cited registrant are
identical in part and otherwise related as they are here, the degree of similarity
between the marks required to support a finding of likelihood of confusion is not as
great as would be required with diverse goods. See In re Viterra Inc., 101 USPQ2d
at 1908 (citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)); In re Mighty Leaf Tea, 601 F.3d
1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010).
Registration No. 4174862 describes the mark therein as “a design of a beige
colored hand wearing orange and brown bracelets reaching into a brown bag,
pulling out a blue card on which is written in white ‘BE KIND’.” Given the
proportional sizes and significant design features of the cited mark, we cannot find
that the words predominate over the design. Nevertheless, for a composite mark
containing both words and a design, as in the cited mark, the word portion may be
more likely to be impressed upon a purchaser’s memory and used when requesting
the goods. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431
(TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999)). Here, the phrase “be kind” in registrant’s mark comprises a recognizable
and articulable phrase that would be impressed upon the purchaser’s memory.
There is no question that the pronunciations of the word “be” in the cited mark
and the word “bee” in Applicant’s mark are the same. Therefore, to the extent both
Serial No. 85492534
- 6 -

marks contain the same articulable words “be kind,” Applicant’s BEE KIND mark is
identical in sound to the cited “be kind” mark. Additionally, the meaning and
commercial impressions of the marks are the same when the marks are spoken,
particularly when considered in relation to greeting cards, wherein it would be
understood that “bee kind” is intended to express that one should be thoughtful or
kind to others by giving greeting cards.
The marks are also similar in appearance to the extent that the word portions of
the marks consist of two words, the first word beginning with the letters “be” and
the second word consisting of the word “kind.”
In arguing the differences in the meaning of the marks, Applicant notes that the
definition of the word “bee” in its mark, unlike the word “be” in the cited mark, is
“any hymenopterous insect of the superfamily Apoidea, including social and solitary
species of several families, as the bumblebees, honeybees, etc.” (See,
www.dictionary.com),” and that the word “bee” therefore brings to mind an image of
the insect.4 According to Applicant, the connotation and commercial impression of
an arm reaching out of a brown bag and pulling out a note card is different than the
connotation of a bee. However, the law forbids the type of dissection proposed by
Applicant. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354

4 Applicant’s Appeal Brief, 8 TTABVUE 5 and the July 14, 2013 Response to Office Action.
Although Applicant did not submit a copy of the definition from www.dictionary.com, the
Examining Attorney did not object to the definition provided in the Response and the Board
may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Accordingly, we have considered the definition.

Serial No. 85492534
- 7 -

(Fed. Cir. 2004) citing Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56
USPQ2d 1351, 1354 (Fed. Cir. 2000) (“The ultimate conclusion of similarity or
dissimilarity of the marks must rest on consideration of the marks in their
entirety.”). Accordingly, we must consider the connotations and commercial
impressions of the marks in their entirety.
Although the literal meanings of “be” and “bee” in the marks may be different,
the connotations or commercial impressions of the marks as a whole are the same
when used in connection with greeting cards and stationery items. The cited mark,
including the design portion, connotes the act of being kind. Applicant admits that
when the word “bee” is combined with the word “kind” to form the phrase “bee kind”
found in its mark, it “elicits in the mind of the consumer the instruction ‘be kind.’”5
Thus, Applicant agrees that its mark has the same connotation and commercial
impression as that conveyed by the cited mark.
Applicant relies heavily on Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004) and In re White Rock Distilleries Inc., 92
USPQ2d 1282 (TTAB 2009) in support of the registrability of its mark.6 However,
neither of these cases compels a different result. The two sets of marks in Shen Mfg.
v. Ritz Hotel noted by Applicant did not involve virtually identical terms which
possessed similar commercial impressions (applicant’s PUTTING ON THE RITZ
mark conveyed a strong commercial impression conjuring images of “comfort
sophistication and wealth” compared to opposer’s RITZ mark which when used on

5 Applicant’s Appeal Brief, 8 TTABVUE 5.
6 Applicant’s Appeal Brief, 8 TTABVUE 4-6.
Serial No. 85

its good
and opp
commer
Mfg. v.
in this c
TERZA
same. T
only pre
commer
Simi
Sportsm
Reply B
they als
dissimil
USPQ2d
Whe
in a sid
in their
Applica

7 Applica
492534
s invoked
oser’s unc
cial impre
Ritz Hotel
ase, the w
VOLTA an
he cited T
ceded the
cial impre
larly, alth
an’s Ware
rief,7 both
o containe
ar in overa
at 1858.
n comparin
e-by-side c
entiretie
nt’s and re

nt’s Reply B
images “if
omplicated
ssion from
, 73 USPQ
ord portion
d Design)
ERZA VO
marks’ sh
ssion.
ough the
house Inc
included t
d addition
ll sound, a
This is not
g marks,
omparison
s that con
gistrant’s

rief, 11 TT
any, of c
and mun
applicant
2d at 1354
of the tw
were not v
LTA and D
ared term
marks i
., 89 USP
he merely
al wordin
ppearance
the situat
the test is
, but rathe
fusion as
marks is l
ABVUE 3.
- 8 -
leaning, co
dane
’s ma
-1355. Un
o marks in
irtually id
esign ma
but dom
nvolved in
Q2d 1844
descriptive
g and desi
, connotat
ion we find
not wheth
r whether
to the s
ikely to re
oking or m
and RIT
rk which
like the m
volved in
entical an
rk co
inated ove
Bass P
(TTAB 20
phrase “S
gn elemen
ion and co
in the pr
er the ma
the mark
ource of t
sult. Midw
anual la
Z marks h
gives a re
arks and
In re Whit
d the good
ntained a
r it yield
ro Tradem
08) cited
portsman
ts which
mmercial
esent case
rks can be
s are suffi
he goods
estern Pe
bor genera
ave a diffe
gal feel). S
goods invo
e (VOLTA
s were not
term that
ing a diffe
arks LLC
in Applica
’s Warehou
rendered t
impression
.
distingui
ciently sim
offered u
t Foods, In
lly;”
rent
hen
lved
and
the
not
rent
v.
nt’s
se,”
hem
. 89
shed
ilar
nder
c. v.
Serial No. 85492534
- 9 -

Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012); Edom Laboratories, Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012). The focus is on the recollection of the average purchaser, who normally
retains a general rather than specific impression of trademarks. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). The marks are similar to the extent the phrase
BEE KIND in Applicant’s mark, and the phrase “be kind,” a visible and articulable
part of the cited mark, are identical in sound and commercial impression when
viewed in relation to the relevant goods. In view of the above, we find the marks to
be similar and this du Pont factor favors a finding of likelihood of confusion.
II. Conclusion
In weighing the relevant du Pont factors, while there are visual differences
between the marks stemming from the design portion of the cited mark and the
additional “e” in Applicant’s mark, when we consider that these marks are used in
connection with identical goods that are presumed to travel in the same trade
channels to the same classes of customers, and given the lack of evidence that “be
kind” is weak or anything other than a unique and distinctive term for such goods,
we find that Applicant’s mark BEE KIND for the goods identified in the application
is likely to cause confusion with the mark “be kind” and Design shown in
Registration No. 4174862.
Decision: The refusal to register Applicant’s mark BEE KIND is affirmed.