Don’t Run Out, Inc.

Trademark Trial and Appeal Board

Oct 31, 2019

87344127 (T.T.A.B. Oct. 31, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 31, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Don’t Run Out, Inc.
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Serial No. 87344127
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Peter S. Sloane, Deirdre A. Clarke, and Chelsea Russel of Leason Ellis LLP,
for Don’t Run Out, Inc.
Valerie Kaplan, Trademark Examining Attorney, Law Office 107
J. Leslie Bishop, Managing Attorney.
_____

Before Mermelstein, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Don’t Run Out, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark PUBLIC GOODS (GOODS disclaimed) in standard characters for:
“Bar soap; deodorant for personal use; facial washes; hair
conditioner; shampoos; shaving creams; skin moisturizer;
tooth paste; toothpastes; face, body, and hand
moisturizers” in International Class 3;
“Toilet paper” in International Class 16; and
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“Tooth brushes” in International Class 21.1
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered marks below, all owned by the same entity, that when used on or in
connection with Applicant’s identified goods, it is likely to cause confusion or mistake
or to deceive.2
Registration No. 1382948 for the mark PUBLIX (typed)3
for “hair shampoo, denture cleanser, nail polish remover”
in International Class 3.4
Registration No. 3688906 for the composite mark displayed
below for “bath soap” in International Class 3.5

1 Application Serial No. 87344127, filed February 21, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). On May 14, 2018, Applicant filed an amendment to
allege use and amended the filing basis to Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a). The mark appears on the drawing page as “Public Goods” but this does not change
the nature of the mark from a standard character mark to a special form mark. See In re
Calphalon Corp., 122 USPQ2d 1153 n.1 (TTAB 2017) (citing In re Star Belly Stitcher, Inc.,
107 USPQ2d 2059 n.1 (TTAB 2013)). Our reference to the mark in all uppercase letters
reflects the fact that a term registered as a mark in “standard character” form is not limited
to any particular font style, size, or color.
Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number in the .pdf version of the TSDR records. References to the briefs and other
materials in the appeal record refer to the Board’s TTABVUE docket system.
2 The Section 2(d) refusal did not apply to the International Class 8 goods “razors and razor
blades” which were subsequently divided into a “child” application.
3 Prior to November 2, 2003, standard character marks were known as typed marks. A typed
mark is the legal equivalent of a standard character mark. TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
4 Registered February 18, 1986; renewed.
5 Registered September 29, 2009; renewed. The description of the mark is as follows: “The
mark consists of a vertical rectangle, with a circle overlapping the rectangle and extending
halfway into the rectangle. The circle contains the word ‘PUBLIX’, centered horizontally in
the circle.” Color is not claimed as a feature of the mark.
Serial No. 87344127
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The remaining three cited registrations are for the same composite mark below:6

Registration No. 3717922 for “laundry bleach, laundry
detergent, fabric softeners, anti-static dryer sheets,
dishwashing detergents, hand and bath soaps, liquid soaps
for hands and bodies, sunscreen lotion, hand lotion,
denture cleansers, shampoo, cosmetic pads, cotton balls for
cosmetic purposes, cotton swabs for cosmetic purposes,
baby powder, petroleum jelly for cosmetic purposes, pre-
moistened cosmetic wipes, mouthwash, nail polish
remover, drain openers, glass cleaners, all-purpose
cleaners” in International Class 3.7
Registration No. 3334340 for “plastic trash bags; paper
towels; toilet paper; paper napkins; and facial tissues” in
International Class 16.8
Registration No. 3789338 for “dental floss; disposable
gloves for home use; pre-moistened towelettes for
household cleaning; household utensils, namely, graters,
serving forks, serving spoons, ladles, spatulas, turners,

6 The description of the mark is as follows: “The mark consists of a horizontal rectangle, with
a circle overlapping the rectangle and extending halfway into the rectangle. The circle
contains the word ‘PUBLIX’, centered horizontally in the circle.” Color is not claimed as a
feature of the mark.
7 Registered December 1, 2009; renewed.
8 Registered November 13, 2007; renewed.
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scoops, strainers and non-electric hand mixers”
International Class 21.9
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the Request for
Reconsideration, the appeal was resumed and is now briefed.
For the reasons set forth below, we reverse.
I. Likelihood of Confusion - Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each du Pont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only
to prevent buyer confusion as to the source of the goods, but also to protect the
registrant from adverse commercial impact due to use of a similar mark by a
newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.

9 Registered May 18, 2010; renewed.
Serial No. 87344127
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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.”). Varying
weights may be assigned to each du Pont factor depending on the evidence presented.
See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Shell Oil Co., 26 USPQ2d at 1688 (“[T]he various
evidentiary factors may play more or less weighty roles in any particular
determination”). These factors, and the other relevant du Pont factors, are discussed
below.
A. The Goods and Established, Likely-to-Continue Channels of Trade
Insofar as the Examining Attorney’s refusal applies to all three classes of goods,
we shall consider the second and third du Pont factors as applied to each individual
class.
In comparing the goods as they are identified in the application and the cited
registrations, see Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014), it is undisputed, and Applicant effectively
concedes,10 that two of the three classes involve identical goods and the remaining
class involves highly related, complementary items. The application and cited
Registration Nos. 1382948 and 3717922 include “shampoo” in International Class 3
or the legal equivalent thereof;11 the application and cited Registration No. 3334340

10 In its appeal brief, Applicant presented no arguments regarding the second and third du
Pont factors.
11 “Shampoo” encompasses all types of shampoos, including “hair shampoo.”
Serial No. 87344127
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include “toilet paper” in International Class 16. Thus, on their face, Applicant’s and
Registrant’s goods are in-part identical for these two classes. Because the
International Class 3 and 16 goods are in-part identical and unrestricted as to trade
channels, we must also presume that these particular goods travel in the same
ordinary trade and distribution channels and will be marketed to the same potential
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); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
Thus, the second and third du Pont factors favor a likelihood of confusion with respect
to Applicant’s International Class 3 and 16 goods.
With regard to Applicant’s International Class 21 “toothbrushes,” it is well
established that the goods need not be identical or even competitive to find a
likelihood of confusion, On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000), but need only be “related in some manner and/or
if the circumstances surrounding their marketing are such that they could give rise
to the mistaken belief that [the goods] emanate from the same source.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Serial No. 87344127
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Applicant’s “toothbrushes” in International Class 21 and Registrant’s “dental floss”
in cited Registration No. 3789338 are complementary items used together by
consumers as part of their daily oral care routine. In addition, the Examining
Attorney has submitted evidence demonstrating that it is common for these goods to
be sold under the same mark (e.g., Oral-B, Colgate, Reach, and Plackers) by entities
manufacturing both sets of goods. See August 26, 2017 Office Action, pp. 2-16 and
March 30, 2018 Office Action pp. 17-28. Accordingly, these goods are also
commercially related.
Because the Applicant’s International Class 21 goods and the goods identified in
cited Registration No. 3789338 have no restrictions on channels of trade, we must
presume that they travel in all channels of trade appropriate for such goods, which
the record shows include direct business-to-consumer (“B2C”) manufacturer operated
web sites. See In re Viterra, 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v.
Packard Press, Inc., 62 USPQ2d at 1005). In addition, from common knowledge we
know that both parties’ goods may be encountered by the same prospective consumers
shopping for these items in brick-and-mortar retail outlets such as drugstores and
grocery stores. See Hyde Park Footwear Co. v. Hampshire Designers, Inc., 197 USPQ
639, 641-42 (TTAB 1977) (“some of these facts will be self-evident, a matter of
common knowledge or matters to be presumed from the identifications of goods”). As
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such, both the second and third du Pont factors for Applicant’s International Class
21 goods also favor a finding of likelihood of confusion.
B. The Marks

We now direct our attention to “the similarity or dissimilarity of the marks 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 (Fed. 2005) (quoting du Pont, 177 USPQ at 567). Because we
have found that the goods in cited Registration Nos. 1382948, 3334340, 3717922, and
3789338 are either in-part identical or related, we compare Applicant’s standard
character mark PUBLIC GOODS to Registrant’s typed mark PUBLIX and composite
mark . It is well-settled that where the goods are
identical in part, as is the case here with two of the three classes of goods, less
similarity between the marks is needed for us to find a likelihood of confusion. Coach
Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(“When marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.”). That being
said, a single du Pont factor may be dispositive, and when we compare the marks, we
Serial No. 87344127
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find that to be the case here. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991).
The Examining Attorney, relying on the proposition that similarity in sound alone
may be sufficient to support a finding that the marks are confusingly similar,
contends that PUBLIX in the cited marks is identical in sound to the PUBLIC portion
of Applicant’s mark. As she asserts, PUBLIX is merely the plural version of PUBLIC.
See, e.g., Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB
2015) (holding “it is obvious that the virtually identical marks [the singular and
plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D
Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and
plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay,
245 F.2d 877, 878, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference
between the singular and plural forms of ZOMBIE such that the marks were
considered the same mark). The Examining Attorney also invokes the principle that
there is no correct pronunciation of a mark because it is impossible to predict how the
public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio,
Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1912 (Fed. Cir. 2012)); In re Belgrade Shoe Co., 411 F.2d 1352,
162 USPQ 227, 227 (CCPA 1969)). Finding that the word PUBLIC is the dominant
portion of the applied-for mark since it is the first element and the remaining
wording, GOODS, is disclaimed, the Examining Attorney focuses on PUBLIC as being
similar to the term PUBLIX.
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Applicant counters that the Examining Attorney has improperly dissected the
marks. Applicant argues that when considered as a whole, the marks project different
connotations and commercial impressions -- PUBLIX is a coined term with no
recognized meaning whereas the addition of the word GOODS to the applied-for mark
PUBLIC GOODS conveys a meaning of societal benefit.
We find critical the distinctions between the marks in connotation and commercial
impression. In making our determination, we are guided by the principle that “[t]he
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.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012). See also Zheng Cai v. Diamond Hong, Inc., 901
F.3d 1367, 127 USPQ2d 1797 (Fed. Cir. 2018); Midwestern Pet Foods, Inc., v. Societe
Des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
The record shows the following Google search results for the term “public good:”
Google dictionary: A commodity or service that is provided
without profit to all members of society, either by the
government or a private individual or organization.
WIKIPEDIA: In economics, a public good is a good that is
both non-excludable and non-rivalrous in that individuals
cannot be effectively excluded from use and where use by
one individual does not reduce availability to others.
INVESTOPEDIA: A product that one individual can consume
without reducing its availability to another individual and
from which no one is excluded. Economists refer to public
goods as “non-rivalrous” and “non-excludable.”
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February 26, 2018 Response to Office Action, pp. 29-30. Compare In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (search engine results submitted
by examining attorney not considered because they did not provide sufficient context
to have any probative value). The record further shows Applicant’s mission is to
“[m]ake healthy products affordable to all” by changing the conventional supply chain
to avoid price mark-ups. Id. at 31 (excerpt from www.publicgoods.com). Thus the
words PUBLIC GOODS taken together project the connotation and commercial
impression that Applicant’s personal care products are available to all consumers due
to their affordability, and beneficial to the public because they are environmentally
safe. By contrast, Registrant’s typed mark PUBLIX and the composite mark
incorporating this term have no well-recognized meaning. As a result, when
confronted with both marks, prospective consumers are unlikely to assume that
Applicant’s and Registrant’s respective goods originate from the same source, despite
use in part on identical and highly related goods.
II. Conclusion – Balancing the du Pont Factors
Any of the du Pont factors may play a dominant role. du Pont, 177 USPQ at 567.
In fact, in some cases, a single factor may be dispositive, “especially when that single
factor is the dissimilarity of the marks.” See Oakville Hills Cedar, Inc. v. Georgallis
Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016). See also
Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d
2030, 2032 (Fed. Cir. 2010). In the present ex parte appeal, the record evidence shows
that the dissimilarity of the marks in meaning and commercial impression are so
Serial No. 87344127
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great as to outweigh the other du Pont factors, discussed above. For that reason, we
find the first du Pont factor to be pivotal, and the Trademark Examining Attorney’s
Section 2(d) refusal is reversed.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed as to
all three classes of goods.

Mermelstein, Administrative Trademark Judge, dissenting:
While I agree with much of the majority’s findings, I respectfully dissent from the
conclusion that confusion is not likely.
As my colleagues correctly find, all three classes of Applicant’s goods include goods
identical or closely related to goods set out in the cited registrations, and that those
goods travel in the same channels of trade to the same purchasers. I would add that
the goods at issue — shampoo, toilet paper, and toothbrushes — are common,
inexpensive items purchased by virtually all adults without extensive investigation.
While “[p]urchaser sophistication may tend to minimize likelihood of confusion,
impulse purchases of inexpensive items may tend to have the opposite effect.” Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1695 (Fed. Cir. 2005).
Serial No. 87344127
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Applicant’s mark is PUBLIC GOODS. I agree that this phrase appears to have a
particular meaning in the field of economics1 as a product which is “non-rivalrous”
and “non-excludable.” But the meaning of a mark must be determined in light of the
goods on which it appears, and from the prospective of the relevant purchaser, not in
the abstract. It is far from clear that purchasers of Applicant’s goods — even those
purchasers who may be aware of the economics definition of PUBLIC GOODS —
would ascribe that meaning to the mark when it is encountered on shampoo, toilet
paper, and toothbrushes. I believe it more likely that relevant purchasers would
consider Applicant’s mark to simply refer to goods available to the public.
The mark in the cited registrations is the word PUBLIX, both as a typed mark
and in composite word-and-design marks. While PUBLIX is not a properly spelled
word, I cannot agree with Applicant’s contention that PUBLIX is a coined term with
no recognized meaning. PUBLIX is a homophone and an obvious misspelling of the
plural or possessive of PUBLIC. Elizabeth Arden Sales Corp. v. Faberge, Inc., 304
F.2d 891, 134 USPQ 186, 187 (CCPA 1962) (“it seems to us that the words
Extraordinaire and Extrordinaire are the same for all practical purposes and that
they are used by both parties to suggest an asserted quality of the product upon which
the marks are used”). Although not orthographically correct, a final letter “x” can be
used to form the plural of a word ending in “c” or “k.” See Flow Tech. Inc. v. Picciano,
18 USPQ2d 1970, 1972 (TTAB 1991) (“Opposer’s mark is spelled with a final letter

1 I note that Applicant disclaimed the term GOODS apart from the mark as shown. The
disclaimer is inconsistent with the argument that PUBLIC GOODS has a particular meaning
as a phrase.
Serial No. 87344127
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“k.” Applicant’s is spelled with a final letter “x” which causes applicant’s mark to
sound like the plural of opposer’s, OMNITRAK and OMNITRAX.”). I conclude that
the word PUBLIX in Registrant’s mark looks and sounds similar to the word PUBLIC
in Applicant’s mark, and would be perceived as a plural or possessive of it. “While
each trademark must always be evaluated individually, pluralization commonly does
not alter the meaning of a mark.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d
1632, 1637 (Fed. Cir. 2016).
Of course, Applicant’s mark is not PUBLIC, but the phrase PUBLIC GOODS. The
addition of the word GOODS somewhat distinguishes Applicant’s mark from
Registrant’s in appearance and sound. Nonetheless, I assign the term GOODS
relatively little weight in my analysis. First, the term is disclaimed, no doubt because
it is descriptive of Applicant’s goods. While a disclaimer does not remove matter from
a mark, and we must consider the marks in their entireties, the “descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985)). Second, GOODS is the last word in Applicant’s mark, while
PUBLIC is first. “[I]t is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered. . . .” Presto Prods., Inc. v.
Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers must first notice the identical lead word).
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Likewise, four of the cited registrations include design elements not present in
Applicant’s mark. Again, while these elements provide some visual distinction
between the marks, the design elements at issue here are entitled to little weight. In
each case, the design consists of a rectangular bar intersecting with a circle which
contains the minimally stylized word PUBLIX. Background designs and carriers in
simple geometric shapes typically possess little distinctiveness, and are rarely
sufficient to distinguish otherwise similar marks. In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (“Neither the design element nor the
generic term “cafe” offers sufficient distinctiveness to create a different commercial
impression. Indeed, as the board found, the design is an ordinary geometric shape
that serves as a background for the word mark.”). Such is the case here. The design
elements in Registrant’s marks are simple geometric shapes and do little to
distinguish the marks. Finally, I note that where a mark comprises both words and
a design, “the verbal portion of the mark is the one most likely to indicate the origin
of the goods to which it is affixed.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (cleaned up).
Considering the marks in their entireties, I find that Applicant’s mark PUBLIC
GOODS is substantially similar to the Registrant’s PUBLIX marks. While the marks
are not identical, they are sufficiently similar given the identical and closely related
goods at issue. “When trademarks would appear on substantially identical goods, the
degree of similarity necessary to support a conclusion of likely confusion declines.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
Serial No. 87344127
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(Fed. Cir. 2012) (cleaned up); Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d
1797, 1801 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550 (Apr. 15, 2019).
I would accordingly affirm the refusal to register on the ground of likelihood of
confusion, and I respectfully dissent from the majority’s contrary conclusion.