Dreamworld Collections LLC

Trademark Trial and Appeal Board

Sep 29, 2015

No. 86160630 (T.T.A.B. Sep. 29, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dreamworld Collections LLC
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Serial Nos. 86160630 and 861606911

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Luke Brean of Breanlaw, LLC,
for Dreamworld Collections LLC
Jonathan Ryan O’Rourke, Trademark Examining Attorney, Law Office 104,
Dayna J. Browne, Acting Managing Attorney.
_____

Before Zervas, Ritchie and Lykos,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Dreamworld Collections LLC (“Applicant”) seeks registration on the Principal
Register of the standard character marks “DREAMWORLD COLLECTIONS”
(Application Serial No. 86160630; COLLECTIONS disclaimed) and “DRESS UP
YOUR DREAMWORLD” (Application Serial No. 86160691), both for “Children toys,

1 On June 23, 2015, the Board consolidated the two applications and ordered that they may
be presented on the same brief. Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) § 1214 (June 2015).
References to filings and evidence are to the record in application Serial No. 86160630.
Serial Nos. 86160630 and 86160691
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excluding products for the science fiction and fantasy markets, namely, Doll
accessories; Doll clothing; Doll costumes; Doll furniture; Doll houses; Dolls; Shoes
for dolls” in International Class 28.2
The Examining Attorney refused registration of each of Applicant’s marks under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the standard character mark “DREAMWORLD” in Registration No. 2880721
for “Printed material, namely trading card, posters, stickers, calendars, and science-
fiction and fantasy books” in International Class 16 and “Toys and games, namely
science-fiction and fantasy card games and board games” in International Class 28.3
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed. We affirm the refusal to register in each
application.
I. Applicable Law
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a
likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and

2 Both applications were filed on January 8, 2014, and both applications claim first use
anywhere and first use in commerce since at least as early as February 13, 2011.
3 Registration No. 22880721 was renewed on July 11, 2014.
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In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
As argued by Applicant and the Examining Attorney, the relevant du Pont
factors in this appeal are the similarities or dissimilarities of the marks, goods and
trade channels.
A. Similarity or Dissimilarity of the Marks
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. The test is
not whether the marks can be distinguished when subjected to 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 goods offered
under the respective marks is likely to result. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation
omitted). Under actual marketing conditions, consumers do not necessarily have the
luxury of making side-by-side comparisons between marks, and must rely upon
their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255
(TTAB 1980).
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Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). See also, Franklin Mint Corp. v. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not
be dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). The individual components of a mark,
however, may be weighed to determine its overall commercial impression. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) (“[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.”)).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. In re Association of the
United States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975). Applicant describes the average purchaser of
Applicant’s goods as “single or married (parents/relatives/friends) [who] purchase
for their children aged 3-11.”4 We find the average purchaser for Applicant’s goods

4 Applicant's Brief at 8, 8 TTABVUE 9.
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is not as limited as Applicant believes; the average purchaser of Applicant’s and
registrant’s goods are members of the general public who may be purchasing for
themselves or others, including their children or the children of others (although an
analysis based on the subset of consumers identified by Applicant would not change
our conclusion).
The DREAMWORLD COLLECTIONS Mark
As noted, Applicant has disclaimed the term COLLECTIONS. COLLECTIONS
is defined as “a group of interesting or beautiful objects brought together in order to
show or study them as a hobby.”5 The term as used in the mark identifies a
grouping of Applicant’s dolls, and their accessories. (Similar to other collections of
dolls, such as American Girl dolls, Applicant’s dolls feature girls with different
attire.).6 The term “collections,” therefore, is merely descriptive of a feature of
Applicant’s goods, indicating that they can be sold in sets or groupings, as the
Examining Attorney maintains at p. 4 of his Brief. In essence, Applicant has added
a merely descriptive term, which it disclaimed, to Applicant’s mark. As the merely
descriptive term does not serve to distinguish the marks, and the marks share the
term DREAMWORLD, we find the marks to be similar in sound, meaning,
appearance and commercial impression.

5 http://www.merriam-webster.com/dictionary/collection, submitted with April 16, 2014
Office Action.
6 See Exh. B, Response to First Office Action, Applicant’s webpage depicting a doll as a
bride and another doll as a cowgirl.
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The DRESS UP YOUR DREAMWORLD Mark
The immediate impression of Applicant’s mark is as an exhortation to “dress up”
the DREAMWORLD doll with the clothing and accessories identified in the
identification of goods. Thus, the dominant term in the mark is DREAMWORLD,
which is identical to registrant’s mark. By referencing DREAMWORLD, with an
instruction what to do to DREAMWORLD, the marks are similar in commercial
impression. They are similar in sound and appearance too, due to the shared term
DREAMWORLD which consists of registrant’s mark and appears as the last term in
Applicant’s mark.
Applicant webpage, duplicated below, confirms the dominance of
DREAMWORLD in Applicant’s DRESS UP YOUR DREAMWORLD mark:

DRESS UP YOUR DREAMWORLD appears next to DREAMWORLD
COLLECTIONS at the top of the webpage, above a doll dressed in a wedding dress
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and holding a bouquet of flowers. Tabs for links to other webpages labeled as “18
inch doll clothes” and “18 inch doll accessories,” appear between the marks and the
depiction of the bride doll.
Applicant maintains that there is a difference in the commercial impressions of
the marks:
The Applicant’s mark as applied to the goods claimed firmly creates
a mental impression of dolls and accessories for children and
adolescent girls. It is widely accepted that little girls form a very
personal bond with their dolls, forged with love and affection. Little
girls like to pretend that their dolls are their own babies, sisters or
friends. Talking to their dolls, feeding them, dressing them up in cute
outfits are part of the fun in playing with dolls. In a sense, little girls
weave their own “dreamworld” … in which these dolls are a part.
Indeed, the Applicant’s mark DRESS UP YOUR DREAMWORLD
accurately captures the spirit of innocence and girly fun in playing
with dolls, and this is exactly the mental impression that is conveyed.

The cited mark on the other hand, DREAMWORLD for science
fiction and fantasy cards and board games convey an entirely
[different] idea altogether. The average consumer will appreciate this
to refer to more cerebral or mental activities which are unique to the
science fiction and fantasy genre. DREAMWORLD, as applied to the
goods, suggests characters, images, places, scenarios that are created
and exist only in the imagination.7

We are not persuaded by the distinction drawn by Applicant because registrant’s
goods are not limited in subject matter in the sense mentioned by Applicant.
Rather, registrant’s goods may involve the same subject matter as reflected in
Applicant’s webpages. See discussion later in this decision regarding the meaning of
“fantasy” and the potential subject matter of registrant’s identified goods.

7 Applicant's Brief at 6-7, 8 TTABVUE 7-8.
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B. Similarity or Dissimilarity of the Goods.
We base our evaluation on the goods as they are identified in the registration
and applications. See Stone Lion Capital Partners, 110 USPQ2d at 1161; Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant’s and registrant’s goods need
only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant states in its brief, “It must be here noted that Applicant has excluded
the goods claimed by the Registrant, i[.]e., ‘science-fiction and fantasy card games
and Board games.’”8 Card games and board games were never in Applicant’s
original identification of goods, thus it could not have excluded such goods. Rather,
the effect of Applicant’s limitation “excluding products for the science fiction and
fantasy markets,” was to exclude those doll accessories that are intended for the
science fiction and fantasy markets. Applicant’s limitation did not affect the
remaining goods in its identification of goods, namely, “Doll clothing; Doll costumes;
Doll furniture; Doll houses; Dolls; Shoes for dolls.” As the Examining Attorney
points out, these items are separated from the initial item in Applicant’s list of

8 Applicant's Brief at 8, 8 TTABVUE 9.
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goods, “Children toys, excluding products for the science fiction and fantasy
markets, namely, Doll accessories” by a semicolon. Section 1402.01(a) of the
Trademark Manual of Examining Procedure (July 2015) contrasts the use of
commas with the use of semicolons in identifications:
In general, commas should be used in the identification to separate
items within a particular category of goods or services. When the items
are preceded by the word “namely,” a comma should always be used
before and after that term. For example, “clothing, namely, hats, caps,
sweaters, and jeans” is an acceptable identification of goods in Class 25
and shows proper use of commas.

Semicolons should generally be used to separate distinct categories of
goods or services within a single class. For example, “cleaners, namely,
glass cleaners, oven cleaners, and carpet cleaners; deodorizers for pets”
is an acceptable identification in Class 3. In this example, the word
“cleaners” names the category covering “glass cleaners, oven cleaners,
and carpet cleaners.” The semicolon prior to “deodorizers for pets”
indicates that the deodorizers are a separate category of goods from the
cleaners. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163,
1166 (TTAB 2013) (finding that, because a semicolon separated the two
relevant clauses in registrant’s identification, its “restaurant and bar
services” is a discrete category of services that stands alone and
independently as a basis for likelihood-of-confusion analysis, and is not
connected to nor dependent on the services set out on the other side of
the semicolon).

The placement of the semicolon between “Children toys, excluding products for
the science fiction and fantasy markets, namely, Doll accessories” and “Doll
clothing; Doll costumes; Doll furniture; Doll houses; Dolls; Shoes for dolls” indicates
that the former is in a separate distinct category of goods within International Class
28.
Having concluded that the limitation “science-fiction and fantasy card games
and board games” only applies to doll accessories, we consider whether there is a
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relationship between Applicant’s “dolls” and registrant’s “Toys and games, namely
science-fiction and fantasy card games and board games” in International Class 28.
An immediate relationship between the goods is apparent; Applicant’s identification
of goods allows that its “dolls” may be the science-fiction or fantasy characters
depicted in the card or board games, such as Darth Vader or Yoda in Star Wars,
because “dolls” in Applicant’s identification of goods are not limited to any
particular type of doll.
In addition, the Examining Attorney introduced (i) webpages from several third-
party websites demonstrating that dolls and board games are offered for sale on the
same website under the same mark; and (ii) several third-party registrations listing
dolls and board games.9 This evidence demonstrates that there is a commercial
relationship between “dolls” as set forth in Applicant’s identification of goods and
registrant’s board games.

Applicant argues that registrant’s goods are not the type purchased for children
aged 3-11.10 For support, Applicant relies on registrant’s specimen of use,
reproduced below:11

9 Third-party registrations may serve to suggest that the types of goods involved herein
may emanate from a single source. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988) (Although third-party registrations are “not evidence that the marks
shown therein are in use on a commercial scale or that the public is familiar with them,
[they] may nonetheless have some probative value to the extent that they may serve to
suggest that such goods and/or services are of a type which may emanate from a single
source”). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
10 Applicant's Brief at 8, 8 TTABVUE 9.
11 Exh. C, Response to First Office Action.
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The specimen depicts a playing card game with the term DREAMLAND, a large
eye, and with the wording, “every dream, every thought, every creation, every fear.”
There is also a depiction of a man falling into a pink abyss. Applicant’s argument is
not well taken, because, as noted above, we must base our evaluation on the goods
as they are identified in the registration and applications. Stone Lion Capital
Partners, 110 USPQ2d at 1161; Octocom Systems, 16 USPQ2d at 1787. Additionally,
the term “fantasy” in registrant’s identification of goods can be construed to include
the type of all types of fantasy genre products, including those “fantasy” goods
reflected in Applicant’s specimen. The definition of “fantasy,” “a genre of
imaginative fiction involving magic and adventure, especially in a setting other
than the real world,” applies to registrant’s goods and to goods of the type depicted
in Applicant’s specimen of use, which Applicant characterizes as appropriate for
children aged 3-11.
In addition, it has not escaped our attention that the cited registration recites
the following International Class 16 goods, “Printed material, namely trading card,
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posters, stickers, calendars, and science-fiction and fantasy books.” Of course, the
trading cards, posters, stickers and calendars are not limited to science-fiction and
fantasy trading cards, posters, stickers and calendars. A relationship exists between
“dolls” and the trading card, posters, stickers, and calendars because the same dolls
may be depicted in trading cards, posters, stickers, and calendars.
Moreover, the record contains third-party registrations (Registration Nos.
3923602, 3823240 and 3326464) which list dolls and paper goods such as stickers,
calendars and books,12 suggesting that such goods are of a kind that may emanate
from a single source under a single mark, and webpages from vendors selling both
dolls and trading cards. See, e.g., webpages from http://www.pokemoncenter.com
and http://www.cartoonnetworkshop.com offering trading cards and dolls.
In view of the foregoing, we find that “dolls” and “Printed material, namely
trading card, posters, stickers, calendars, and science-fiction and fantasy books” in
International Class 16 and “Toys and games, namely science-fiction and fantasy
card games and board games” in International Class 28 are related to each other.
Thus, the du Pont factor regarding the relationship between the goods weighs in
favor of finding a likelihood of confusion.
C. Similarity or Dissimilarity of Trade Channels.
We next consider Applicant’s and registrant’s established and likely to continue
channels of trade. With regard to Applicant’s and registrant’s goods, as there are no
limitations as to channels of trade in their respective identifications of goods, we

12 April 16, 2014 Office Action.
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presume that their respective goods move in all channels of trade that are normal
for such goods. See Octocom Systems, 16 USPQ2d at 1787; Paula Payne Products
Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). The website evidence reflects
that the goods are offered to the same purchasers, and on the same webpages via
online toy retailers.13 Further, Applicant’s argument at p. 8 of its Brief,14 that if the
involved goods are all sold in the same toy stores, they would be in different parts of
the stores, is without evidentiary support. We therefore find that registrant’s and
Applicant’s goods travel in the similar trade channels.
D. Balancing the du Pont Factors
We have found that Applicant’s marks are similar to registrant’s mark, and that
there is a relationship between Applicant’s goods and registrant’s goods. Further,
we have found the trade channels to be overlapping. In view thereof, we conclude
that Applicant’s mark for “Children toys, excluding products for the science fiction
and fantasy markets, namely, Doll accessories; Doll clothing; Doll costumes; Doll
furniture; Doll houses; Dolls; Shoes for dolls” is likely to be confused with
registrant’s mark for “Printed material, namely trading card, posters, stickers,
calendars, and science-fiction and fantasy books” and “Toys and games, namely
science-fiction and fantasy card games and board games.”

13 See evidence submitted with April 14, 2014 Office Action and Final Office Action.
14 8 TTABVUE 9.
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Decision: The refusals to register Applicant’s marks DREAMWORLD and
DRESS UP YOUR DREAMWORLD under Section 2(d) are affirmed.