G.H.L. International, Inc.

Trademark Trial and Appeal Board

Sep 25, 2012

No. 77886169 (T.T.A.B. Sep. 25, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 25, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re G.H.L. International, Inc.
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Serial No. 77886169
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Mollie A. Newcomb of Boyle Fredrickson, S.C. for G.H.L. International, Inc.

Katherine S. Chang, Trademark Examining Attorney, Law Office 115 (John T. Lincoski,
Managing Attorney).
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Before Seeherman, Bergsman and Ritchie, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

G.H.L. International, Inc. (“applicant”) filed an intent-to-use application to register the
mark NATURE’S SPRING FOUNTAIN, in standard character form, for goods ultimately
identified as “automated pet waterers,” in Class 7. Applicant disclaimed the exclusive right to
use the word “Fountain.”
The Trademark Examining Attorney refused to register applicant’s mark under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark is
likely to cause confusion with the registered mark NATURE’S SPRING, in typed drawing form,
for “water filtration and purification units for domestic use,” in Class 11.1

1 Registration No. 1309890 issued on December 18, 1984; renewed.
Serial No. 77886169

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Preliminary Issue
In applicant’s June 10, 2010 response, it referenced, but did not include, exhibits
describing registrant’s goods, demonstrating that applicant’s products are sold through pet stores
and registrant’s goods are sold through websites directed to healthy living, displaying the price
of registrant’s goods, and a list of third-party registrations incorporating the words “nature” or
“spring” for water related products. The response also included a table listing the third-party
registrations.
In the June 29, 2011 Office action, the Trademark Examining Attorney noted that the
table of registrations submitted by applicant did not make the registrations of record and she
explained how applicant should submit them. The Trademark Examining Attorney did not
reference the other missing exhibits.
Applicant attached the following evidence to its appeal brief:2

1. Information about registrant’s goods;

2. Google search engine results for “Nature’s Spring”;

3. Webpages from registrant’s website advertising the NATURE’S SPRING reverse
osmosis water system, including replacement filters;

4. Copies of third-party registrations from the USPTO electronic database of marks
incorporating the words “nature” or “spring” for water related goods;

5. The store locator webpage for PUR Water Filtration Systems;

6. A copy of a webpage from the PETCO website advertising the sale of a water
filter; and

7. A copy of a Walmart floor plan.

2 In its Reply Brief, applicant explained that these were the documents that it identified but failed to
include in its June 10, 2010 response.
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The Trademark Examining Attorney objected to the introduction of this evidence on the
ground that it was not timely filed. Trademark Rule 2.42(d) provides that the record in the
application should be complete prior to the filing of an appeal. In this regard, if an applicant
includes a listing of registrations in a response to an Office action, and the Trademark Examining
Attorney does not advise applicant that the listing is insufficient to make the registrations of
record at a point when the applicant can correct the error, the Trademark Examining Attorney
will be deemed to have waived any objection to consideration of the list itself, for whatever
probative value it may have. In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012). See
also TBMP § 1208.02 (3rd ed. rev. 2012) and TMEP § 710.03 (8th ed. 2011).
The Trademark Examining Attorney notified applicant that its list of registrations was not
the proper way to make the registrations of record. Applicant had sufficient time to properly
make the registrations of record but failed to submit copies of the registrations prior to filing its
brief.3 In view thereof, the objection to the late-filed copies of third-party registrations is
sustained and neither the table of registrations in applicant’s brief, nor the copies of the
registrations, has been considered. We hasten to add, however, that even if the table of
registrations submitted by applicant was considered, it would have little probative value because
applicant did not include the goods for which the registrations were issued.
With respect to the remaining exhibits, because the Trademark Examining Attorney did
not inform applicant that the exhibits that applicant referenced in its June 10, 2010 response were
not included in its response at a point when applicant could have corrected the omission, the
Trademark Examining Attorney is deemed to have waived any objection to consideration of
those exhibits.

3 Trademark Rule 2.64(b), 37 CFR § 2.64(b), provides that an applicant may request reconsideration
before the deadline for filing an appeal to the Board.
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Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarity of the marks
and the similarity of the goods. See Federated Foods, Inc. 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”).
A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.
We turn first to the du Pont likelihood of confusion factor focusing on the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial
impression. In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). In a particular case, any one of these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson
Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987).
The registered mark is NATURE’S SPRING. Applicant’s mark is NATURE’S SPRING
FOUNTAIN. The marks are similar to the extent that they share the term NATURE’S SPRING.
In fact, applicant’s mark incorporates the entire registered mark. The difference in the marks is
Serial No. 77886169

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applicant’s addition of the descriptive word “Fountain.”4 It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion determinations. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1983)
(“Regarding descriptive terms, this court has noted that the descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion”); In re Dixie
Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark’s commercial impression”). In this case, the presence of the
additional descriptive word “Fountain” in applicant’s mark is not sufficient to distinguish the
marks, given that the other term, “Nature’s Spring,” is identical. See In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Thus, the shared term NATURE’S
SPRING is the dominant part of applicant’s mark.
The significance of the term NATURE’S SPRING as the dominant element of applicant’s
mark NATURE’S SPRING FOUNTAIN is further reinforced by its location as the first part of
the mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“[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”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word
to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,

4 The Trademark Examining Attorney required applicant to disclaim the exclusive right to use the word
“Fountain” on the ground that it is descriptive when used in connection with a pet watering device.
Applicant complied with this requirement, thereby acknowledging the descriptiveness of the word
“Fountain.”
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23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word).
In view of the foregoing, we find that the marks are similar in terms of appearance,
sound, meaning and commercial impression.
B. The similarity or dissimilarity and nature of the products described in the application and
registration, and the similarity or dissimilarity of likely-to-continue trade channels.
In determining whether the goods are related, it is not necessary that the goods at issue be
identical or competitive in character to support a holding of likelihood of confusion; it is
sufficient for such purposes that the goods are related in some manner and/or that conditions and
activities surrounding marketing of these goods are such that they would or could be encountered
by the same persons under circumstances that could, because of similarities of marks used with
them, give rise to the mistaken belief that they originate from or are in some way associated with
the same producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410
(TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980);
Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
Applicant is seeking to register its mark for “automated pet waterers” and the mark in the
cited registration is for “water filtration and purification units for domestic use.” In her March
15, 2010 and June 29, 2010 Office actions, the examining attorney submitted copies of
advertisements posted on GOOGLE PRODUCTS for pet drinking fountains. These are pet water
fountains that provide running water. Although in some of the listings the fountains are
advertised as having filters to remove impurities, bad taste and odors from the water, and
replacement filters also are advertised for sale, this is not the focus of the advertisements.
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Registrant’s “water filtration and purification units for domestic use” are water purifiers
“for making great tasting, high quality drinking water.”5 The system includes an activated
carbon filter that reduces pollutants and improves taste. Replacement filters are available for
purchase.
Applicant argues that “[a] water filtration device is not a pet waterer and a pet waterer is
not a water filtration device, and the fact that water is filtered in both devices is not the primary
issue for the relevant consumers. Consumers would neither confuse the two nor believe them to
originate from the same source.”6 However, the issue here is not whether purchasers would
confuse applicant’s goods and registrant’s goods, but rather whether there is a likelihood of
confusion as to the source of these goods and/or services. In re Rexel Inc., 223 USPQ 830
(TTAB 1984). The fact that the products both involve filters does not in and of itself provide a
basis for regarding the products as related. See Electronic Data Systems Corp. v. EDSA Micro
Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (“[T]he issue of whether or not two products are
related does not revolve around the question of whether a term can be used that describes them
both, or whether both can be classified under the same general category.”); Harvey Hubbell, Inc.
v. Tokyo Seimitsu Co., 188 USPQ 517, 520 (TTAB 1975) (“In determining whether products are
identical or similar, the inquiry should be whether they appeal to the same market.”). In other
words, would consumers attribute the products to the same source.
Applicant’s products and registrant’s products can both be used to provide pure water.
However, the primary purpose of registrant’s water filtration and purification systems is to filter
the water coming into a home (e.g., in the form of a countertop unit with a faucet attachment for

5 Exhibits attached to applicant’s Appeal Brief.
6 Applicant’s Brief, pp. 3-4.
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a kitchen sink).7 Registrant’s products are sold to consumers who are concerned about high
quality drinking water. Registrant promotes its products as follows:
It doesn’t take a nutrition specialist to see that the quality of the
water we drink is vital to our well-being.
The only way for you, the consumer, to be absolutely sure about
the purity of your drinking water is to purify it yourself at the point
of use with Nature’s Spring Reverse Osmosis.
While registrant’s system could theoretically be used to purify water that is provided to
pets, this is not the normal purpose for water filtration and purification units for domestic use.
Instead, the primary purpose of the pet waterers appears to be to provide fresh flowing water.
See, for example
Pets love fresh, flowing water. Petmate’s ultra-quiet Fresh Flow
purifying pet fountain for large dogs provides naturally cool,
flowing water your pet will love.8
The Drinkwell Platinum Pet Fountain is the ultimate in style and
design. The Platinum utilizes the same innovative watering system
as our other Drinkwell Pet Fountains, featuring the patented free-
falling stream of water. This entices pets to drink more, keeping
them happy, healthy and hydrated. The Platinum features a new
snap-on lid to prevent accidental removal, a pre-filter to catch any
large particles before they reach the motor, and a submersible
pump for nearly silent operation. With the same quality that
consumers have come to rely on, the Drinkwell Platinum is a
culmination of 10 years’ experience in making pet fountains.9

7 Advertising flyer attached to applicant’s Appeal Brief.
8 Amazon.com Product Description for Petmate Deluxe Fresh Flow Pet Fountain Medium, Espresso, page
2 of June 29, 2010 Office action.
9 Product description for Drinkwell Platinum Pet Fountain on amazon.com site, page 4 of June 29, 2010
Office action (we note that the only reference to the filter in the description is not to purify water, but to
prevent damage to the motor).
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Therefore, in the absence of any supporting evidence, we find that it is unlikely that
consumers would associate the source of these disparate products especially when, as discussed
below, the channels of trade are different. See Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d at 1410 (opposer did not meet its burden of proof of showing that applicant’s computer
monitoring system used to analyze patient lab results and anticipate adverse drug events is
related to opposer’s heart monitors) .
The Trademark Examining Attorney argues that the USPTO analyzes the goods at issue
based on the identification of goods in the application and cited registration and will not read
limitations or restrictions into the goods, channels of trade or classes of consumers that are not
reflected in the identification of goods. Because the identification of goods at issue do not have
any limitations or restrictions as to channels of trade or classes of consumers, the Trademark
Examining Attorney concludes that the goods of the applicant and registrant move in all normal
channels of trade and that they are available to all potential consumers; however, the Trademark
Examining Attorney does not identify those channels of trade.
The record in this case shows that pet water fountains are sold through Amazon.com,
PetSmart, Petmate, and other online pet retailers. The only evidence relating to how water
purification and filtration systems are sold is the store locator webpage for PUR Water Filtration
Systems which indicate that these systems are sold by such stores as CVS, Target, Walmart,
Home Depot, Walgreens, KMart, Sears, etc.10 There is no evidence that automated pet waterers
are also sold in those outlets. However, even if there was evidence that automated per waterers
were also sold by mass merchandisers, this is not compelling evidence because not everything

10 Applicant also included GOOGLE search results. However, with the exception of Amazon.com, the
GOOGLE search results do not provide sufficient information to permit us to draw any conclusions
regarding where and how water filtration and purification systems are sold.
Serial No. 77886169

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that is sold by large retail establishments selling a plethora of otherwise unrelated goods is
necessarily connected, within the meaning of Section 2(d), to every other product that happens to
be displayed or offered under the same roof. Federated Foods, Inc. Fort Howard Paper
Company, 192 USPQ at 29; Sheller-Globe Corporation v. Scott Paper Company, 204 USPQ
329, 335 (TTAB 1979).
The evidence is not sufficient to prove that the goods move in the same channels of trade.
Thus, on this record we cannot find that the applicant’s NATURE SPRING FOUNTAIN
“automated pet waterers” and registrant’s NATURE SPRING water purification and filtration
systems will be marketed to the same consumers under circumstances likely to give rise to the
mistaken belief that the products emanate from the same source. As indicated above, “[t]he
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.” Federated Foods, Inc. Fort
Howard Paper Company, 192 USPQ at 29.
In view of the foregoing, we find that the goods are not related and the goods do not
move in the same channels of trade.
C. Degree of care.
The evidence attached to applicant’s brief shows that registrant’s water purification and
filtration system costs $382 - $547 and replacement filters cost $70 - $168. The evidence
submitted by the Trademark Examining Attorney shows that pet fountains cost $27- $80.
Applicant asserts that since registrant’s products are expensive, they will be purchased with care
and the purchaser “is not likely to believe that an automated pet waterer, no matter how fancy,
emanates from the same source.”11 Furthermore, applicant contends that because its automated

11 Applicant’s Brief, pp. 5-6.
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pet waterers are far more expensive than typical pet bowls, it is a luxury item for pets and that
consumers will exercise a high degree of care.12 We agree that a consumer for registrant’s water
filtration and purification system is likely to exercise a high degree of care in making his or her
purchasing decision. However, on this record, we would be speculating regarding the care
exercised by consumers for an automated pet waterer. At most, we can say that, due to the cost,
the purchase of a pet waterer would not be made on impulse. The real questions, though, is even
if care is exercised, are consumers likely to distinguish between the marks. As we have often
noted, even consumers who exercise a high degree of care are not necessarily knowledgeable
regarding the trademarks at issue and, therefore, immune from source confusion. In re Wilson,
57 USPQ2d 1863, 1865-1866 (TTAB 2001). In this case, as we have discussed, the marks are
quite similar, however, the goods are not related and they move in different channels of trade.
Thus, while the sophistication of buyers and purchaser care may be relevant considerations, they
are not controlling on this factual record.
D. Strength of the Registered Mark.
Although we have given no consideration to the list of third-party registrations submitted
by applicant, we note the mark itself, NATURE’S SPRING, is suggestive in nature. As a result,
consumers are not likely to assume a source connection with any other mark containing this
phrase that is used for any goods relating to water.
E. Balancing the factors.
Despite the similarity of the marks, the goods are sufficiently distinct and the channels of
trade are sufficiently different that we find that applicant’s mark NATURE’S SPRING

12 Applicant’s Brief, p. 6.
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FOUNTAIN for “automated pet waterers” is not likely to cause confusion with the registered
mark NATURE’S SPRING for “water filtration and purification units for domestic use.”
Decision: The refusal to register is reversed.