HWE, Inc.

Trademark Trial and Appeal Board

Mar 8, 2000

No. 75216681 (T.T.A.B. Mar. 8, 2000)

Paper No. 13
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 8, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re HWE, Inc.
________
Serial No. 75/216,681
_______
Syed A. Hasan and Peter J. Reitan of Christie Parker & Hale
for applicant.
Ira Goodsaid, Trademark Examining Attorney, Law Office 115
(Thomas Vlcek, Managing Attorney).
_______
Before Quinn, Hairston and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by HWE, Inc. to register
the mark FOOT SOOTHER for “foot massagers.” 1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, if applied to applicant’s

1 Application Serial No. 75/216,681, filed December 21, 1996,
alleging a bona fide intention to use the mark in commerce. The
term “Foot” is disclaimed apart from the mark.
Ser No. 75/216,681
2
goods, would so resemble the previously registered mark
BODY SOOTHER for “electric hand held massager” 2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs. An
oral hearing was requested, but later was waived by
applicant.
Before turning to the merits of the appeal, an
evidentiary matter requires our attention. During the ex
parte prosecution of its application prior to appeal,
applicant did not submit any evidence in support of its
arguments. It was not until after the appeal was filed
that applicant first submitted any evidence. More
specifically, the evidence accompanied applicant’s appeal
brief. The Examining Attorney, in his brief, asserted that
the evidence was untimely and urged that the Board
disregard the exhibits attached to the appeal brief. The
Examining Attorney went on to indicate that even if the
evidence were considered, it would not mandate a withdrawal
of the refusal. 3

2 Registration No. 1,742,233; combined Sections 8 and 15
affidavit filed.
3 As indicated by the Examining Attorney, the materials
comprising Exhibit D are not in the file.
Ser No. 75/216,681
3
Trademark Rule 2.142(d) provides, in relevant part,
that the record in an application should be complete prior
to the filing of an appeal and that the Board will
ordinarily not consider additional evidence filed with the
Board after the appeal is filed. See also: TBMP §1207.
In the present case, applicant’s submission of the exhibits
accompanying the appeal brief is clearly untimely. The
evidence was available prior to the appeal and easily could
have been introduced at that time to rebut the Examining
Attorney’s contentions. Accordingly, the evidence does not
form part of the appeal record, and it has not been
considered in reaching a decision in this case. 4 We hasten
to add, however, that even if considered, we agree with the
Examining Attorney’s assessment that the evidence is not
persuasive of a different result in this case.
Turning now to the merits, applicant “acknowledges
certain superficial similarities between its mark and the
prior registration as well as between the goods associated
with each mark.” Applicant contends, however, that “those

4 Inasmuch as dictionary definitions are proper subject matter
for judicial notice, we take judicial notice of the definition of
the term “soothe” (Exhibit A). Moreover, we note that the
Examining Attorney has stipulated to the introduction of the
definition. We likewise take judicial notice of the definition
of “body” which the Examining Attorney has relied upon in his
brief.
Ser No. 75/216,681
4
similarities are not sufficient to raise a likelihood of
confusion sufficient to prevent registration” of
applicant’s mark. (brief, p. 2) Applicant points to
specific differences between the marks and the goods. As
to the marks, applicant argues that the only commonality
between the marks is a suggestive term, and that the marks
are readily distinguishable by the addition of two
different terms. As to the goods, applicant essentially
states that foot massagers generally are not held by hand,
and that hand-held massagers typically are not used on
feet.
The Examining Attorney maintains that the marks and
goods are sufficiently similar to result in a 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 likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 75/216,681
5
We first turn to consider the goods. It is well
settled that the issue of likelihood of confusion between
applied-for and registered marks must be determined on the
basis of the goods as they are identified in the involved
application and cited registration, rather than on what any
evidence may show as to the actual nature of the goods,
their channels of trade and/or classes of purchasers.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re
Elbaum, 211 USPQ 639 (TTAB 1981). Thus, we agree with the
Examining Attorney that applicant’s “foot massagers” would
be encompassed within registrant’s broadly worded
identification “electric hand held massager.” In any
event, with respect to the goods, it is well settled that
they need not be identical or even competitive in nature to
support a finding of likelihood of confusion. Instead, it
is sufficient that the goods are related in some manner
and/or that the circumstances surrounding their marketing
are such that they would be likely to be encountered by the
same persons under situations that would give rise, because
of the marks employed in connection therewith, to the
mistaken belief that they originate from or are in some way
associated with the same producer or provider. See, e.g.,
In re International Telephone & Telegraph Corp., 197 USPQ
Ser No. 75/216,681
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910, 911 (TTAB 1978). In spite of the specific differences
pointed to by applicant (“[f]or reasons of sanitation and
convenience, foot massagers are not typically held by hand
and hand-held massagers are not typically used for the
feet”), we find that the respective massagers are
substantially similar. In the absence of probative
evidence to the contrary, we see no reason why an electric
hand-held massager would not be used to massage a person’s
feet. Further, the goods certainly would move in the same
channels of trade and would be purchased by the same
classes of purchasers.
Insofar as the marks are concerned, we acknowledge the
suggestiveness of the common term “SOOTHER,” and that the
generic terms “FOOT” and “BODY” are different.
Nonetheless, the marks FOOT SOOTHER and BODY SOOTHER are
identical in construction, with the marks’ comprising a
generic anatomical term followed by the term “SOOTHER.” We
find that the marks convey similar meanings (soothing to
the foot and soothing to the body). Notwithstanding this
suggestiveness, however, the record is devoid of evidence
showing any third-party uses or registrations of the same
Ser No. 75/216,681
7
and/or similar marks for the types of goods involved here.5
In sum, the similarities between the two marks in overall
commercial impression outweigh the differences. We find
that the Examining Attorney is quite reasonable in
suggesting that purchasers may well believe, in view of the
similarity between registrant’s mark BODY SOOTHER and
applicant’s mark FOOT SOOTHER, that applicant’s foot
massager is merely another type of massager marketed by
registrant. In finding a likelihood of confusion between
the marks as applied to substantially similar goods, we
have kept in mind the fallibility of human memory over time
and the fact that consumers usually retain a general rather
than a specific impression of trademarks encountered in the
marketplace.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

5 Even if the third-party registrations attached to applicant’s
appeal brief were properly of record and considered, we would
point out that none covers massagers or like products.
Ser No. 75/216,681
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We conclude that purchasers familiar with registrant’s
electric hand-held massager sold under its mark BODY
SOOTHER would be likely to believe, upon encountering
applicant’s mark FOOT SOOTHER for foot massagers, that the
goods originated with or are somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.
T. J. Quinn
P. T. Hairston
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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