Hy-Vee Inc.

Trademark Trial and Appeal Board

Dec 12, 2017

No. 86749605 (T.T.A.B. Dec. 12, 2017)

Mailed: December 12, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hy-Vee Inc.
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Serial No. 86749605
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Timothy J. Zarley of Zarley Law Firm PLC, for Hy-Vee, Inc.

Jeanine Gagliardi, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Zervas, Wolfson and Heasley,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Hy-Vee, Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark THE SOAP & WATER COMPANY (“Soap” or “Company”
disclaimed)1 for “retail store service within a section of a retail supermarket featuring
bath and body products” in International Class 35.2

1 The disclaimer statement in the application reads as follows: “No claim is made to the
exclusive right to use ‘SOAP’ or ‘COMPANY’ apart from the mark as shown.” While the use
of “or” to join terms in a mark that is subject to a disclaimer requirement is permitted, see
Trademark Manual of Examining Procedure (TMEP) § 1213.08(a)(i) (October 2017), the
disclaimer of rights applies to both terms.
2 Application Serial No. 86749605, filed on September 8, 2015, pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
This Opinion is not a
Precedent of the TTAB
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on two registrations, owned
by the same owner, for the standard character mark SOAP & WATER CLEAN
WATER THROUGH SOAP (“Soap” disclaimed). The two registrations on the
Principal Register are: Registration No. 4358291 (“the ‘291 registration”) for
soaps for personal use; personal care products, namely,
body lotion, bath gels, shower gels, body sprays, bath soaps,
body scrubs and cosmetic preparations for cosmetic body
wrap applications for general personal care3

and Registration No. 4874946 (“the ‘946 registration”) for
retail store services and online retail store services
featuring cosmetics, skin care and personal care products.4

After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. The case is fully briefed. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act 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, 567 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).

3 Issued June 25, 2013.
4 Issued December 22, 2015.
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In considering the evidence of record pertaining to 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 [or services] 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).
Similarities of the Marks
We turn first to the DuPont 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 Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (quoting DuPont, 177 USPQ at 567); see also Palm Bay Imps.,
73 USPQ2d at 1691. 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 “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) (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, 259 (TTAB 1980). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015); In re
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Assoc. of the United States Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant seeks to register the mark THE SOAP & WATER COMPANY and
Registrant’s mark is SOAP & WATER CLEAN WATER THROUGH SOAP. 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, 751 (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”). On the other hand, different features may be analyzed to
determine whether the marks are similar. Joel Gott Wines LLC v. Rehoboth Von Gott
Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co. v. Gold Medal
Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact, 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 a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751.
In analyzing the marks, we have given consideration to the phrase “Soap & Water”
as the dominant portion of Applicant’s and Registrant’s marks. It is the dominant
portion of Registrant’s mark because it is the leading phrase, the part most likely to
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be spoken and remembered by purchasers, especially given their natural tendency to
shorten marks. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 395 (Fed. Cir. 1983); see also Presto Prods., Inc. v. Nice-Pak Prods., 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… .”);
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992)
(“companies are frequently called by shortened names”). The phrase SOAP & WATER
is also the first significant portion of Applicant’s mark. The initial term THE has no
source-identifying properties, and the final term COMPANY simply designates
Applicant’s status as a corporate entity. The two words together, i.e., “THE …
COMPANY,” emphasize the impression of a particular company that specializes in
personal care products, such as are likely to be encountered in Registrant’s retail
outlets. See, e.g., In re Thor Tech, 90 USPQ2d 1634, 1635 (TTAB 2009) (“Thus, as
used in the registered mark THE WAVE, the word ‘The’ simply emphasizes the word
‘Wave.’”; WAVE and THE WAVE likely to cause confusion); cf. In re Paint Prods. Co.,
8 USPQ2d 1863 (TTAB 1988) (“CO” held incapable); In re E.I. Kane, Inc., 221 USPQ
1203 (TTAB 1984) (“INC.” held incapable).
Here, the marks are similar in appearance and pronunciation due to the shared
phrase SOAP & WATER, which also accounts for their shared connotations, as each
calls to mind the popular exhortation to cleanliness: “make sure you use soap and
water to wash your hands.”5 Applicant argues that because the phrase SOAP &

5 This sentence is given as an example of common usage in the Merriam-Webster online
dictionary, accessible at http://www.merriam-webster.com/dictionary/soap. Attached to
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WATER is so commonly used in this fashion, it “resides in the public domain.”6
However, Applicant has presented no evidence, such as third-party use of the phrase,
to support this assertion. Moreover, contrary to Applicant’s contention, the fact that
the Examining Attorney initially cited an additional registration against Applicant’s
mark that included the phrase “soap & water” does not show that the cited mark, or
the SOAP & WATER component, is weak.7
As we have often stated, “the presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some terms are identical.” In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); see China
Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123 (Fed. Cir. 2007) (the
common word in CHI and CHI PLUS is likely to cause confusion despite differences
in the marks’ designs). While the tagline “CLEAN WATER THROUGH SOAP” in the
cited mark may evoke the unique idea of funding clean water projects through the
sale of soap,8 this additional connotation does not avoid a likelihood of confusion. The
tagline merely expands upon the meaning of the phrase SOAP & WATER. Further,
because Registrant’s mark is presented in standard characters, Registrant is free to
use a distinguishing font or colors for the phrase SOAP & WATER that underscores

December 21, 2105 Office Action at 55. All citations to documents contained in the Trademark
Document and Status Retrieval (TSDR) database are to the downloadable PDF versions of
the documents.
6 7 TTABVUE 2.
7 Reg. No. 3962751 for the mark SOAP & WATER EVERYDAY. The refusal to register based
on this registration was withdrawn on January 9, 2017.
8 Applicant submitted pages from Registrant’s website that indicate this is Registrant’s
intended meaning of the phrase. At http://www.soapandwater.com, attached to Applicant’s
January 9, 2017 Response at 4.
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its dominant position in the mark. See Viterra, 101 USPQ2d at 1909; In re Mighty
Leaf Tea, 94 USPQ at 1260 (rejecting an argument that the specific style of a
registered mark could serve to distinguish the applicant’s mark in standard character
form). Pages from Registrant’s website suggest that Registrant displays the mark in
such stylization:
9
In view of the foregoing, we find that the marks are similar in appearance,
pronunciation, connotation and overall commercial impression due to the shared
identical, and dominant phrase “SOAP & WATER.” Any distinction in the marks
caused by the additional terms is outweighed by the overall similarity resulting from
the shared phrase.
Accordingly, the DuPont factor regarding the similarity of the marks favors a
finding of likelihood of confusion.

9 At http://www.soapandwater.com, attached to Applicant’s January 9, 2017 Response at 4.
It is proper to consider Registrant’s advertising in deciphering the commercial impression
the mark itself is likely to make on the relevant consuming public. See Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016); The North Face
Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217 (TTAB 2015); Specialty Brands, Inc.
v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984);
Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB 1985) (“Evidence of the
context in which a particular mark is used on labels, packaging, etc., or in advertising is
probative of the significance which the mark is likely to project to purchasers.”). Cf. American
Rice, Inc. v. H.I.T. Corp., 231 USPQ 793, 796 (TTAB 1986) (“we may take into account
whether the trade dress of packages or labels in the application file as specimens, or
otherwise in evidence, may demonstrate that the trademark projects a confusingly similar
commercial impression.”).
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Relatedness of the Goods and Services/Trade Channels/Classes of Purchasers
We next turn to a comparison of Applicant’s services with those goods and
services in the cited registrations. In making our determination under the second
DuPont factor, we look to the goods and services as identified in the involved
application and cited registrations. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v.
Houston Computers Servs., 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). For purposes of the DuPont factors that are relevant to this
appeal we will consider Applicant’s involved application for a “retail store service”
and Registration No. 4874946 for “retail store services” because these both involve
the provision of services rather than the sale of goods, and further, both involve the
same type of services. If likelihood of confusion is found as to the ’946 registration, it
is unnecessary to consider the other cited registration because the services in the ’946
registration are more directly related to Applicant’s services than are the goods in the
’291 registration.10 Conversely, if likelihood of confusion is not found as to the service
mark in the ’946 registration, we would not find likelihood of confusion as to the ’291
trademark. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Applicant provides retail store services “featuring bath and body products.”
Registrant provides retail store services featuring “personal care products.”

10 The marks in the two registrations, of course, are the same.
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Applicant’s identification also includes the limitation that its retail store services are
only available within a section of a retail supermarket. However, the fact that the
services are provided within one section of a retail supermarket does not change the
nature of the services, which remain the provision of retail store services.11
Applicant’s recitation of a “retail store service within a section of a supermarket”
essentially identifies retail store services limited to a specific channel of distribution,
namely supermarkets. Registrant’s trade channels are unlimited, and thus include
supermarkets. There is no viable distinction in the context of the second DuPont
factor between retail store services provided by way of a supermarket and retail store
services provided inside a supermarket.
There is also a close relationship between Applicant’s and Registrant’s retail store
services because each provides services featuring the same types of products. While
we are specifically addressing the relationship between Registrant’s and Applicant’s
services, rather than on or in connection with goods, we recognize that personal care
products and bath and body products are overlapping categories, in that each includes
products designed for washing, caring for, or pampering the body. Indeed,
Registrant’s registration for goods (Registration No. 4358291) identifies as “personal
care products” goods that would also be described as bath or body products: “body
lotion, bath gels, shower gels, body sprays, bath soaps, body scrubs and cosmetic

11 We note, however, that as the application is presently based on Applicant’s bona fide intent
to use the mark, any specimens submitted to show use of the mark in association with the
recited services must display the mark as a source-indicator for the retail store services
themselves and not merely refer to or identify the goods being sold.
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preparations for cosmetic body wrap applications for general personal care.” In
addition, the Internet materials submitted into the record demonstrate that “personal
care products” such as are provided by Registrant, encompass Applicant’s bath and
body products. For example:
• Copies of pages from the Sephora USA, Inc. website
show that Sephora offers online ordering of
cosmetics, cleansers, body gels and other personal
care products;12

• Webpages from ULTA Salon, Cosmetics &
Fragrance, Inc. advertise personal care bath
products such as an exfoliating body scrub under the
ULTA brand;13 and

• The M•A•C website sells personal care products
such as face and body lotion, eye cream and moisture
gel online under the M•A•C brand.14

The record evidence also includes an example of a supermarket that sells bath
and body products online on the same webpage as other personal care products.15
Accordingly, we find Applicant’s and Registrant’s retail store services to be closely
related and find that the trade channels as described in the application and
registration overlap; that is, Applicant’s recitation includes a limitation to
supermarket sections and Registrant’s recitation is broadly worded such that
Registrant’s trade channels would encompass the trade channels of retail

12 At www.sephora.com/sephora-collection, attached to December 21, 2105 Office Action at
17-21.
13 At http://www.ulta.com, id. at 39.
14 At http://www.maccosmetics.com, id. at 48-51.
15 See at https://www.wegmans.com/products/personal-care-and-makeup.html, attached to
January 24, 2017 Final Office Action at 138.
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supermarket sections. Because the trade channels overlap, the consumers to whom
the services are marketed are the same. Further, although we are comparing services
and not goods, we are mindful that the purpose of the services is to sell the goods,
and given that personal care products and bath and body products are generally low-
cost, every-day consumer items, average purchasers of these goods (utilizing the
recited services to access the goods) would exercise no more than ordinary care in
their selections of Applicant’s and Registrant’s services.
The second and third DuPont factors strongly favor a finding of likelihood of
confusion.
Conclusion

After considering all of the DuPont factors for which there has been evidence or
argument, including evidence and arguments not specifically mentioned in this
decision, we find that Applicant’s mark THE SOAP & WATER COMPANY and
Registrant’s mark SOAP & WATER CLEAN WATER THROUGH SOAP are similar
and that the services are closely related and offered to the same classes of consumers
through identical trade channels.
Accordingly, we find that the mark THE SOAP & WATER COMPANY for “retail
store service within a section of a retail supermarket featuring bath and body
products” is likely to cause confusion with the mark SOAP & WATER CLEAN
WATER THROUGH SOAP for “retail store services and online retail store services
featuring cosmetics, skin care and personal care products” (Reg. No. 4358291).
Inasmuch as we have determined a likelihood of confusion exists on this basis, we
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need not consider whether a likelihood of confusion exists between Applicant’s mark
and Registrant’s mark for “soaps for personal use; personal care products, namely,
body lotion, bath gels, shower gels, body sprays, bath soaps, body scrubs and cosmetic
preparations for cosmetic body wrap applications for general personal care” (Reg. No.
4874946).
Decision: The refusal to register under Section 2(d) is affirmed.