i play.inc.

Trademark Trial and Appeal Board

May 14, 2013

No. 77817590 (T.T.A.B. May. 14, 2013)

Mailed:
May 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re i play.inc.
________

Serial No. 77817590
_______

Steven C. Schnedler of The Van Winkle Law Firm for i
play.inc.

William Breckenfeld, Trademark Examining Attorney, Law
Office 116 (Michael Baird, Managing Attorney).
_______

Before Seeherman, Wellington, and Shaw,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

i play.inc (“applicant”) is the owner of an
application to register the mark GREEN SPROUTS (in standard
character form) on the Principal Register for “baby foods”
in International Class 5.1 The term GREEN has been
disclaimed.

1 Serial No. 77817590, filed September 1, 2009, based on an
allegation of a bona fide intent to use the mark in commerce on
the identified goods.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77817590
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of
two registrations for the marks SPROUT (in standard
character form)2 and
3
Both registrations cover the goods: “baby food; food
purees, cereals and biscuits for feeding babies; organic
baby food; first, second and third stage baby foods” in
International Class 5. The two registrations are owned by
the same entity.
The registration for the latter mark contains a
description of the mark as “the word SPROUT in green, with
a 4-leaf clover shape raised to the right, in 4 colors,
green, light green, yellow green and kelly green.” The
colors are claimed as features of the mark.
Applicant appealed the final refusal of the
application and both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark

2 Registration No. 3786214 issued May 4, 2010.
3 Registration No. 3786248 issued May 4, 2010.
Serial No. 77817590
3
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
With respect to the goods, they are identical and
applicant concedes this point. See applicant’s brief, p.
2. The identifications of goods in the application and
registrations include “baby food(s)”; likewise, applicant’s
“baby foods” is broad enough to encompass all other more
specifically-identified goods in the registration, i.e.,
food purees, cereals and biscuits for feeding babies,
organic baby food, etc. This factor therefore weighs
heavily against applicant in the likelihood of confusion
analysis.
Because the identified goods are legally identical, we
must presume they will be sold in the same trade channels
to the same classes of purchasers who, in this case, are
Serial No. 77817590
4
likely to be parents of babies. Accordingly, the factors
involving channels of trade and classes of consumers also
favor finding a likelihood of confusion.
As to the marks, we examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In situations
such as the present case, where the marks would appear on
identical goods, the degree of similarity between the marks
that is necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
The registered marks, SPROUT (in standard characters)
and , are very similar in meaning and
commercial impression to applicant’s mark, GREEN SPROUTS
(in standard characters). The term “sprout” is defined, in
noun form, as “a young shoot (as from a seed or root)” and
also as “something resembling a sprout: as a young person,”
or, in verb form, as “to grow, spring up, or come forth as
or as if a sprout.”4 Thus, in connection with baby food,

4 Merriam-Webster Online Dictionary (2013) (http://www.merriam-
webster.com/dictionary/sprout). The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v.
Serial No. 77817590
5
both marks may be understood as using a playful term for
growing babies or simply suggestive of young growth. These
possible suggestive meanings based on the term “sprout(s)”
are equally applicable to and present in the three marks.
The addition of the descriptive and disclaimed term GREEN
in applicant’s mark does very little to alter this
suggestive meaning, but merely informs consumers that its
goods are intended to be environmentally friendly.5 As the
examining attorney explained in the Office actions and
reiterated in his brief, 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,

J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 In the December 9, 2009 Office action, the examining attorney
stated that a disclaimer was necessary “if the goods will be
designed to preserve environmental quality.” Applicant responded
to the Office action stating that “applicant’s goods are designed
to preserve environmental quality” and, for this reason, agreed
to disclaim the term “green.”
Serial No. 77817590
6
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter
is often “less significant in creating the mark's
commercial impression”). With this in mind, the term GREEN
does not distinguish the marks. Consumers viewing the
marks GREEN SPROUTS and SPROUT in connection with baby food
are likely to perceive the marks as all having the same
playful term for growing babies or “beginning to grow”
connotation. While applicant’s mark conveys the additional
information that the goods are environmentally friendly,
that information does not serve to distinguish the marks.
Instead, GREEN SPROUTS is likely to be seen by consumers as
a variation of the SPROUT and SPROUT and design marks,
merely informing consumers that the products are
environmentally friendly. We note that a claimed feature
of the registered mark

is that it appears entirely in various shades of green.
The fact that applicant’s mark contains the term GREEN and
the registered mark has a green color element brings these
two marks closer as far as their overall commercial
impressions.
As to sound and appearance, the main difference
between the marks is the addition of the term GREEN in
Serial No. 77817590
7
applicant’s mark. However, as we have discussed, this
additional word does not serve to distinguish the marks.
And the addition of the letter “s” to the end of SPROUT, or
lack thereof, plays no meaningful role in distinguishing
the marks. Chicago Bears Football Club v. 12th
Man/Tennessee LLC, 83 USPQ2d 1073, 1077 (TTAB 2007) (“we
cannot attribute much trademark significance to the
difference in the plural and singular form of the word
‘Bear’ in the marks”).
Viewing the marks in their entireties, we find that
applicant’s mark, GREEN SPROUTS, is very similar to the
registered SPROUT mark in standard character form. The
SPROUT mark that appears in green lettering with a design
is arguably even closer to the extent that the green color
element reinforces a connection with the word GREEN in
applicant’s mark. Accordingly, the du Pont factor of the
similarity of the marks favors finding a likelihood of
confusion.
Applicant relies principally on two arguments in
contending that consumers will not be confused between its
GREEN SPROUTS mark and the registered SPROUT marks, in
spite of the marks all being used on baby food.
First, it argues that the term “sprout(s)” is “not
highly distinctive and, moreover, loses its distinctiveness
Serial No. 77817590
8
when used as an element in combination with another word.”
Brief, p. 3. In support, applicant submitted Office
database records for several third-party registrations for
marks containing the element SPROUT (or a variant spelling
thereof) for a variety of goods. Applicant acknowledges
the cases cited by the examining attorney holding that such
registrations are not evidence that the marks are in use or
that consumers have been exposed to these marks. Applicant
also seemingly acknowledges the examining attorney’s
observation that the goods identified in the registrations
are not baby food – “of course not all the goods and
services are the same as applicant’s baby foods; that is
not the point.” Brief, p. 5. Rather, applicant argues the
registrations “provide examples and evidence that ‘SPROUT’
or ‘SPROUTS’ in combination with another word is not
confusingly similar to ‘SPROUT’ or ‘SPROUTS’ alone, even
where the goods are similar.” Id.
We do not find these third-party registrations and
applicant’s arguments based thereon persuasive; we
certainly cannot agree that the registrations show that
“consumers can easily distinguish between GREEN SPROUTS and
SPROUT, and are not likely to think that the two marks
refer to [baby food] emanating from the same source.” Id.
at 10. At best, the third-party registrations submitted by
Serial No. 77817590
9
applicant show that the term SPROUT (or a variation
thereof), by itself or in connection with other terms, has
been adopted by different entities in seeking to register
trademarks for different goods that, pointedly, do not
include baby food items. Nevertheless, we echo the
examining attorney’s point that the registrations, by
themselves, are not evidence of actual use and we cannot
even assume that the public has been exposed to such marks.
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973) (the purchasing public is not
aware of registrations reposing in the U.S. Patent and
Trademark Office); and Productos Lacteos Tocumbo S.A. de
C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011). See also Olde Tyme Foods Inc. v. Roundy's
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)
(“As to strength of a mark, however, registration evidence
may not be given any weight”). The sixth du Pont factor
focuses on the number and nature of similar marks in use on
similar goods. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 11:89 (4th ed.
2009)(“The mere citation of third party registrations is
not proof of third party uses for the purpose of showing a
crowded field and relative weakness.”).
Serial No. 77817590
10
In view thereof, we cannot find the third-party
registration evidence shows that the relevant public has
been so exposed to the term SPROUT such that they would be
able to distinguish between applicant’s mark and the cited
marks based on the additional word GREEN in applicant’s
mark.
We do not dismiss the probative value of the third-
party registrations, however, and note that while they
cannot be used to show actual use of such marks, they may
be used in a manner akin to dictionary definitions. That
is, they may be used to show that a term has a special
meaning or significance with respect to particular goods,
or in a certain industry. In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-party registrations
can be used in the manner of a dictionary definition to
illustrate how a term is perceived in the trade or
industry”). See also In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987) (“[T]hird party registrations are of
use only if they tend to demonstrate that a mark or a
portion thereof is suggestive or descriptive of certain
goods and hence is entitled to a narrow scope of
protection”). In this regard, we acknowledge that the
submitted registrations tend to show or reinforce the
previously-mentioned (and defined) suggestive meaning
Serial No. 77817590
11
created by the term SPROUT, and that this meaning is
applicable to various types of goods directed to young
children.
The fact that the cited SPROUT marks have a suggestive
meaning does not, however, mean that they are entitled to
such a narrow scope of protection that applicant should be
permitted to register the mark GREEN SPROUTS for the same
goods. As we have stated, the addition of the disclaimed
and descriptive term GREEN is not sufficient to distinguish
the marks, since they still convey the same connotation and
commericial impression. Consumers who are familiar with
registrant’s SPROUT-branded baby food are likely to
mistakenly believe that GREEN SPROUTS is merely an
environmentally friendly line of the same goods.
As a second argument, applicant relies on its
ownership of what it calls a “family of GREEN SPROUTS
marks” and contends this “family” is evidence of a high
degree of distinctiveness. Brief, p. 2. Applicant owns
eleven registrations for the mark GREEN SPROUTS covering
various goods in different international classes. However,
this does not constitute a “family” of marks as that term
is generally used in trademark cases and, even if applicant
did own a family of marks it would not be applicable to
this type of proceeding. That is, a family of marks is
Serial No. 77817590
12
usually only relevant in an inter partes proceeding for a
plaintiff who has shown that (1) prior to the defendant's
first use of its mark, the various marks said to constitute
the family, or at least a good number of them, were used
and promoted in such a manner and to such an extent as to
create, among the members of the purchasing public, a
recognition that the shared feature is indicative of common
origin, and (2) that the shared feature is distinctive.
See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Marion Laboratories
Inc. v. Biochemical Diagnostics Inc., 6 USPQ2d 1215 (TTAB
1988); American Standard Inc. v. Scott & Fetzer Co., 200
USPQ 457 (TTAB 1978). A defendant cannot assert ownership
of a family of marks as defense against a likelihood of
confusion claim. Baroid Drilling Fluids Inc. v. Sun
Drilling Porducts, 24 USPQ2d 1048 (TTAB 1992). Put simply,
our likelihood of confusion analysis is properly focused on
the mark and goods applicant seeks to register vis-à-vis
the cited, registered marks. In re Cynosure Inc., 90
USPQ2d 1644, 1645 (TTAB 2009).
In conclusion, when we consider the record and the
relevant likelihood of confusion factors, including any not
specifically discussed herein, and which we treat as
neutral, we conclude that, should potential purchasers
Serial No. 77817590
13
encounter the marks GREEN SPROUTS and SPROUT (in both its
stylized and non-stylized form) being used on identical
goods, i.e., baby food, they are likely to believe that the
baby food emanates from the same source. As a result,
there is a likelihood of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.