Marilyn S. Ruben

Trademark Trial and Appeal Board

Apr 4, 2008

No. 78589771 (T.T.A.B. Apr. 4, 2008)

Mailed: 4/4/08

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Marilyn S. Ruben
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Serial No. 78589771
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Marilyn S. Ruben, pro se.

Roselle M. Herrera, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney).
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Before Quinn, Drost and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Marilyn S. Ruben filed an application to register the
mark SONRISA HANDMADE DESIGNS (HANDMADE DESIGNS
disclaimed)(in standard characters) for goods identified in
International Classes 24 and 28.1 When the trademark
examining attorney issued a final refusal with respect to
Class 28 only, applicant filed a request to divide.

1 Application Serial No. 78589771, filed March 17, 2005, alleging
first use anywhere and first use in commerce on March 31, 2003.
The English translation of the Spanish word “sonrisa” is “smile.”
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78589771
2
Pursuant to this request, the goods listed in Class 24 were
placed in “child” application serial no. 78977305. That
application matured into Registration No. 3181047 on
December 5, 2006.
The goods listed in Class 28 remain in the present
“parent” application. These goods are identified as
“stuffed toy animals.”
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when applied to
applicant’s Class 28 goods, so resembles the previously
registered mark SONRISA TOYS (TOYS disclaimed)(in typed
form) for “online retail store services featuring toys and
collectibles”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Before turning to the substantive merits of the
appeal, we are compelled to note that applicant has raised
a number of arguments that fall outside of the Board’s
limited jurisdiction. Further, the application file is
replete with statements and evidentiary materials submitted

2 Registration No. 2881641, issued September 7, 2004. The
registration indicates that “sonrisa” translates in English to
“smile.”
Ser No. 78589771
3
by applicant that are irrelevant to the likelihood of
confusion analysis in an ex parte appeal before the Board.
Suffice it to say, we have considered all of the probative
evidence pertaining to likelihood of confusion, as well as
all of applicant’s relevant arguments with respect thereto
(including any evidence and arguments not specifically
discussed in this opinion).
The examining attorney maintains that the marks are
similar, both being dominated by the identical term
SONRISA. The examining attorney further contends that the
goods and services are related in that registrant’s
services encompass the sale of goods of the type sold by
applicant, namely stuffed toy animals. In support of the
refusal, the examining attorney submitted dictionary
definitions of the words “handmade” and “design”; excerpts
of websites of third-party on-line retailers; and third-
party registrations.
Applicant essentially contends that the marks are
different and that her handmade products are different from
the toys sold by registrant.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
Ser No. 78589771
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1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, 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 involved 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). 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
their entireties that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
With respect to the involved marks, it is well settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
Ser No. 78589771
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dominant feature in determining the commercial impression
created by the mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) [“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. Indeed,
this type of analysis appears to be unavoidable.”] For
example, in the past merely descriptive matter that is
disclaimed has been accorded subordinate status relative to
the more distinctive portions of a mark. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997). In the present case, applicant has
disclaimed the terms HANDMADE DESIGNS, while registrant has
disclaimed the word TOYS. Given the highly descriptive, if
not generic nature of these words in the respective marks,
each mark is clearly dominated by the identical term,
SONRISA. Moreover, the term SONRISA is the first term in
each mark; this term is the part of each mark that is most
likely to be impressed upon the mind of a purchaser and
will be remembered and used when calling for the goods
and/or services. See Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Thus, the
dominant feature, SONRISA, of each mark is identical in
Ser No. 78589771
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sound and appearance. Further, as noted earlier, the
application and registration indicate that this Spanish
term means “smile” in English and, thus, the meaning of
this term would be identical in each mark. This meaning is
the same (that is, the product or service will bring a
smile to your face), whether used in connection with toys
or retail services featuring the sale of toys, thus
engendering the same overall commercial impression.
Although the dominant portion, SONRISA, of applicant’s
mark is identical to the dominant portion, SONRISA, of
registrant’s mark, we must do more than just compare the
individual components of the marks; it is necessary that we
compare the marks as a whole. M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) [“When comparing the similarity of marks,
a disclaimed term...may be given little weight, but it may
not be ignored”]. While we have considered the HANDMADE
DESIGNS portion of applicant’s mark, and the TOYS portion
of registrant’s mark, purchasers are likely to view these
commonly understood and recognized terms as having no
distinguishing or source-indicating role in the respective
marks.
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In view of the above, we find that the marks are
similar. The similarity between the marks is a factor that
weighs in favor of a finding of likelihood of confusion.
We next turn to compare applicant’s “stuffed toy
animals” to registrant’s “online retail store services
featuring toys and collectibles.” As often stated, it is
not necessary that the respective goods and/or services be
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods and/or services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The examining attorney submitted nine use-based third-
party registrations showing that each registrant adopted a
single mark for toys, including stuffed toy animals, and
retail store services (online and/or brick and mortar)
featuring toys. Third-party registrations that
individually cover different items and that are based on
use in commerce serve to suggest that the listed goods
Ser No. 78589771
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and/or services are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). Also of record are
excerpts of various third-party websites showing that on-
line retailers sell toys, including stuffed toy animals,
with the same mark used in connection with both the
services and toys.
It is well settled that confusion is likely to occur
from the use of similar marks for goods, on the one hand,
and for services involving those goods, on the other. See,
e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) [BIGG’S (stylized) for retail
grocery and general merchandise store services held likely
to be confused with BIGGS and design for furniture]; In re
Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) [SEILER
for catering services held likely to be confused with
SEILER’S for smoked and cured meats]; In re U.S. Shoe
Corp., 229 USPQ 707 (TTAB 1985) [CAREER IMAGE (stylized)
for retail women’s clothing store services and clothing
held likely to be confused with CREST CAREER IMAGES
(stylized) for uniforms]; and In re Phillips-Van Heusen
Corp., 228 USPQ 949 (TTAB 1986) [21 CLUB for various items
of clothing held likely to be confused with THE “21” CLUB
Ser No. 78589771
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(stylized) for restaurant services and towels]. See TMEP
§1207.01(a)(ii) (5th ed. 2007)
In view of the above, we find that applicant’s goods
are related to registrant’s services. The goods and
services are offered to the same classes of purchasers,
including ordinary consumers, who are likely to use nothing
more than ordinary care when making their purchasing
decision.
Applicant’s claim that there has been no actual
confusion is entitled to little value. The record is
devoid of probative evidence relating to the existence of
opportunities for instances of actual confusion to have
occurred in the marketplace. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000);
and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Accordingly, the du Pont factor of the
length of time during and conditions under which there has
been contemporaneous use without evidence of actual
confusion must be considered neutral instead of being in
applicant’s favor.
One last point requires comment. During prosecution,
applicant suggested that she has priority over registrant.
To the extent that applicant’s allegations constitute a
collateral attack on registrant’s registration, they are
Ser No. 78589771
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impermissible. Section 7(b) of the Trademark Act, 15
U.S.C. §1057(b), provides that a certificate of
registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the
goods or services identified in the certificate. During ex
parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a
collateral attack on the cited registration (e.g.,
applicant’s claim of priority over the cited mark). In re
Dixie Restaurants, 41 USPQ2d at 1534; and In re Peebles
Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP
§1207.01(d)(iv) (5th ed. 2007). Accordingly, no
consideration has been given to applicant’s arguments in
this regard.
We conclude that consumers familiar with registrant’s
online retail store services featuring toys and
collectibles rendered under the mark SONRISA TOYS would be
likely to mistakenly believe, upon encountering applicant’s
mark SONRISA HANDMADE DESIGNS for stuffed toy animals, that
the goods and services originated with or are somehow
associated with or sponsored by the same entity.
Ser No. 78589771
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Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 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).
Decision: The refusal to register is affirmed.