MyKidBrainiac, Inc.

Trademark Trial and Appeal Board

Jul 12, 2012

No. 85059377 (T.T.A.B. Jul. 12, 2012)

Mailed:
July 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MyKidBrainiac, Inc.
________

Serial No. 85059377
_______

Scott T. Kannady of Brown & Kannady, LLC for MyKidBrainiac,
Inc.

Elizabeth N. Kajubi, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

MyKidBrainiac, Inc. (“applicant”) filed an application
to register the standard character mark MY MUSIC SKOOL on
the Principal Register for services including the
following:
“Retail store services featuring sheet music,
musical instruments, printed music books, and
other music related items such as guitar cases,
drum sticks, guitar straps, neck ties with
musical patterns, and musical note shaped
pencils” in International Class 35; and

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 85059377
2
“Education services, namely, providing private
and group music lessons for all ages and all
instruments, birthday parties, summer camps and
music recitals in the field of music; Educational
services, namely, conducting private and group
music lessons for all ages and all instruments,
birthday parties, summer camps and music
recitals, and the occasional distribution of
course material therewith in the field of music;
Instruction in the field of private and group
music lessons for all ages and all instruments;
Rental of musical instruments; Teaching in the
field of music” in International Class 41.

Applicant claims first use and first use in commerce in
connection with the above-identified services on
November 1, 2008. See Trademark Act Section 1(a), 15
U.S.C. § 1051(a).1 Further, applicant disclaimed the term
MUSIC for the International Class 35 services and
disclaimed the phrase MUSIC SCHOOL for the International
Class 41 services.
The assigned examining attorney refused registration
of applicant’s mark under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant's
mark as used on applicant’s services so resembles the
registered mark MY KIDS MUSIC SCHOOL (in standard character

1 Applicant also seeks registration of the following
International Class 35 services under Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b); “Franchising, namely,
consultation and assistance in business management, organization
and promotion.” The examining attorney indicated in her brief at
p. 2 that her refusal does not concern the franchising services.
Thus, we have not given any further consideration to these
services, and, at a minimum, the application will be published
for these International Class 35 franchising services.
Ser. No. 85059377
3
form) of Registration No. 3626514 for the following
services, as to be likely to cause confusion or mistake or
to deceive:
Development and dissemination of educational
materials of others in the field of Music;
Education in the field of Music rendered through
correspondence courses; Education in the field of
Music rendered through video conference;
Education services, namely, mentoring in the
field of Music; Education services, namely, one-
on-one mentoring in the field of Music; Education
services, namely, providing live and on-line
Instruction in the field of Music; Educational
services, namely, conducting Work Shops in the
field of Music Instruction and distribution of
course material in connection therewith;
Educational services, namely, conducting Seminars
in the field of Music Instruction and
distribution of training material in connection
therewith; Educational services, namely,
developing, arranging, and conducting educational
conferences and programs and providing courses of
instruction in the field of Music; Educational
services, namely, providing courses of
instruction at the Primary level; Educational
services, namely, providing courses of
instruction at the Advanced level and
distribution of course material in connection
therewith; Instruction in the field of Music;
Music composition and transcription for others;
Music composition for others.

Registrant disclaimed the phrase KIDS MUSIC SCHOOL.
Our determination under Trademark Act § 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. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Ser. No. 85059377
4
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In
considering the evidence of record on 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); and In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
We first consider the similarity or dissimilarity of
the services and trade channels, and begin with applicant’s
and registrant’s International Class 41 services.
Applicant’s services essentially involve the teaching of
music and are legally identical to those of registrant.
And, because these services are legally identical, the
trade channels and purchasers for the International Class
41 services are presumed to be identical. See In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because
the goods are legally identical, they must be presumed to
Ser. No. 85059377
5
travel in the same channels of trade, and be sold to the
same class of purchasers.”).2
Turning next to the International Class 35 services,
we keep in mind that the respective services do not have to
be identical or even competitive in order to determine that
there is a likelihood of confusion. It is sufficient that
the respective services are related in some manner, or the
conditions surrounding their marketing must be such that
the services will be encountered by the same purchasers
under circumstances that would give rise to the mistaken
belief that they originate from the same source. See,
e.g., Online Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984) (MARTIN'S for wheat bran and honey bread
held likely to be confused with MARTIN'S for cheese).
The examining attorney introduced into the record
printouts from websites offering musical instruction and
the retail sale of music-related items such as musical
instruments and sheet music. See restonmusic.com (music

2Registrant’s recitation includes services beyond the teaching of
music. We need not consider those services because if there is a
likelihood of confusion because of one item in an International
Class that includes a number of services, that is sufficient to
refuse registration for the entire International Class. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986 (CCPA 1981).
Ser. No. 85059377
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lessons, band and orchestral instruments, and sheet music),
marylandmusicalinstruments.com (music lessons, sheet music
and instruments), musicstoreinc.com (music lessons and
instruments), pauldingmusiccenter.com (music lessons,
instruments and sheet music), and
grossepointemusicacademy.com (music lessons and
instruments). With this evidence, the examining attorney
established that a commercial relationship exists between
music lessons and retail store services involving the sale
of musical instruments and printed music. The web pages
also demonstrate that such services travel in the same
Internet trade channels.
Applicant argues that while registrant “offers its
services as a week-long summer program to youth ages 9 – 14
only, who already know how to play a musical instrument and
gives them the opportunity to further their skills, as well
as play with professional musicians during the course of
the program,” applicant “offers lessons programs, events
and parties to interested students of all ages year
around.” Brief at 6, citing to a printout of applicant’s
website in the record. Applicant concludes that “the goods
[sic] that are marketed to different segments of the
population do not compete in the same market[]place.” The
question of likelihood of confusion, however, is determined
Ser. No. 85059377
7
based on the recitation of services in the application and
cited registration. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant's mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant's goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”). Therefore, we
may not read limitations into the recitation of services,
such as distinct timeframes for instruction and the ages of
applicant’s and registrant’s students, as applicant would
have us do. Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation and nothing in the inherent nature of Squirtco's
mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration.”).
Applicant’s arguments based on actual use of applicant’s
and registrant’s marks are not persuasive.
We next consider the similarity or dissimilarity of
registrant’s MY KIDS MUSIC SCHOOL and applicant’s MY MUSIC
SKOOL marks, comparing the marks for similarities and
Ser. No. 85059377
8
dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay, 73 USPQ2d at 1692.
Both marks begin with MY, and have MUSIC SCHOOL or
MUSIC SKOOL as the last terms in the marks, which have the
same sound and meaning. (SKOOL a slight misspelling of
SCHOOL.) The misspelling of SKOOL in applicant’s mark is
an insignificant difference from that of registrant’s mark,
because SKOOL and SCHOOL are pronounced the same and the
substitution of the letter K for the letters CH does not
materially change the appearance of the word or impart it
with any different meaning. See In re Carlson, 91 USPQ2d
1198 (TTAB 2009) (URBANHOUZING would be perceived by
consumers as the equivalent of the descriptive term URBAN
HOUSING, rather than as including the separate word ZING);
In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007) (generic
meaning of “togs” not overcome by misspelling of the term
as TOGGS); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB
1987) (MINERAL-LYX held generic for mineral licks for
feeding livestock). Also, certain potential purchasers who
are aware of both marks may perceive the source of the
services provided under the marks as being related, because
Ser. No. 85059377
9
of the misspelling of SKOOL and the reference to kids in
registrant’s mark.3
As noted above, applicant disclaimed the term MUSIC
for the International Class 35 services and disclaimed the
phrase MUSIC SCHOOL for the International Class 41
services; and registrant disclaimed KIDS MUSIC SCHOOL. At
p. 5 of its brief, applicant argues that the cited mark is
not strong; indeed, these disclaimed terms have
significance for one or more of the services associated
with the mark in each International Class and hence are not
strong source identifiers for such services. The terms
which are the primary source identifiers in the respective
marks are the non-disclaimed words, and this includes the
term MY, which appears as the first term in each mark.
Thus, even though the disclaimed terms in the marks may
have significance with respect to the underlying services,
the non-disclaimed terms and the construction of the mark
are similar.
Applicant cites to In re Hearst Corp., 982 F.2d 493,
25 USPQ2d 1238 (Fed. Cir. 1992), as support for its

3 Because of the misspelling of “school,” certain purchasers may
consider applicant’s mark as referring to a school for pre-
schoolers or students in the early years of elementary school.
Such consumers would consider the overall connotation of
registrant’s mark - because of the reference to KIDS – as having
the same connotation as applicant’s mark, namely, a music school
for kids.
Ser. No. 85059377
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argument that the mark must be considered as a whole and
should not be broken into component parts in the likelihood
of confusion analysis. Brief at 4 – 5. However, the
Federal Circuit in Hearst recognized that different weight
may be given to terms within a mark and the appropriate
weight to be accorded to a term is dependent on the facts
and is “not entirely free from subjectivity.” Id. The
examining attorney did consider the mark as a whole, and we
do so too, giving components of the mark appropriate weight
in light of the facts as they pertain to the marks. In
fact, applicant has done the same, arguing at p. 5 of its
brief that applicant does not have the word KIDS and spells
the word “school” in a fanciful way.
With respect to the du Pont factor regarding
conditions under which and buyers to whom sales are made,
applicant argues at p. 7 of its brief:
Consumers interested in musical lessons for
either themselves or their children are
sophisticated and would realize the difference
between the marks and notice the omission of the
words “kids” and the fanciful spelling of the
word “Skool” in Applicant’s mark. Because of the
cost of Registrant’s musical program for children
and the opportunity to work with professional
musicians, the consumer interested in pursuing
musical lessons with Registrant would be highly
sophisticated. Applicant’s consumers are
likewise sophisticated in that they are
interested in an on-going commitment to musical
lessons.

Ser. No. 85059377
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Brief at 7. These arguments are not persuasive. First,
applicant’s argument appears to be one of purchaser care
rather than of purchaser sophistication. Second, there is
no evidence in the record to support applicant’s argument
that purchasers of music services – which encompass the
general public – are sophisticated purchasers. Third, the
fact that purchasers are sophisticated or knowledgeable in
a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks
or immune from source confusion. See In re Cynosure, Inc.,
90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812
(TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983).
Finally, applicant points out that there has been no
actual confusion between the marks. However, the lack of
evidence of “actual confusion” carries little weight,
especially in an ex parte context. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
In this situation, where applicant’s mark is similar
to registrant’s mark and the services are legally identical
in part or otherwise related, with identical trade channels
and purchasers, we find that applicant’s mark for its
International Class 35 and 41 services is likely to be
Ser. No. 85059377
12
confused with registrant’s mark for its International Class
41 services.4
Decision: The refusal to register applicant’s mark
under Trademark Act §2(d) is affirmed as to applicant’s
retail store services in International Class 35 and all of
the services in International Class 41. The application
will move forward to publication for the services which are
not the subject of the examining attorney’s refusal to
register, namely, applicant’s “Franchising, namely,
consultation and assistance in business management,
organization and promotion” services in International Class
35.”

4 We have also considered applicant’s other arguments not
specifically mentioned herein but do not find them persuasive.