Nanny Poppins, LLCv.Deneane Maldonado

Trademark Trial and Appeal Board

May 16, 2013

No. 91187157 (T.T.A.B. May. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board
_____

Nanny Poppins, LLC
v.
Deneane Maldonado
________
Opposition No. 91187157
to application Serial No. 78865864
_______
Monami D. Roy, Esq., for Nanny Poppins, LLC.
Joseph D. Garrity of Garrity-Weiss, P.A., for Deneane Maldonado.
_______
Before Quinn, Wolfson and Shaw, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Deneane Maldonado (“applicant”) has filed an application to register the
mark NANNY POPPINZ and design, depicted below, for “franchising, namely,
offering technical assistance in the establishment and/or operation of referral
agencies for child care providers and nannies:”1

1 Application Serial No. 78865864, filed April 20, 2006, pursuant to Section 1(a) of the
Trademark Act, alleging first use and first use of the mark in commerce at least as early as
June 23, 1999. The description of the mark is as follows: “The mark consists of red letter
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2

Nanny Poppins, LLC (“opposer”) opposed the registration of applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds of
likelihood of confusion with opposer’s mark NANNY POPPINS, which it alleges to
have first used (through a predecessor-in-interest) on January 3, 1996, and which it
allegedly has continuously used since that date, in association with “client search,
job placement, referral, and employment agency services in the fields of babysitters,
nannies, and domestic help, childcare professionals.”2
In her answer, applicant admitted that the marks sound similar3 but denied
that her mark would cause confusion with opposer’s mark. Applicant further
asserted the affirmative defenses of unclean hands and laches.4

‘N’, yellow letter ‘A’, green letter ‘N’, blue letter ‘N’, yellow letter ‘Y’, blue letter ‘P’, yellow
letter ‘O’, blue letter ‘P’, green letter ‘P’, yellow letter ‘I’, red letter ‘N’, blue letter ‘Z’. EACH
LETTER IS OUTLINED IN BLACK. There are five children’s heads above the word
‘NANNY’, each with black eyes and outlined in black. The first head is a girls [sic] head
with yellow and black hair, red lips and peach skin; the second is a boys [sic] head with tan
skin and black lips, eyebrows and hair; the third is a boys [sic] head with red and black
hair, peach skin and black lips; the fourth head is a girls [sic] head with black lips and
black hair and tan skin; the fifth child is a girl with brown skin, peach lips and black hair,
all against a yellow background.”
2 Notice of opposition, paragraphs 1-3.
3 Answer, paragraph 7.
4 These defenses were not pursued at trial. In any event, they are unavailing. The
affirmative defense of unclean hands as set forth in applicant’s answer is grounded in a
claim that opposer has infringed a third-party’s alleged copyrights, which claim clearly is
outside the jurisdiction of this Board. The laches claim (identified as “waiver” by applicant)
Opposition No. 91187157

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The Record
Pursuant to Trademark Rule 2.122(b), the record includes applicant’s
application file and the pleadings. In addition, opposer, by stipulation,5 submitted
four declarations, from: Jennifer Bouchard, the founder of opposer’s predecessor-in-
interest, identified as “Nanny Poppins” in the declaration; April Berube, co-owner of
opposer; Melissa Waldron, a hotel and event baby sitter employed by “Nanny
Poppins” since 1998; and Tina Clegg, part-time executive assistant for “Nanny
Poppins” since September 2008.6 A copy of an invoice from “The Providence Journal
Company” and an email from nannypoppins2@aol.com were included with the

is not available as a defense, where, as here, it is based on opposer’s alleged prior
knowledge of applicant’s use of her mark before the mark was published for opposition. See
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572,
19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (“an objection to registration does not legally equate
with an objection to use, that is, a charge of infringement”). In an opposition, laches begins
to run when the applicant’s mark is published. Because opposer herein timely filed its
notice of opposition, laches does not apply.
5 The stipulation was approved by the Board on August 17, 2012. The Board notes with
approval the parties’ stipulation to utilize testimony by declaration and the efficiencies
realized thereby. See TBMP §§ 528.05(a)(2) and 702.04 (October 2012) and authorities
cited therein.
6 On April 13, 2013, opposer filed a declaration of Jennifer Bouchard, with accompanying
exhibits, as part of its response to the Board order (dated March 9, 2012) to show cause why
judgment should not be entered against opposer under Trademark Rule 2.128 for its failure
to timely file a brief on the case. We considered this declaration, insofar as relevant to the
question of whether opposer had lost interest in the proceeding, but we have not considered
either the declaration or any of the attached exhibits as trial testimony, as they were not
resubmitted during opposer’s reset trial period.
Opposition No. 91187157

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declarations.7 Applicant has not submitted any testimony or placed any evidence
into the record. Only opposer filed a brief.8
We now turn to a determination of the merits of opposer’s claim under
Trademark Act Section 2(d).
Standing
Standing is a threshold issue that must be proven in every inter partes case.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). To establish standing in an opposition, an opposer must show that it
has a “real interest” in the outcome of the proceeding; that is, that it has a direct
and personal stake in the outcome of the opposition. See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Establishing standing involves a two-
step process: opposer must properly plead its standing, and thereafter must prove
those facts upon which it has based its allegations. Here, opposer adequately
asserted its standing by claiming prior common law rights in the mark NANNY
POPPINS. Further, opposer has introduced admissible evidence regarding its

7 We have not considered these exhibits. They were not identified in Ms. Bouchard’s
declaration (the only declaration to have identified any exhibits), and they are not proper
subject matter for introduction by notice of reliance. See Trademark Rule 2.122(e)
(authorizing submission under notice of reliance of only printed publications and official
records); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1117 (TTAB
2009) (internal correspondence not admissible under notice of reliance).
8 We have given no consideration to opposer’s belated attempt, in its brief, to raise a fraud
claim. Opposer has not provided any evidence in support of such a claim, or sufficiently
addressed the elements of such a claim, and in any event, the Board will not enter
judgment on an unpleaded claim. O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d
1327, 1330 (TTAB 2010); citing American Express Marketing & Development Corp. v. Gilad
Development Corporation, 94 USPQ2d 1294, 1296 (TTAB 2010).
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asserted prior use of its pleaded marks. As such, opposer has shown that it has
standing to bring this proceeding.9
Priority
Opposer must prove its common law rights to the mark NANNY POPPINS
prior to applicant’s priority date. “Under the rule of Otto Roth, a party opposing
registration of a trademark due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows by a preponderance of the
evidence that his term is distinctive of his goods [or services], whether inherently or
through the acquisition of secondary meaning or through ‘whatever other type of
use may have developed a trade identity.”’ Towers v. Advent Software Inc., 913 F.2d
942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing Otto Roth & Co. v. Universal
Food Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). See also, Green Spot
(Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1284
(TTAB 2008) (opposer’s use, while not large, was sufficient to constitute more than
token use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87
USPQ2d 1179 (TTAB 2008) (opposer must show use prior to applicant’s priority
date); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007)

9 In the ESTTA cover sheet filed with its notice of opposition, opposer identified trademark
application Serial No. 77308325, which it filed on October 19, 2007, for the standard
character mark NANNY POPPINS for “job placement, referral, and employment agency
services in the fields of babysitters, nannies, and child care professionals” in International
Class 35. This application has been suspended pending disposition of applicant’s
application, the examining attorney therein having indicated that applicant’s prior-filed
pending application could present a bar to registration of opposer’s pending mark.
Although opposer’s pleading of trademark application Serial No. 77308325 set forth proper
allegations upon which standing could be based, opposer did not provide a copy of the
application to show its current title or status, and the Board does not independently search
Office records to verify this information. Accordingly, we have given it no consideration.
Opposition No. 91187157

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(pleading of reliance on analogous use established priority); and Corporate
Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB
1998) (interstate or intrastate commerce is sufficient). Opposer must establish that
the mark NANNY POPPINS is inherently distinctive or that it has acquired
distinctiveness prior in time to the date upon which applicant bases its priority. As
applicant has adduced no evidence in support of any other date, applicant’s priority
date is the filing date of its application, April 20, 2006. See Jack Poust & Co., Inc. v.
John Gross & Co., 460 F.2d 1076, 174 USPQ 149 (CCPA 1972); The H.D. Lee
Company, Inc. v. Maidenform, Inc., 87 USPQ2d 1715, 1721 (2008); and The Chicago
Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1716 (TTAB 1991) (in the
absence of evidence regarding its date of first use, the earliest date of first use on
which applicant may rely is the filing date of its application).
It is well established that testimony by a witness or witnesses personally
conversant with the facts, and which is “clear, convincing, consistent, and
sufficiently circumstantial to convince the trier of fact of the probative value
thereof,” may be relied upon to prove the facts stated therein. Liqwacon
Corporation v. Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979).
See also, Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc.,
98 USPQ2d 1921, 1931 (TTAB 2011) (“While it is certainly preferable for a party’s
testimony to be supported by corroborating documents, the lack of documentary
evidence is not fatal”); and GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ
Opposition No. 91187157

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576, 577 (TTAB 1976) (testimony that is clear, convincing, uncontradicted and
probative is competent to establish ownership and prior use of mark).
Opposer’s showing of its superior proprietary rights in its mark has been
accomplished via opposer’s submission of the testimony declarations of Ms.
Bouchard and Ms. Berube, who have shared ownership of the business since 1995 to
the present and whose testimony is in agreement regarding critical dates and
activities. Ms. Bouchard testified to opposer’s corporate address changes, which are
corroborated by the Boston Globe documentation.10 Based on Ms. Bouchard and
Ms. Berube’s testimony, we find that “Nanny Poppins” started operations in
December of 1995 in Massachusetts.11 In 1996, the company started placing
nannies from states other than Massachusetts, such as New Hampshire.12 In 1998,
opposer participated in a national convention of the International Nanny
Association and lobbied against proposed state legislation involving regulation of
nannies.13 Opposer’s clientele in Boston included “major hotel chains,” hospitals
such as Children’s Hospital, and the universities of Harvard, Tufts, and MIT.14
Other clients were identified as “major hotel chains” (in New Hampshire)15; as well
as “nationwide relocation and employee assistant [sic] programs.”16 Opposer has
advertised in regional newspapers including the Boston Globe, and was “featured on

10 See footnote 17, infra.
11 Bouchard decl., para. 1, Berube decl., para. 1.
12 Bouchard decl., para. 4.
13 Bouchard decl., para. 10; Berube para. 5.
14 Bouchard decl., paras. 5, 8.
15 Bouchard decl., para. 6.
16 Bouchard decl., para. 7.
Opposition No. 91187157

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Channel 7 News three days in a row.”17 Its clients include sports figures and
political leaders.18
The trial declaration of Tina Clegg, opposer’s part-time executive assistant,
corroborates Ms. Bouchard and Ms. Berube’s testimony. Ms. Clegg states that she
has known “Jennifer Bouchard owner of Nanny Poppins” since November 2004; that
she started working for opposer in September 2008; and that opposer has
“continuously used the Nanny Poppins name in advertising and as its business
name” from 2004 to the present.19
Opposer has established its superior proprietary rights in its mark NANNY
POPPINS prior to applicant’s filing date of April 20, 2006, through its actual use
and advertising dating from 1995. Even if opposer’s use were only in the nature of
use analogous to trademark use (such as use as a trade name), it has shown that its
ongoing activities under the name NANNY POPPINS were sufficient to be

17 Bouchard decl., para. 9. Ms. Bouchard identifies three exhibits in her declaration: Exhibit
A, a copy of an advertisement from the Boston Globe; Exhibit B, a copy of the bill from the
Boston Globe for placement of the advertisement; and Exhibit C, a copy of an email from an
attorney who apparently contacted opposer in an attempt to locate a nanny that was
allegedly employed not by opposer, but by applicant. None of these exhibits were attached to
the declaration. However, together with its brief, opposer filed a duplicate copy of the
declaration, including some documents previously unfiled, namely a copy of “The Boston
Globe TAAS History Report”; and four pages headed “Classified, Credit – Accounting” that
identify ad copy apparently placed in the Boston Globe in 1997 on behalf of “Nanny Poppins,
Inc.” Although exhibits attached to briefs are not normally considered, if these documents
were to be considered as relating back to the original date of filing of Ms. Bouchard’s
testimony (thus making them timely), they would be clear corroboration of her testimony that
opposer placed ads bearing opposer’s mark in the Boston Globe in 1997 for Nanny Poppins,
Inc. See TBMP § 801.01 (3d ed. rev. 1 June 2012) (parties should not attach previously-filed
evidence to their briefs). So as to be clear, however, the declaration testimony standing alone
is sufficient to establish opposer’s priority. Further, applicant did not dispute opposer’s
priority of use.
18 Bouchard decl., para. 12.
19 Clegg decl., paras. 1, 2.
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considered “an open and notorious public use directed to the segment of the
purchasing public for whom the services are intended.” Computer Food Stores, Inc.
v. Corner Store Franchises, Inc., 176 USPQ 535, 538 (TTAB 1973) (cited with
approval in T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882
(Fed. Cir. 1996)). See also, Liqwacon Corporation 203 USPQ at 308 (“A prior open
and public use of a term as a salient feature of a trade name in connection with a
viable business entity or use in advertising or promoting goods or services may be
sufficient for this purpose.”). Opposer has shown that it has used the service mark
and trade name NANNY POPPINS for an employment agency placing babysitters
and nannies in Boston and surrounding areas, including the states of
Massachusetts, New Hampshire, Rhode Island and New Jersey since December 31,
1995. Opposer is therefore entitled to rely on this date as its priority date.
Likelihood of Confusion
We now turn to a consideration of the issue of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Our determination under Trademark Act Section 2(d) 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 (CCPA 1973). See also 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
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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 Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
A. Comparison of the Services, Trade Channels and Classes of Consumers
We begin with the du Pont factor of the relatedness of the services. We base
our evaluation on the services as they are identified in applicant’s application and
as opposer has established are in actual use in association with its mark NANNY
POPPINS, i.e., employment agency services in the fields of babysitters and nannies.
Opposer’s common law rights extend only as far as those services in association
with which opposer actually has made common law use of its mark NANNY
POPPINS.
It is unnecessary that the parties’ respective services be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether consumers would confuse the
services themselves, but rather whether they would be confused as to the source of
the services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The services need
only be sufficiently related that consumers would be likely to assume, upon
encountering the services under similar marks, that the services originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In
re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
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The services of the parties are related. Applicant’s application covers
“franchising, namely, offering technical assistance in the establishment and/or
operation of referral agencies for child care providers and nannies.” Opposer
operates a referral and employment agency service “in the fields of babysitters,
nannies, and domestic help, childcare professionals.” Although applicant’s
recitation of services identifies franchise opportunities while opposer offers its
services directly to companies and individuals seeking nannies, both parties offer
referral and employment services in the same field. Consumers are likely to
confuse the source of the parties’ services when used in association with a
confusingly similar mark. This du Pont factor favors a finding of likelihood of
confusion. While opposer’s customers may not include those individuals seeking to
purchase a franchise operation, the record supports a finding that the parties are
competitors in the child care market that focuses on providing nannies and
babysitters for hire. Applicant’s potential franchisees, familiar with opposer’s
NANNY POPPINS services, would be likely to become confused as to the source of
origin of applicant’s NANNY POPPINZ franchises. Accordingly, these du Pont
factors weigh in favor of a finding of likelihood of confusion.
B. Comparison of the Marks
“When marks would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). See also, In re Risesmart, Inc., 104 USPQ2d 1931,
1935 (TTAB 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
Opposition No. 91187157

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(Fed. Cir. 2010); and In re Dixie Rest., 41 USPQ2d at 1534. In comparing the
marks, we must consider the marks in their entireties as to appearance, sound,
connotation and commercial impression, to determine the similarity or dissimilarity
between them. Palm Bay, 73 USPQ2d at 1692. The test, under the first du Pont
factor, 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 that confusion as to the source of the services
offered under the respective marks is likely to result.
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). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955); In
re National Data Corp., 224 USPQ at 751 (nothing improper in giving more or less
weight to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties). The focus is on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
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Bearing these principles in mind, we find that the dominant feature of
applicant’s mark is the term NANNY POPPINZ. It is the most prominent feature of
applicant’s mark, being twice the size of the drawing of children’s heads; moreover,
as the only literal portion of the mark, it is the portion by which consumers will use
to call for, or refer to, the services. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82
(Fed. Cir. 1983); In re Dakin's Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001);
In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). The
drawing of children’s heads and the particular color scheme claimed do not serve to
sufficiently distinguish the marks. The drawing of children’s heads may actually
reinforce the connection to applicant’s services as related to baby-sitting and nanny
services.
The fact that “POPPINS” in opposer’s mark is spelled with an “s” while
“POPPINZ” in applicant’s mark is spelled with a “z” is of little consequence.
Consumers of both parties’ services are unlikely to distinguish between applicant
and opposer’s services based on this minute difference, which in any event, is only
apparent when the marks are viewed. In calling for the services, no distinction
would be made. In general, a mere misspelling of a word, particularly one that
results in a mere one letter difference, is minor and may not be noticed by many
consumers. See, e.g., Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460
(CCPA 1962) (“TINTZ [is] a phonetic spelling of ‘tints”’). Cf., In re Dean S. Carlson,
91 USPQ2d 1198, 1200-1201 (TTAB 2009) (no difference in perception between
URBANHOUZING and URBANHOUSING); In re Quik-Print Copy Shops, 616 F.2d
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523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is
no legally significant difference here between ‘quik’ and ‘quick”’); and In re Organik
Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) (“ORGANIK, which is the
phonetic equivalent of the term ‘organic,’ is deceptive”).
The du Pont factor regarding the similarity of the marks strongly favors a
finding of likelihood of confusion.
C. Actual Confusion
We next address the du Pont factor assessing the “nature and extent of any
actual confusion.” In her declaration, Ms. Clegg explains that in her capacity as
executive assistant for opposer, she handles applications from nannies seeking
employment. She states that in “the new Nanny Poppins registration system”
“approximately 30 percent of our applications are from applicants seeking
employment through nannypoppinz.”20 She also describes a telephone call she
received from a candidate looking for placement who “said that she did work
through Nanny Poppins before some years ago” but who then “called back right
after and stated that she … just realized she … had apparently worked for
nannypoppinz.”21 Ms. Bouchard also states, in her declaration, that she has “taken
and returned phone calls to attorneys looking for nannies who are criminals who
are alleged to work through [applicant]”22 and that callers from states which are not

20 Clegg decl., para. 4.
21 Clegg decl., para. 5.
22 Bouchard decl., para 15.
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serviced by opposer “are combative at times insisting that they were referred to
me.”23
These misdirected telephone calls are admissible under the hearsay
exceptions set forth under Fed. R. Evid. 803(1) (present sense impression), as
evidence of what Ms. Clegg and Ms. Bouchard heard and experienced during the
calls, or, under Fed. R. Evid. 803(3) (state of mind), as statements revealing the
declarants’ states of mind. The statements are not offered for the truth of the
statements but rather simply for the fact that they were made. See, e.g., Toys “R”
Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983) (out-of-court statements
admissible to show “that people have, in fact, made an association” between the
parties); Finance Company of America v. Bank-America Corp., 205 USPQ 1016,
1035 (TTAB 1979, as amended 1980) (employees’ testimony regarding receipt of
misdirected mail or telephone calls not hearsay), aff’d in unpub’d opinion, Appeal
No. 80-558 (CCPA February 12, 1981); Armco, Inc. v. Armco Burglar Alarm Co., 693
F.2d 1155, 217 USPQ 145, 149 n.10 (5th Cir. 1982) (testimony of plaintiff’s
employees regarding purchasers attempting to reach defendant admissible);
CCBN.com Inc. v. c-call.com Inc., 53 USPQ2d 1132, 1137 (D. Mass. 1999)
(“Statements of customer confusion in the trademark context fall under the ‘state of
mind exception’ to the hearsay rule”).
The existence of actual confusion is normally very persuasive evidence of
likelihood of confusion and undercuts any possible claim that the marks are so
dissimilar that there can be no likelihood of confusion. See Thompson v. Haynes,

23 Bouchard decl., para. 15.
Opposition No. 91187157

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305 F.3d 1369, 64 USPQ2d 1650 (Fed. Cir. 2002); Exxon Corp. v. Texas Motor
Exchange, Inc., 628 F.2d 500, 208 USPQ 384, 389 (5th Cir. 1980) (“The best evidence
of likelihood of confusion is provided by evidence of actual confusion”).
Given the evidence of specific instances of actual confusion, this du Pont
factor favors opposer.
D. Balancing the Factors.
Applicant’s mark, , is confusingly similar to opposer’s mark
NANNY POPPINS. Potential consumers of applicant’s services are more likely to
remember the literal portion of applicant’s mark, which is virtually
indistinguishable from opposer’s mark, and the single-letter difference is
insignificant. The services are related and are directed to similar classes of
purchasers through similar trade channels. Even though applicant is targeting
individuals interested in franchising a nanny/babysitting operation, the underlying
purpose and function of the franchise is the same as opposer’s business. Consumers
familiar with opposer’s services would be likely to mistakenly believe that
applicant’s services are associated with those of opposer. That there has been
actual confusion is highly probative of a finding that there is a likelihood of
confusion.
Decision: The opposition is sustained under Trademark Act Section 2(d),
and registration to applicant is refused.