Mailed: February 3, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Oxford Education LLC
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Serial No. 86555865
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S. David Sterkin of JYTLAW for Oxford Education LLC.
Keisha M. Hardley, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.1
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Before Quinn, Wolfson and Pologeorgis,
Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Oxford Education LLC (“Applicant”) seeks registration on the Principal Register
of the mark depicted below
for:
Educational services, namely, conducting programs in the
field of the whole brain education promotion by developing
the right brain and connecting it to the left brain allowing
1 In this proceeding, Ms. Hardley represented the Office with respect to the application at
briefing; Ms. Erica Dickey was responsible for the application during prosecution.
This Opinion is not a
Precedent of the TTAB
Serial No. 86555865
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both sides of the brain to work together in balance;
Educational services, namely, conducting workshop and
seminars including music activities in the field of whole
brain education by developing the right brain and
connecting it to the left brain allowing both sides of the
brain to work together in balance and distribution of course
material in connection therewith; Educational services,
namely, providing workshop and seminars including music
activities in the fields of the whole brain education
promotion; Educational services, namely, teacher training
in the field of the whole brain education promotion
provided on a real-time basis during classroom instruction
in International Class 41.2
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d); 15 U.S.C. § 1052(d), based on Reg. No. 2594737
for the mark BRAINWAVES in typed form3 for:
Books related to human brain functions, including
diagnostic tests and exercises to stimulate and improve
mental performance
in International Class 16,
Educational services, namely, providing instruction and
exercises related to human brain function to stimulate and
improve mental performance
in International Class 41, and
2 Application Serial No. 86555865 was filed on March 6, 2015, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation of its bona fide intent to use the mark in
commerce. The colors “pink, dark pink, blue, light blue and white” are claimed as a feature
of the mark. The description of the mark reads: “The mark consists of a half dome shape in
the design of a brain, with the right half being blue and white and the left half being pink
and white, above a rectangle banner, with the right half of the banner being dark blue with
diagonal light blue stripes and the left half of the banner being pink with diagonal dark pink
stripes. On the banner are the words ‘BRAIN O WAVE’ in white, with a white circle in the
center of the ‘O’. The other white in the mark represents background and is not a feature of
the mark.”
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
Serial No. 86555865
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Computerized on-line services, namely, providing
information related to human brain functions, including
diagnostic tests to stimulate and improve mental
performance
in International Class 42.4
After the Trademark Examining Attorney made the refusal final, Applicant filed
a request for reconsideration that was denied, and Applicant appealed to this Board.
We affirm the refusal to register.
Likelihood of Confusion
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 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, two key, though not exclusive,
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). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Similarities Between the Services
We turn first to a comparison of the services. As is often stated, we make our
determination regarding the similarity of the services based on the services as they
are identified in the application and registration, respectively. Stone Lion Capital
4 Registered on the Principal Register on May 19, 2015.
Serial No. 86555865
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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
17893, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant’s services are identified as
educational services, and more specifically, as conducting programs, workshops,
seminars and teacher training, all “in the field of whole brain education” or “whole
brain education promotion.” The recitation of services in the cited registration
includes the following educational services: “providing instruction and exercises
related to human brain function to stimulate and improve mental performance.” Both
Applicant and Registrant offer educational curriculums focused on expanding the
potential of the human brain. A program in the field of “whole brain education,” as
recited in Applicant’s application, encompasses programs that include exercises
related to human brain function for “stimulating and improving mental
performance,” the recited purpose of Registrant’s services. Applicant agrees that
Registrant’s services “are educational in nature and do focus on brain function,
stimulation, and performance,”5 but argues that its services are highly specialized
“specifically related to allowing both sides of the brain to work together in balance”6
and “focusing on left and right brain improvement.”7 To the extent Applicant may be
arguing that focusing on left/right brain connection is defined by the phrase “whole
5 8 TTABVUE 11.
6 December 7, 2013 Response to Office Action, p. 5.
7 Id.
Serial No. 86555865
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brain,” and that there is therefore a limitation inherent in the recitation as worded,
there is nothing in the record to indicate that “whole brain” is a term of art that should
not be given any but its ordinary meaning, which is the “entire” brain.8 Registrant’s
services are also related to the entire brain. Even assuming, however, that the phrase
“whole brain” is a term of art and defines a type or sub-set of brain research or
education, the phrase “related to human brain function” in Registrant’s recitation of
services is broad enough to cover such specific meaning of “whole brain.” In this case,
Applicant’s programs, workshops, seminars, and teacher training in “whole brain”
function is encompassed by Registrant’s educational services related to human brain
function. In other words, we see no discernible difference between services directed
to a human brain (including right and left sides, the corpus callosum linking the two
sides, and improving communication between the sides)9 and services directed to
improving performance of a whole brain having all such parts and components. Any
unique focus on the relationship between the two sides of the brain that Applicant
may indeed emphasize is not reflected in the recitation of services of its application
8 We take judicial notice of two relevant definitions of “whole”: 1. “having all its proper parts
or components : complete, unmodified
” and 2. “constituting the
total sum or undiminished entirety : entire .” Merriam-Webster
Dictionary (2017) (https://www.merriam-webster.com). The Board may take judicial notice
of dictionary definitions, including definitions or entries from references that are the
electronic equivalent of a print reference work. See Univ. of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009).
9 The “corpus callosum” is “the great band of commissural fibers uniting the cerebral
hemispheres of higher mammals including humans” allowing both sides of the brain to
communicate with each other. Merriam-Webster Dictionary (2017) (https://www.merriam-
webster.com). See also EnchantedLearning.com webpage, attached to December 31, 2015
Office Action, p. 2, describing the communication function of the corpus callosum.
Serial No. 86555865
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nor excluded from the services as recited in the cited registration. The services are
legally identical insofar as they are recited in International Class 41.
Under this du Pont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each and every activity listed in the description of services.
It is sufficient for a refusal based on likelihood of confusion that relatedness is
established for any item encompassed by the identification of services in the
application. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014). Therefore we need not find that Applicant’s services are identical or related to
Registrant’s Class 16 or 42 services; however, these are also highly related. Applicant
provides written materials in connection with rendering its educational services, and
Registrant’s printed instructional materials as well as its on-line services are also in
the field of human brain functionality and include tests and exercises to increase one’s
“brain power.”
Accordingly, this du Pont factor strongly favors a finding of likelihood of confusion.
Channels of Trade and Classes of Consumers
Because the services are legally identical in part, and neither Applicant’s
application nor the cited registration contain any limitations on the channels of trade
and classes of purchasers, we must presume that the channels of trade and classes of
purchasers for these identical services are the same. See Stone Lion Capital Partners,
110 USPQ2d at 1161; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
Serial No. 86555865
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723 (CCPA 1968); American Lebanese Syrian Associated Charities Inc. v. Child
Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
As such, the third du Pont factor – the similarity or dissimilarity of established,
likely to continue trade channels – also favors a finding of likelihood of confusion.
The Marks
We next turn to the first du Pont factor, i.e., whether Applicant’s composite mark
and Registrant’s BRAINWAVES mark are similar or dissimilar
when viewed in their entireties in terms of appearance, sound, connotation and
overall commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP,
110 USPQ2d at 1160 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). We
note initially that because the International Class 41 services are legally identical in
part, the degree of similarity between the marks which is required to support a
finding of likelihood of confusion need not be as great as where there is a recognizable
disparity between the services. See In re Viterra Inc., 101 USPQ2d at 1908 (citing
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1701 (Fed. Cir. 1992). See also In re Dixie Restaurants, Inc., 41 USPQ2d at
1534.
Serial No. 86555865
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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 goods 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. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, both
Applicant and Registrant provide their services to the general public, and Applicant
in particular markets to individuals with children ages 5 to 15.10 Such consumers are
not necessarily sophisticated, but even careful purchasers can be confused as to
source where similar marks are used on identical services. See In re Research Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970)) (“Human memories even of discriminating purchasers … are not infallible.”).
Applicant’s mark comprises the wording BRAIN O WAVE and a design element.
The Examining Attorney contends that the literal portion of the mark is BRAIN
WAVE, arguing that the “O” does not make an impression as a letter, but only as a
design feature. We agree with the Examining Attorney that it is probable that, upon
first encounter, consumers would perceive the literal portion of Applicant’s mark as
10 See Applicant’s explanatory webpage “What is it?” discussing the history of Applicant’s
techniques for developing the brain, and indicating that Applicant “teaches the Shichida
Method to Children between the ages of 5 to 15 years….” June 29, 2016 Denial of Request for
reconsideration, p. 3.
Serial No. 86555865
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BRAIN WAVE, but find Applicant’s characterization to be a more likely portrayal of
the mark as actually perceived by consumers because Applicant’s marketing
materials refer to Applicant as “Brain O Wave”11 and its domain name is
“www.brainowave.com.”12 We may look to how a party uses a mark to determine the
commercial impression sought to be created. Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984); see also
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”).
Either way, we find the marks to be confusingly similar in their entireties for the
reasons discussed more fully below. We will refer to Applicant’s mark as BRAIN O
WAVE, inasmuch as this is how Applicant has described it, both in its application, in
its marketing materials and as a domain name.
Our starting point for comparison of Applicant’s composite mark with the cited
mark is our finding that the phrase BRAIN O WAVE in Applicant’s mark is the
dominant element in the mark. It is the wording by which consumers will identify
and call for the services. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). Further, the graphic elements in the mark form a rectangular
11 See, e.g., the copy of an application for attendance at one of Applicant’s workshops, wherein
the following information appears: “We at Brain O Wave give music to children on Brain
Waves like Alpha and Theta waves which have no side effects.” June 29, 2016 Denial of
Request for reconsideration, p. 12, 4 TTABVUE 15.
12 June 29, 2016 Request for reconsideration, TSDR p. 2., 4 TTABVUE 5.
Serial No. 86555865
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background to the words as well as (by way of the representation of the top of a human
brain) a reinforcing message that Applicant’s services relate to the “brain” in general
and “brain waves” more specifically. Although the similarity or dissimilarity of the
marks is determined based on the marks in their entireties, 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., 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 23, 234 (CCPA 1981). That is, 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). Applicant
recognizes in its Brief, 8 TTABVUE 9, that “if a mark comprises both wording and a
design, greater weight is often given to the wording, because it is the wording that
purchasers would use to refer to or request the goods or services,” citing the
Trademark Manual of Examining Procedure (TMEP) § 1207.01(c)(ii) (January 2017);
Viterra, 101 USPQ2d at 1911; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247
(TTAB 2010); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987). However, Applicant argues that in this case, the design features of its mark
are inherently distinct and should be accorded greater weight. We disagree. The pink-
and-blue rectangle upon which the wording is superimposed will be perceived as a
backdrop or carrier for the wording, and the stylized brain design reinforces the
Serial No. 86555865
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overall commercial impression of the mark as related to brain waves, thereby
underscoring the dominance of the wording.
For these reasons, we find BRAIN O WAVE to be the dominant feature of
Applicant’s mark. That wording is similar to Registrant’s mark BRAINWAVES in
appearance, sound and meaning. As we have alluded, consumers will tend to discount
the significance of the “O” or read it more in the nature of punctuation, as a hyphen
or dash. Moreover, the letter “O” contains a “dot” in the middle and is superimposed
on the pink-and-blue background, suggesting the two sides of the brain, and is
unexpected as a letter, inasmuch as “brain wave” is itself a common phrase in
English13 and would be perceived as such, whereas “brain o wave” is not a recognized
word.14 Even consumers who perceive the middle letter “O” in the mark will
nonetheless readily recognize the play on “brain wave” that is intended thereby. The
fact that Registrant’s mark is pluralized is immaterial. See, e.g., Wilson v. Delaunay,
245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference
13 Defined as “a : rhythmic fluctuations of voltage between parts of the brain resulting in the
flow of an electric current; b : a current produced by brain waves.” Merriam-Webster
Dictionary (2017) (https://www.merriam-webster.com).
14 We have considered the list of registered marks submitted by Applicant (4 TTABVUE 9-
11) and the copy of the VEG-O-MATIC registration (Reg. No. 4511106, 4 TTABVUE 7) as
showing that a middle letter “O” may appear embedded within a mark, but find this evidence
to be of virtually no probative value. As the Examining Attorney points out, mere listings do
not make the registrations or applications therein part of the record, and we cannot
determine from the list as to what goods or services the marks relate or whether any of them
are in commercial use. The same infirmities attach to the third-party registration.
Significantly, however, essentially none of the marks listed have the same construction as
Applicant’s mark in that they are not made up of two words that together form a commonly
understood phrase (such as brain wave) split by a middle letter (in this case, “O”). The
exceptions to this, such as the marks SHOT-O-CLOCK and WIND-O-SHIELD, tend to
support the refusal in that they would likely be perceived as “shot clock” and “windshield,”
respectively.
Serial No. 86555865
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between the singular and plural forms of ZOMBIE such that the marks were
considered the same mark); In re Pix of Am., Inc., 225 U.S.P.Q. 691, 692 (TTAB 1985)
(BLINK and BLINKS share the same meaning and connotation because the
pluralization of applicant’s mark “is almost totally insignificant in terms of the
likelihood of confusion of purchasers”).
Considering, as we must, Applicant’s composite mark in its entirety, we find that
when viewed as a whole, the mark is similar to Registrant’s mark in sound,
connotation and commercial impression. “In appropriate cases, a finding of similarity
as to any one factor (sight, sound or meaning) alone ‘may be sufficient to support a
holding that the marks are confusingly similar.’” Trak, Inc. v. Traq Inc., 212 USPQ
846, 850 (TTAB 1981) (quoted in In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988)); see also In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007);
TMEP § 1207.01(b). In this case, we find the similarity of the marks in pronunciation,
connotation and overall commercial impression outweighs the differences in the
appearances of the marks. Moreover, since Registrant’s mark is presented in typed
form (the equivalent to a standard form character mark), it could appear in the same
or similar font style as the lettering used in Applicant’s mark, and in the same size
or color combination, i.e., against a pink-and-blue background, thereby increasing the
overall similarity of the marks.15
15 We are not suggesting that Registrant’s mark could be displayed in a manner that would
encompass the stylized brain design elements of Applicant’s mark. See Viterra, 101 USPQ2d
at 1910-11 (“In rejecting the “reasonable manners” test, we are not suggesting that a
standard character mark encompasses all possible design elements of the mark.”); In re White
Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009) (standard character mark could not be
extended to cover the separate design element appearing in the registrant’s mark).
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Applicant makes the argument that the cited mark is weak and should be
accorded a narrow scope of protection. Applicant relies primarily on the dictionary
definitions of the words “brain” and “waves” to support its contention. To the extent
the mark contains the term “brain,” Applicant argues the mark is weak because
Registrant’s services focus on improving brain function. While it may be that by itself,
the term “brain” could be considered descriptive of the services, the cited mark is
BRAINWAVES, and Applicant has not shown that this term is descriptive of
educational services designed to improve brain function. To the extent the cited mark
contains the term “waves,” Applicant argues that the mark is diluted because “there
are a number of existing registrations identifying potentially related goods and
services.”16 Applicant submitted a list from TESS, the USPTO’s Trademark
Electronic Search System, of the first 100 out of 261 records of marks wherein the
term “waves” was found in the “mark” field. As with the search of marks containing
a middle letter “O,” the search results list only the application serial number or
registration number, mark, and status of the applications or registrations (all are
“live”). Such a list, as noted, is insufficient to properly make the applications or
registrations of record; copies or electronic printouts of the applications or
registrations are required. See In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3
(TTAB 1994). Even had they been properly introduced, however, their probative value
would be negligible. None of the marks, except one, also include the term “brain.”17
16 Applicant’s Brief, 8 TTABVUE 11.
17 BRAIN WAVES mark (86586807) that is suspended pending outcome of Applicant’s mark
herein. There is one “waves” 86594440. Pgs. 9-11.
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Moreover, we are not privy to the records in the files of those cases, and, in any event,
the Board is not bound by the actions of examining attorneys in allowing those marks
for registration. It has been said many times that each case must be decided on its
own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (internal
citation omitted). Applicant has not shown that the cited mark is weak.
In view of the foregoing, we find that the similarities in the marks outweigh the
differences, and that this du Pont factor also weighs in favor of a finding of likelihood
of confusion.
Summary
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors. To the extent that any other du Pont
factors for which no evidence was presented by Applicant or the Examining Attorney
may nonetheless be applicable, we treat them as neutral.
In light of the foregoing, we conclude that consumers familiar with Registrant’s
educational services related to human brain function offered under the mark
BRAINWAVES would be likely to believe, upon encountering Applicant’s legally
identical services offered under its mark that the services
originated with, are associated with, or are sponsored by the same entity.
Decision: The refusal to register is affirmed.
