Plymouth Direct, Inc. and Natures Pillows, Inc.

Trademark Trial and Appeal Board

Nov 5, 2015

No. 86107088 (T.T.A.B. Nov. 5, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Plymouth Direct, Inc. and Natures Pillows, Inc.
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Serial No. 86107088
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Martin L. Faigus of Caesar Rivise, PC,
for Plymouth Direct, Inc. and Natures Pillows, Inc.
Jeanine Gagliardi, Trademark Examining Attorney, Law Office 120,
Michael Baird, Managing Attorney.
_____

Before Bucher, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Plymouth Direct, Inc. and Natures Pillows, Inc., joint applicants (“Applicants”),
seek registration on the Principal Register of the mark TOP DOG DIRECT (in
standard characters) for
The marketing of new products through television, the
internet and at retail, in International Class 35.1

1 Application Serial No. 86107088 was filed on October 31, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 86107088
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicants’ mark so resembles the mark ?WHAT IF! TOPDOG and
design, shown below,

for, inter alia, the services listed below:
marketing; business management, business assistance,
business advice, business appraisals, business
evaluations, business consultancy, business information
and research relating to advertising, promotion or
marketing; marketing studies; market research;
marketing strategy services; sales promotion for others;
interviewing for market research and other business
purposes, namely, interviewing for the purposes of
obtaining business and business management information
and advice; arranging, organizing and conducting
exhibitions, conferences and seminars for advertising,
promotional or marketing purposes; promotional services;
advertising; rental of advertising space; media buying;
production, dissemination and distribution of advertising
material; preparation and placing of advertisements;
publication of publicity texts; dissemination of marketing
data; reprographic services; production of advertisements
and commercials; production of programmes, films, video
and audio recordings for publicity, marketing and
advertising purposes; business advisory and consultancy
services; preparation of business reports; business
management assistance; business consultation in the field
of e-commerce; business advisory services relating to the
exploitation of inventions; professional consultancy
services relating to advertising, marketing or promotion;
interviewing for educational purposes, namely, business
Serial No. 86107088
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consultation regarding identification of business
objectives and opportunities, marketing activities and
launching of new products, and improvement of business
processes, in Class 35,2
that if used in connection with Applicants’ identified services, is likely to cause
confusion.
The Trademark Examining Attorney also required Applicants to disclaim the
exclusive right to use the word “Direct” because when used in connection with
Applicants’ marketing services, the word “Direct” “merely describes the fact that
Applicants will market new products directly to individual prospective customers
via television advertisements, through the internet, and in retail stores.”3
Applicants refused to disclaim the exclusive right to use the word “Direct.”
When the refusal and requirement were made final, Applicants appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register and the
requirement to disclaim the exclusive right to use the word “Direct.”
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d

2 Registration No. 3684988, issued September 22, 2009; Sections 8 and 9 declarations filed
September 23, 2015. In view of the fact that Registrant filed its Sections 8 and 9
declarations, Applicants’ request to suspend proceedings pending the filing of the
declarations is moot.
3 9 TTABVUE 8.
Serial No. 86107088
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1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The similarity or dissimilarity and nature of the services.
Applicants are seeking to register their mark for “the marketing of new products
through television, the internet and at retail.” The identification of services in the
cited registration includes, inter alia, “marketing.” Registrant’s marketing services
encompass Applicants’ “marketing of new products through television, the internet
and at retail,” and, therefore, the services are in part legally identical.
B. Established, likely-to-continue channels of trade.
Because the services described in the application and the cited registration are
in part legally identical, we must presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same
channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same);
United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
Serial No. 86107088
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C. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or
connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”)).
In comparing the marks, we are mindful that where, as here, the services are in
part legally identical, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between
the services. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
Serial No. 86107088
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between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver
& Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Applicants’ mark is TOP DOG DIRECT and the mark in the cited registration is
shown below.

The marks are similar because they share the distinctive term “Top Dog” which
means and engenders the commercial impression of the leader.4 The differences in

4 The term “top dog” is defined, inter alia, as “a person, group, or nation that has acquired a
position of highest authority.” Dictionary.com based on the RANDOM HOUSE DICTIONARY
(2015). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 86107088
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the marks do not distinguish the marks because the term “Top Dog” is the dominant
element of both marks.5
With respect to Applicants’ mark TOP DOG DIRECT, the term “top dog” is the
dominant element because the word “Direct” is descriptive when used in connection
with Applicants’ services as it directly conveys to consumers that Applicants are
rendering direct marketing services.6 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) (“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.’”) (quoting In re National Data Corp., 224 USPQ at 752
1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed.
Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
Reinforcing the significance of the term “Top Dog” as the dominant element of
Applicants’ mark TOP DOG DIRECT is the fact that “Top Dog” is the first part of
the mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most

5 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).
6 See the discussion below.
Serial No. 86107088
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prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word
in the mark and the first word to appear on the label); Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word);
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
The term “TopDog” is also the dominant element of the registered mark because
it is the most prominent part of the registered mark and it is the term “TopDog”
that first catches the viewers’ eyes. The term ?WHAT IF! reinforces the term
“TopDog” in the registered mark because it challenges the prospective consumers of
Registrant’s services to be the leader (e.g., what if you were TOP DOG?).
We disagree with Applicants’ contention that the term ?WHAT IF! is the
dominant element of the registered mark because it is the first part of the mark.7
Applicants correctly assert that “[f]irst words in a mark have been recognized as
being the prominent feature of a mark,” citing Palm Bay Imports. However, the
position of a word or term at the beginning of mark does not ipso facto make it the
dominant portion of the mark. Identifying a specific element of a mark as the
dominant term is helpful in analyzing the similarity or dissimilarity of marks
because the dominant element of a mark attracts attention and consumers are more
likely to remember it; however, the marks must be considered as they are perceived.

7 7 TTABVUE 10.
Serial No. 86107088
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“[T]he weight given to the respective words is not entirely free of subjectivity.” In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) (VARGA GIRL
and VARGAS both for calendars are sufficiently different and not likely to cause
confusion). The fact-dependency of such determinations are illustrated by the
following cases: compare Keebler Co. v. Murray Bakery Products , 866 F.2d 1386, 9
USPQ2d 1736 (Fed.Cir. 1989) (PECAN SANDIES not confusingly similar to PECAN
SHORTERS); Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983)
(CHIROPRACTIC AND CHIRO-MATIC not confusingly similar); In re Bed and
Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed.Cir. 1986) (BED AND
BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL not
confusingly similar); and Wooster Brush Co. v. Prager Brush Co., 231 USPQ 316
(TTAB 1986) (POLY PRO and POLY FLO not confusingly similar); with Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed.Cir. 1983) (SQUIRT SQUAD
confusingly similar to SQUIRT); In re Clorox Co., 578 F.2d 305, 198 USPQ 337
(CCPA 1978) (ERASE confusingly similar to STAIN ERASER); and Geo A. Hormel
& Co. v. Hereford Heaven Brands, Inc., 341 F.2d 158, 144 USPQ 493 (CCPA 1965)
(SIZZLE confusingly similar to LITTLE SIZZLERS). As noted above, we find that
the term “TopDog” is the most prominent element of the registered mark because of
the way it is displayed and because the term ?WHAT IF! modifies “TopDog.”
We disagree with Applicants’ contention that the design portion of the registered
mark “imparts a remarkable visual distinction from applicants’ mark.”8 First, there

8 7 TTABVUE 10.
Serial No. 86107088
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is nothing particularly remarkable or memorable about the design element. Second,
the design element holds the ?WHAT IF! and separates it from the term “TopDog,”
thus, distinguishing “TopDog” and reinforcing it as the dominant part of the
registered mark.
In view of the foregoing, we find that the marks are similar in terms of
appearance, sound, connotation and commercial impression.
D. Balancing the factors.
Because the marks are similar and the services are in part legally identical and
are presumed to move in the same channels of trade, we find that Applicants’ mark
TOP DOG DIRECT for “the marketing of new products through television, the
internet and at retail” is likely to cause confusion with the registered mark
for “marketing.”
II. Disclaimer of the word “Direct”
For purposes of completeness, we determine whether Applicants must disclaim
the exclusive right to use the word “Direct.” As indicated above, the Trademark
Examining Attorney required Applicants to disclaim the exclusive right to use the
word “Direct” because when used in connection with Applicants’ marketing services,
the word “Direct” “merely describes the fact that Applicants will market new
products directly to individual prospective customers via television advertisements,
through the internet, and in retail stores.”9

9 9 TTABVUE 8.
Serial No. 86107088
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Pursuant to Section 6(a) of the Trademark Act of 1946, 15 U.S.C. § 1056(a),
“[t]he Director may require the applicant to disclaim an unregistrable component of
a mark otherwise registrable.” Section 2(e)(1) of the Trademark Act of 1946,
15 U.S.C. § 1052(e)(1), provides that merely descriptive matter in a mark is
unregistrable; it therefore is subject to disclaimer under Section 6(a). The Office
may refuse registration of the entire mark if an applicant fails to comply with a
proper disclaimer requirement. See In re Omaha National Corp., 819 F.2d 1117, 2
USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Grass GmbH, 79 USPQ2d 1600, 1602
(TTAB 2006).
A term is merely descriptive of services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of a quality, characteristic, feature, function,
purpose or use of the services. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark or a component of a mark is
merely descriptive is determined in relation to the services for which registration is
sought and the context in which the term is used, not in the abstract or on the basis
of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not
immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
Serial No. 86107088
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(TTAB 1973). This requires consideration of the context in which the mark is used
or intended to be used in connection with those services, and the possible
significance that the mark would have to the average purchaser of the services in
the marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219;
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir.
2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226
USPQ 285 (TTAB 1985). The question is not whether someone presented only with
the mark could guess the activities listed in the description of services. Rather, the
question is whether someone who knows what the activities are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re
Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002)). See also In re Patent
& Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
“Direct marketing” is defined as “marketing via a promotion delivered directly to
the individual prospective customer.”10
The Trademark Examining Attorney submitted copies of two registrations for
direct marketing services. The registrations, with relevant portions of the
identifications, are listed below.11

10 Vocabulary.com attached to the March 1, 2014 Office Action.
11 October 2, 2014 Office Action.
Serial No. 86107088
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Mark Reg. No. Services
Driven2WIN 3054890 for, inter alia, direct marketing advertising for
others
EURO RSCG EDGE 4102887 for, inter alia, direct response television
marketing and advertising services; direct
response advertising

We find that when the mark TOP DOG DIRECT is used in connection with “the
marketing of new products through television, the internet and at retail,” it directly
conveys to consumers that Applicants are rendering direct marketing services.
Applicants argue that the word “Direct” is suggestive, not descriptive, because
“it is suggestive of providing something directly, as opposed to indirectly to
others.”12 As indicated above, the word “Direct” when used in connection with
marketing services conveys to consumers that Applicants intend to render direct
marketing services. In view of the definition of the term “direct marketing,” there is
nothing suggestive about the word “Direct” when it is used in connection with
marketing services.
In view of the foregoing, the requirement that Applicants disclaim the exclusive
right to use the word “Direct” is affirmed.
Decision: The refusal to register Applicants’ mark TOP DOG DIRECT under
Section 2(d) of the Trademark Act is affirmed.
The requirement that Applicants disclaim the exclusive right to use the word
“Direct” is affirmed.

12 7 TTABVUE 10.