Precious Moments, Incorporated

Trademark Trial and Appeal Board

Apr 9, 2013

No. 85401326 (T.T.A.B. Apr. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Precious Moments, Incorporated
_____

Serial No. 85401326
_____

Derek P. Martin of Martin & Associates, LLC for Precious Moments, Incorporated.

Sanjeev K. Vohra, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
_____

Before Grendel, Lykos, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Precious Moments, Incorporated filed an application to register on the
Principal Register the mark HUG ’N CUDDLE BUGS, in standard character form,
for following goods:
Board games; Card games; Christmas tree ornaments and
decorations; Dolls; Modeled plastic toy figurines; Musical
toys; Playing cards; Puzzles; Snow globes; Stuffed and
plush toys; Toy figures; Toy tools, in International Class
28.1

1 Application Serial No. 85401326, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
August 18, 2011.
Serial No. 85401326

2

The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s goods, so resembles the registered mark CUDDLE BUG
as to be likely to cause confusion, or to cause mistake, or to deceive. The cited mark
is registered on the Principal Register for “plush toys.”2 When the refusal was made
final, applicant filed a request for reconsideration; however, the examining attorney
maintained his refusal. This appeal ensued. Applicant and the examining attorney
have filed briefs.
I. Evidentiary Issues.
Applicant submitted the following evidence with its brief: a Google search
result summary for the term “cuddle bug”; excerpts from two third-party Internet
web pages, one located at the URL and offering infant
apparel, the other displaying the service mark “Cuddle Bug Toy Factory” and
offering plush toys; search results for the term “cuddle bug” from the Trademark
Office’s TESS database; and U.S. Registration No 297636 for the mark CUDDLE
BUG BABY PRODUCTS for wholesale and retail online store services, mail order
services, and gift show services in the field of baby and infant products, excluding
clothing. Such evidence is untimely. “The record in the application should be
complete prior to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed.” 37 C.F.R. § 2.142(d). See

2 Reg. No. 3318901, issued on October 23, 2007.
Serial No. 85401326

3

also TBMP § 1207.01 (3rd ed., June, 2012). Inasmuch as the examining attorney
has addressed in his brief the U.S. registration submitted, we have considered it,
TBMP § 1207.03, but we have not considered the other evidence submitted with
applicant’s brief. The applicant has the responsibility to make sure that the record
is complete prior to filing a notice of appeal. In re Van Valkenburgh, 97 USPQ2d
1757, 1768 n. 32, 1769 (TTAB 2011). Had we considered the evidence, it would not
have altered our final decision.
II. Section 2(d) Refusal.
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). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Addressing first the goods of applicant and registrant, we find that they are
legally identical. “Plush toys” are identified in both the application and the cited
registration. In the context of an analysis under Section 2(d), it is sufficient if
likelihood of confusion is found with respect to use of the mark on any item that
comes within the description of goods in the application or registration. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
Serial No. 85401326

4

2007). Accordingly, the du Pont factor of the similarity or dissimilarity of the goods
favors a finding of likelihood of confusion.
As applicant’s goods are identical to those of registrant, we must presume
that those goods move in all channels of trade normal for those goods and are
available to all classes of purchasers for those goods, including the trade channels
and customers of registrant. American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). These two du Pont factors favor a
finding of likelihood of confusion.
We next consider the similarity or dissimilarity of the marks at issue. In
comparing the marks, we are mindful that where, as here, the goods are 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 goods. 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).
As the examining attorney points out, both marks at issue include the
designation CUDDLE BUG, and the addition of the letter “S” to this term as it
appears in applicant’s mark HUG ’N CUDDLE BUGS is an immaterial difference
that does not meaningfully distinguish the marks. Wilson v. Delaunay, 245 F.2d
Serial No. 85401326

5

877, 878, 114 USPQ 339, 341 (CCPA 1957); In re Pix of America, Inc., 225 USPQ
691, 692 (TTAB 1985); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962).
Moreover, it is significant that the registered mark CUDDLE BUG is contained in
its entirety within in applicant’s mark; in such cases, confusing similarity has often
been found. See The Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT similar to CONCEPT);
Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons,
Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER similar to
BENGAL); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)
(CAREER IMAGE similar to CREST CAREER IMAGES).
Applicant contends that the prefix HUG ’N, appearing in applicant’s mark
and absent from the registered mark, distinguishes the two marks in appearance,
sound, meaning, and overall commercial impression. While it is clear that the two
marks are not visually identical, the overall differences between the marks are not
strong. We note that HUG, in applicant’s mark, rhymes with BUG as it appears in
the registered mark; this phonetic similarity undercuts to some extent the
distinguishing power of the word HUG. Moreover, we note that the word CUDDLE
is defined as a verb meaning “to hold close for warmth or comfort or in affection :
FONDLE, HUG.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 551.3
As “hug” is a synonym for “cuddle,” the addition of HUG to applicant’s mark does

3 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).
Serial No. 85401326

6

not distinguish the mark in meaning from the cited registered mark. Applicant also
argues that the expression HUG AND CUDDLE “is known in the English language”
and that its meaning affects the connotation of the mark.4 However, there is no
evidence in the record to suggest that this phrase has any meaning other than the
ordinary meanings of its component words. As the words HUG and CUDDLE are
closely similar in meaning, we do not find that the connotation of HUG ’N CUDDLE
differs substantially from the designation CUDDLE as it appears in the cited mark.
Applicant disputes with the examining attorney over whether CUDDLE
BUGS constitutes the dominant portion of applicant’s mark. However, it is
unnecessary to assign dominance to any portion of applicant’s mark in order to
perceive the similarity between the marks. The marks at issue, considered in their
entireties, while not identical, contain substantial similarities in appearance, sound
and meaning. As the examining attorney points out, the test for confusing
similarity is not whether the marks can be distinguished in a side-by-side
comparison.5 The proper test is whether the marks are sufficiently similar in
terms of their overall commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. 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 unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In this case,
the similarities between the marks and the overall commercial impression that they

4 Applicant’s brief at 6.
5 Examining attorney’s brief at 4.
Serial No. 85401326

7

create outweigh their differences in sound and appearance, especially considering
that the marks would be used on identical goods marketed to the same classes of
customers and through the same trade channels. Accordingly, this du Pont factor
weighs in favor of a finding of likelihood of confusion.
Applicant argues that the cited registered mark “has not achieved
widespread fame.” However, there is no evidence to support this claim.6
Moreover, even if a lack of fame were proven, it would be, at best, a neutral factor in
our analysis. In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006); In re Engine
Supply, Inc., 225 USPQ 216, 218-219 (TTAB 1985) (“The lack of such fame has not
been considered a detriment to the right of protection afforded by Section 2(d) of the
Statute.”)
Applicant has adduced one third-party U.S. registration for the mark
CUDDLE BUG BABY PRODUCTS covering wholesale services in the field of baby
and infant products. A single third-party registration does not prove that CUDDLE
BUG is a weak term. Third-party registrations, even if numerous, are of limited
probative value. They are not evidence that the registered marks have been used in
the marketplace, let alone used so extensively that consumers have become
conditioned to distinguish between similar marks on the basis of minor differences.
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed.
Cir. 1992); Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ

6 Even if the Board were to consider the Google search results that were untimely filed,
they would be inadequate to establish a lack of fame. Internet search summaries are
fragmentary in nature and rarely provide sufficient context to be probative of the use of
trademarks in the marketplace. In re Thomas, 79 USPQ2d at 1026.
Serial No. 85401326

8

289, 294 (2d Cir. 1976); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406, 407 (C.C.P.A. 1967).
Neither does the existence of a third-party registration suggest that
applicant’s mark should be treated the same and allowed to register. We must
decide each case on its own merits and “[e]ven if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board.” In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Applicant argues that the designations CUDDLE and BUG are commonly
used in marks for toys, and therefore registrant’s mark is entitled only to a limited
scope of protection. However, applicant has failed to timely submit evidence to
support this claim. Moreover, even if we had considered applicant’s evidence, two
third-party usages of the term would be insufficient to show that the registered
mark is weak. Accordingly, we have no ground for perceiving any weakness or
dilution in the registered mark.
As applicant concedes, the absence of any reported instances of actual
confusion since applicant’s first use of its mark in 2012 is of little probative value.
Uncorroborated, ex parte statements of no known instances of actual confusion have
little, if any, weight, especially where we have no input from the registrant. In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)
(self-serving testimony of applicant’s unawareness of instances of actual confusion
Serial No. 85401326

9

was not conclusive that actual confusion did not exist or that there was no
likelihood of confusion); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144
USPQ 435, 438 (CCPA 1965), This is especially true when contemporaneous use
has occurred for such a short time period. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Applicant’s contention that it uses its mark on a wide variety of goods7 is
unsupported by evidence. In any event, applicant does not explain in what way this
would reduce the likelihood of confusion. Similarly, applicant’s contention that the
extent of potential confusion involving the registrant’s mark is “de minimis”8 is
unsupported.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s goods, so closely resembles the cited registered mark as to be
likely to cause confusion, mistake or deception as to the source of applicant’s goods.
Decision: The refusal to register is affirmed.

7 Applicant’s brief at 12.
8 Id. at 13.