Rose Tree Gallery, Inc.

Trademark Trial and Appeal Board

Mar 23, 1998

No. 74684146 (T.T.A.B. Mar. 23, 1998)

Paper No. 15
GDH/bgc
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 23, 1998
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Rose Tree Gallery, Inc.
________
Serial No. 74/684,146
_______
Bruce Allen Herald, Esq. for The Rose Tree Gallery, Inc.
Kathleen Cooney-Porter, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Rose Tree Gallery, Inc. has filed an application to
register the mark "TOOTSIE," in the stylized form reproduced
below,
Ser. No. 74/684,146
2
for "dolls, doll clothes, doll shoes, doll hats, [and] doll story
cards."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "TOOTSIETOY," which is separately registered by the same
registrant for:
(i) "miniature toys--namely,
automobiles, trucks, tractors, aeroplanes,
boats, submarines, zeppelins, trains,
cannons, dishes, doll-houses, badges,
whistles, children's basketballs, guns,
pistols, telephones, fire-engines, derricks,
ladders, scales, bath-room fixtures, fortune-
telling sets, living-room suites, bedroom
suites, dining-room sets, rockers, chairs,
davenports, desks, dressers, tables, beds and
other toy furniture";2 and
(ii) "miniature toys and novelties,
including automobiles, trucks, tractors,
airplanes, boats, submarines, trains,
cannon[s], dishes, badges, whistles, guns,
pistols, fire-engines, derricks, ladders,
scales, [and] bath-room fixtures";3
as to be likely to cause confusion, mistake or deception.

1 Ser. No. 74/684,146, filed on June 5, 1995, which alleges dates of
first use of April 20, 1995.
2 Reg. No. 505,201, issued on December 28, 1948, which sets forth dates
of first use of April 20, 1921; second renewal.
3 Reg. No. 365,092, issued on February 21, 1939, which sets forth dates
of first use of April 20, 1921; second renewal.
Ser. No. 74/684,146
3
Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We affirm the refusal to
register.
As indicated in Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), "in any
likelihood of confusion analysis[,] two key considerations are
the similarity of the goods and the similarity of the marks." 5
Applicant, in its initial brief, essentially concedes that this
appeal is one "where there are similar or identical marks." We
agree, in this respect, with the Examining Attorney that, as
applied to the respective goods, applicant’s "TOOTSIE" mark and
registrant’s "TOOTSIETOY" mark "are very similar in their overall
commercial impression, sound, appearance and connotation." The

4 Applicant, in its initial brief, has included a list of "numerous
prior registrations for similar marks" which, in addition to the two
cited registrations, sets forth 16 third-party registrations for marks
which consist of or feature the term "TOOTSIE" or its phonetic
equivalent. The Examining Attorney, in her brief, has objected to the
third-party registrations referred to by applicant, correctly noting
that such evidence, having been furnished for the first time with
applicant’s initial brief, is untimely under Trademark Rule 2.142(d).
In addition, a mere listing of third-party registrations is in any
event insufficient to make them of record since the Board does not
take judicial notice of registrations which reside in the Patent and
Trademark Office. See In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974). Instead, as the Examining Attorney correctly points out, the
proper procedure for making third-party registrations of record is
timely to submit copies of the actual registrations or the electronic
equivalents thereof, namely, printouts of the registrations taken from
the Patent and Trademark Office’s own computerized database. See,
e.g., In re Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995)
at n. 3; In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at
n. 3; and In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at
n. 2. Accordingly, while we sustain the Examining Attorney’s
objection, we observe that even if the evidence of third-party
registrations were to be further considered as forming part of the
record, it would make no difference in the outcome of this appeal.
5 The court, in particular, pointed out that: "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."
Ser. No. 74/684,146
4
presence of the generic term "TOY" in registrant’s "TOOTSIETOY"
mark simply does not significantly distinguish such mark from
applicant’s "TOOTSIE" mark, given the arbitrary or fanciful
nature of the term "TOOTSIE". Consequently, when considered in
their entities, the marks "TOOTSIE" and "TOOTSIETOY" so resemble
each other that, if used in connection with the same or similar
goods, confusion as to the source or sponsorship of such products
would be likely to occur.
This brings us to consideration of the respective
goods. Applicant, referring to the supporting affidavit of its
president, Whitney Smith, which it submitted with its request for
reconsideration of the final refusal, argues that notwithstanding
the broad manner in which its goods are identified in the
application, it uses its "TOOTSIE" mark only with respect to
porcelain collectible dolls and accessories therefor.6 In
particular, applicant urges that, in reality, confusion is not
likely because, as asserted in its initial brief:
The collectible dolls sold by the
applicant are high in price ($69 to $99).
The dolls are made with porcelain. They are
not toys.
Applicant uses the mark exclusively in
connection with collectible dolls. There is

6 Among other things, applicant’s president states in her affidavit
that she has examined registrant’s recent catalogs, which applicant
has made of record, "and found no doll houses in such catalogs"; that
she "has also investigated the available doll houses on the market";
and that she "believes that [registrant] ... has discontinued use of
their mark in connection with doll houses." Applicant’s suggestion,
however, that registrant may have abandoned the "TOOTSIETOY" mark for
doll houses constitutes a collateral attack on the validity of Reg.
No. 505,201 and, in the absence of a petition for partial cancellation
thereof, will not be given further consideration. See, e.g., In re
Calgon Corp., 435 F.2d 596, 168 USPQ 268, 270 (CCPA 1971).
Ser. No. 74/684,146
5
a defined market of consumers who purchase
collectibles. There are defined channels of
trade (collectibles magazines). Applicant’s
collectible dolls have not been and will not
be sold in mass market toy stores where the
registrant’s goods are sold.
Applicant has used the mark extensively
in commerce in connection with the sale of
her goods, including national television
advertising and a nationally published
magazine for doll collectors without any
evidence of confusion by consumers or a
protest by the prior registrant.
Sellers of toys do not market in
publications that target collectible [doll]
purchasers. Applicant does not use the mark
or claim any rights in the mark in connection
with toys ....
In addition, with respect to the various third-party
registrations relied upon by the Examining Attorney (as discussed
below) to support her position that the goods identified in
applicant’s application are closely related to the goods set
forth in the cited registrations, applicant asserts that:
The Examining Attorney was able to find
only one registration for collectible dolls
by a registrant (Heritage Mint, Ltd.) who
also sold "toy furniture" and "toy wagons".
The nature of the registrant, as well as the
registered name (Happy Memories Toddler
Collection)[,] suggests [sic] that the
registrant sells collectibles rather than
toys and that the registrant used the word
"toy" as synonymous with the word
"miniature". The word "[M]int" in the
registrant’s name also suggests that the
registrant is a seller of collectibles rather
than toys. Note that the names of two of the
collectible marketers referenced in
Applicant’s Affidavit contain the word
"[M]int" and that the name of another
collectible marketer also referenced in
Applicant’s Affidavit contained the word
"[C]ollections" as does the registration [for
the mark] "Happy Memories Toddler Collection"
by Heritage Mint, Ltd.
Ser. No. 74/684,146
6
The Examining Attorney, on the other hand, correctly
notes that it is well settled that the issue of likelihood of
confusion must be determined on the basis of the goods as they
are set forth in the involved application and cited
registrations. See, e.g., CBS, Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). Furthermore, as the Examining Attorney
also accurately points out, where the cited registrations
describe the goods broadly and there are no limitations as to
their nature, type, channels of trade or class of purchasers, it
must be presumed that the goods encompass all goods of the nature
and type described therein, that they move in all channels of
trade which would be normal for such goods and that they would be
purchased by all potential buyers thereof. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, in the present
case, the cited registrant’s goods encompass "miniature toys" of
all types and specifically include such doll accessories as doll
houses and other kinds of playthings for use with dolls such as
miniature dishes, living-room suites, bedroom suites, dining-room
sets, rockers, chairs, davenports, desks, dressers, tables, beds
and other toy furniture.
To support her position that "those who sell dolls,
doll clothes, doll shoes, doll hats and doll story cards ... also
Ser. No. 74/684,146
7
sell related miniature toys," the Examining Attorney has made of
record the following evidence:
(i) Over a dozen use-based third-party
registrations for marks which, in each
instance, are registered for dolls, including
porcelain and collectors’ dolls, and such
doll accessories as doll houses;
(ii) Almost a dozen use-based third-
party registrations for marks which, in each
case, are registered for dolls or collectible
porcelain dolls, on the one hand, and toy
furniture or doll furniture on the other
hand;7 and
(iii) Nearly a dozen use-based third-
party registrations for marks which,
generally speaking, are registered for dolls,
doll houses and/or other doll accessories and
such diverse toys as toy vehicles, toy boats,
caps for toy pistols, toy dishes, toy
airplanes, toy guns, toy telephones, toy
whistles, toy rockets, toy cars, toy trucks,
toy motorcycles, toy train sets, noise
makers, construction equipment, plastic
cookware play sets, plastic baking sets
and/or plastic miniature cars.8
The Examining Attorney has also made of record dictionary
definitions from Webster’s New Collegiate Dictionary (1979),
which at 335 defines "doll" as "a small-scale figure of a human
being used esp. as a child’s plaything" and at 1227 lists "toy"

7Such group includes the registration, specifically addressed by
applicant, of the mark "HAPPY MEMORIES TODDLER COLLECTION" by Heritage
Mint, Ltd. for "collectible porcelain dolls, toy furniture and toy
wagons".
8 It is settled that while third-party registrations are not evidence
that the different marks shown therein are in use or that the public
is familiar with them, they nevertheless have some probative value to
the extent that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source. See, e.g., In
re Albert Trostel & Sons Co. Inc., 29 USPQ2d 1783, 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470
(TTAB 1988) at n. 6.
Ser. No. 74/684,146
8
as, inter alia, "something for a child to play with" and
"something diminutive".
Like applicant’s doll clothes, shoes, hats and story
cards, there is no doubt that registrant’s miniature toy doll-
houses are doll accessories and, as such, are closely related to
applicant’s goods, including its dolls. As identified in the
application, applicant’s goods are not restricted to collectible
porcelain dolls and accessories therefor and, thus, include the
types of toy dolls for which registrant’s miniature toy doll-
houses would constitute an accessory. Moreover, even if
applicant had restricted the identification of its goods to
collectible porcelain dolls and accessories for such dolls,
registrant’s miniature toy doll houses likewise would include
those which constitute collectors’ items. In addition, the
third-party registrations demonstrate that it is common for
dolls, including porcelain and collectors’ dolls, to come from
the same sources as do such doll accessories as doll houses. It
is plain, therefore, that contemporaneous use of the mark
"TOOTSIE" for goods broadly identified as "dolls, doll clothes,
doll shoes, doll hats and doll story cards" and the substantially
similar mark "TOOTSIETOY" for miniature toy doll-houses would be
likely to cause confusion as to source or sponsorship.
Furthermore, the third-party registrations, when read
in light of the commonly understood meanings of the words "doll"
and "toy," also establish that not only do those who produce or
market dolls, including collectible porcelain dolls, offer doll
or other toy furniture, but that makers or sellers of dolls, doll
Ser. No. 74/684,146
9
houses and other doll accessories additionally provide, like the
cited registrant, a wide range of such toy products as
automobiles (including plastic miniature cars), trucks and other
vehicles, airplanes, boats, trains, noise makers (including
whistles), firearms and dishes. In particular, it is plain by
the very nature of the cited registrant’s miniature toy dishes
and items of miniature toy furniture that such goods would often
be used, just like doll accessories, for play by children with
their dolls. Moreover, the third-party registrations show that
toy dishes, toy furniture and the other additional toy items
mentioned above, including toy vehicles, are all the kinds of toy
products or playthings which the purchasing public has become
conditioned to expect to be manufactured or marketed by the same
entities which also offer toy dolls and/or doll accessories, such
as doll houses.
Purchasers, therefore, who are familiar or otherwise
acquainted with the line of miniature toys and novelties sold by
the cited registrant under the "TOOTSIETOY" mark could reasonably
believe, upon encountering dolls, doll clothes, doll shoes, doll
hats and doll story cards marketed by applicant under the
substantially similar mark "TOOTSIE," that the latter products
constitute a related line of goods from the cited registrant.
Such an association would be especially likely inasmuch as the
cited registrant’s miniature toys and novelties, which by their
very nature require less space for display or storage, are
particularly suitable as collectors’ items.
Decision: The refusal under Section 2(d) is affirmed.
Ser. No. 74/684,146
10
E. J. Seeherman
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board