Roure & Roure, LLC

Trademark Trial and Appeal Board

Dec 18, 2018

EX (T.T.A.B. Dec. 18, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Roure & Roure, LLC
_____

Serial No. 87684091
_____

Gene Bolmarcich of Law Offices of Gene Bolmarcich,
for Roure & Roure, LLC.
Parker Howard, Trademark Examining Attorney, Law Office 117,
Travis Wheatley, Managing Attorney.
_____

Before Ritchie, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Roure & Roure, LLC (“Applicant”) seeks registration on the Principal Register of
the mark shown below

for “filters for drinking water; filters made of fiber for water filtration; water filtering
apparatus; water filters; apparatus for filtering drinking water,” in International
Class 11; and “drinking bottles for sports; insulating sleeve holder for bottles;
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neoprene zippered bottle holders; plastic water bottle holders and attached carabiner
clip sold as a unit; portable beverage container holder; reusable stainless steel water
bottles sold empty; sports bottles sold empty; vacuum bottles; vacuum bottles; water
bottles sold empty,” in International Class 21.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered mark GO FRESH BY KINETIC in standard characters
for “thermally insulated containers for food; lockable non-metal household containers
for food; household containers for foods; thermal insulated containers for food or
beverages; household storage containers for pet food,” in International Class 21,2 as
to be likely, when used on or in connection with the goods identified in the application,
to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed.
Applicant and the Examining Attorney have filed briefs. We affirm the refusal to
register as to the goods in Class 21 and reverse the refusal to register as to the goods
in Class 11.
I. Record on Appeal
The record on appeal consists of Internet webpages showing the sale, under the
same mark, of one or more of the goods identified in the application and one or more

1 Application Serial No. 87684091 was filed on November 14, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
2 Registration No. 5315827 issued on the Principal Register on October 24, 2017.
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of the goods identified in the cited registration, made of record by the Examining
Attorney,3 and the specimen of use submitted in connection with the cited
registration, made of record by Applicant.4
II. Likelihood of Confusion Analysis
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is evidence or argument. See, e.g., M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.
GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).
Two key factors in every § 2(d) case are the similarity or dissimilarity of the marks
and goods, because 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). The Examining Attorney discusses both of these

3 March 2, 2018 Office Action at 5-16.
4 March 8, 2018 Response to Office Action at 9. The record also includes what Applicant
described as a “summary of other TTAB cases where the differences in the connotation of the
marks alone was determinative in finding no likelihood of confusion.” Id. at 7, 10-17.
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factors, 6 TTABVUE 4-8,5 while Applicant focuses on the differences between the
marks. 4 TTABVUE 3-4.6
A. Similarity or Dissimilarity of the Marks
The first du Pont factor is “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).7 “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 between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). “‘[S]imilarity is not a binary factor but is a matter of degree.’” In
re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting
In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)).

5 The Examining Attorney also discusses the third du Pont factor regarding channels of trade
in the context of the similarity of the goods. 6 TTABVUE 8.
6 Applicant discusses the goods only to the extent that they bear on the claimed differences
in the marks. 4 TTABVUE 4.
7 Applicant argues broadly that “the marks at issue look different, sound different and most
importantly have very different meanings and overall commercial impressions,” 4 TTABVUE
3, but Applicant focuses on the claimed differences in meaning and commercial impression.
Id. at 3-4.
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1. Appearance
Applicant describes its mark

as “the stylized wording ‘GOFRESH’ where the ‘G’ and ‘F’ feature arrow designs.”
The design elements of Applicant’s mark are modest, being both small and mere
features of the letters, and the words “GoFresh” are thus the portion of the mark
“‘most likely to indicate the origin of the goods to which it is affixed.’” In re Viterra,
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).
The cited mark GO FRESH BY KINETIC is a standard character mark, which
“may be used in ‘any particular font style, size, or color,’” In re Aquitaine Wine USA,
LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (quoting Trademark Rule 2.52(a), 37
C.F.R. § 2.52(a)), “including the same font style, size and color as the literal portions
of Applicant’s mark.” Id. We thus must assume that the words GO FRESH in the
cited mark could be displayed in the same style as their counterparts in Applicant’s
mark. Id.
Both marks are dominated by the identical words GO FRESH. We may consider
the actual use of the cited mark “in visualizing other forms in which the mark may
be used.” Citigroup Inc. v. Capital Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1259 (Fed. Cir. 2011). The registrant’s specimen of use displays the words Go and
Fresh with initial capital letters that are larger than the lowercase letters that
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follow,8 in a manner reminiscent of the words GO and FRESH in Applicant’s mark,
and the words BY KINETIC appear beneath the words GO FRESH in different and
smaller type, in a manner that serves to deemphasize the words BY KINETIC. The
words GO FRESH are the literal portion of Applicant’s mark, and they appear first
in the four-word cited mark. “[I]t is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imps.,
73 USPQ2d at 1692.
Although the cited mark contains the additional wording BY KINETIC, “the
presence of an additional term in the mark does not necessarily eliminate the
likelihood of confusion if some terms are identical.” In re Mighty Tea Leaf, 601 F.3d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board’s conclusion that the
marks ML and ML MARK LEES (stylized) were confusingly similar). It is self-evident
from the structure of the cited mark that the word KINETIC is a house mark, and
the mere addition of a house mark has often been found to be insufficient to
differentiate otherwise identical marks. See, e.g., Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (affirming
Board’s finding that STONE LION CAPITAL was confusingly similar to LION and
LION CAPITAL); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986)
(affirming refusal to register stylized SPARKS BY SASSAFRAS mark due to
confusing similarity with registered stylized SPARKS mark). Taking into account

8 March 8, 2018 Response to Office Action at 9.
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“the fallibility of memory,” St. Helena Hosp., 113 USPQ2d at 1085, the possible
displays of the cited mark discussed above, and the fact that marks are not compared
side-by-side, In re i.am.symbolic, llc, 127 USPQ2d 1627, 1631 (TTAB 2018),
Applicant’s mark is likely to be viewed as a shortened variation on the cited mark.
Mighty Tea Leaf, 94 USPQ2d at 1260; In re SL&E Training Stable Inc., 88 USPQ2d
1216, 1219 (TTAB 2008) (holding that consumers viewing the registrant’s mark
EDELMAN may view it as an abbreviated form of the applicant’s mark SAM
EDELMAN). We find that Applicant’s stylized GOFRESH mark is similar in
appearance to the cited standard character mark GO FRESH BY KINETIC.
2. Sound
The dominant words GO FRESH in the marks are identical in sound when the
marks are verbalized. If the entire cited mark GO FRESH BY KINETIC is spoken
when consumers refer to the registrant’s goods, despite “the penchant of consumers
to shorten marks,” In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB
2016), there would be modest differences in sound between the two marks, but they
are outweighed by the identical sound of their dominant portions GO FRESH. In any
event, because KINETIC is an obvious house mark, the words BY KINETIC would
not be distinguishing even though they are absent from Applicant’s mark. We find
that the marks are similar in sound.
3. Connotation and Commercial Impression
With respect to the meaning of the two marks, Applicant argues that the “literal
portion of Applicant’s Mark, ‘GOFRESH’, when encountered by consumers on
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Applicant’s beverage bottles . . . and filters for the same . . . conveys the meaning
‘choose to have fresh (i.e. clean) water,”9 while “‘GO FRESH BY KINETIC’, when
encountered by consumers on the food storage products it is registered for, conveys
the meaning of ‘not stale’ (i.e. ‘fresh’) food, and is a ‘play’ on the term ‘GO STALE’ (i.e.
the opposite of what happens when food is stored in registrant’s goods).” 4 TTABVUE
4. Applicant further argues that “the term ‘GO FRESH’ is at most highly suggestive
of registrant’s and Applicant’s goods and, as such, it should not be given a broad scope
of protection” because to do so “effectively allows registrant to prevent others from
communicating the concept of ‘freshness’” in all of the ways ‘Go Fresh’ might have a
different meaning on the goods on which the mark is encountered by consumers.” Id.
The Examining Attorney responds that the cited mark could “give the commercial
impression of going about with containers that keep food fresh in terms of being cold
or hot when put in the container (like ice cream or soup) and/or not exposed to the
elements, germs or insects,” while Applicant’s mark “can give the commercial
impression of involving liquid containers (not just for water) and accessories therefor
for going about with fresh liquids (e.g., water, sports drinks, coffee, etc.) filtered (or
not),” which “prolong the freshness or state of the liquid in terms of prolonging cold

9 Applicant requests “that the Board take judicial notice of this use of ‘GO’ in general
discourse, as in the terms ‘Go Green’ and ‘Go Vegan.’” 4 TTABVUE 4 n.1. We deny this
request because the claimed uses of these terms “in general discourse” are not appropriate
matters for judicial notice under Rule 201(b) of the Federal Rules of Evidence. Cf. Boswell v.
Mavety Media Grp. Ltd., 52 USPQ2d 1600, 1608 (TTAB 1999) (declining to take judicial
notice, “based on ‘common experience,’ of ‘dirty talk’ that is used only when males are present”
to establish vulgar meaning of “tail” because “the experiences that opposers refer to . . . do
not constitute the kind of indisputable facts that are contemplated by Rule 201 of the Federal
Rules of Evidence” and holding that if “opposers had wanted to make evidence of this kind of
word usage of record, they could easily have done so through testimony.”).
Serial No. 87684091
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drinks being cold, hot drinks being hot, carbonated drinks being carbonated, and/or
liquids not being exposed to the elements, germs or insects.” 6 TTABVUE 9. He also
notes that the goods identified in the cited registration include “thermal insulated
containers for . . . beverages,” and thus registrant’s mark “can give the identical
commercial impression as posited by applicant for its liquid containers.” Id.
Applicant’s argument that the identical words GO FRESH have different
meanings in the two marks is not supported by the record and also assumes a level
of subtlety of consumer perception that is inconsistent with “the proper focus . . . on
the recollection of the average consumer, who retains a general rather than specific
impression of the marks.” Aquitaine Wine USA, 126 USPQ2d at 1184. The average
consumer of the identified goods is a member of the general public. The words “go”
and “fresh” are common English words, and when they are combined in the directive
GO FRESH in the marks, the average consumer of the identified goods, with a
general impression of the marks, would understand GO FRESH to have the same
general meaning in both marks of preserving or promoting the “fresh” or unspoiled
state of foods and beverages. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247
(TTAB 2010) (the word MAX is a recognized slang abbreviation for the English word
“maximum” and would have the same meaning in both marks for insurance
services).10

10 Applicant cites three precedential cases in support of its argument that an identical mark
used by different parties may be perceived as having different meanings when used with
different goods. 4 TTABVUE 3-4. It is axiomatic that each case must be decided on its own
facts and “past decisions on confusing similarity are of little assistance in new fact situations
wherein entirely different marks and products are involved.” Medicated Prods. Co. v. Alice
Jewelry Co., 255 F.2d 408, 118 USPQ 90, 91 (CCPA 1958). The cited cases provide no aid to
Serial No. 87684091
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Applicant also argues that “the term “GO FRESH’ is at most highly suggestive of
registrant’s and Applicant’s goods and, as such, it should not be given a broad scope
of protection . . . .” 4 TTABVUE 4. There is no evidence of third-party use or
registration of GO FRESH-formative marks that might suggest that GO FRESH has
“‘a normally understood and well recognized descriptive or suggestive meaning,
leading to the conclusion that [it] is relatively weak.’” Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting 2
MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 11:90 (4th ed. 2015)). The cited
registration of GO FRESH BY KINETIC issued without a requirement of a showing
of acquired distinctiveness, or a disclaimer of the word FRESH,11 and the mark is
entitled to the normal scope of protection to which inherently distinctive marks are
entitled in the absence of other evidence of the strength or weakness of the mark.
Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1347 (TTAB 2017). But

us here because of the different marks and goods in those cases. See In re Sears, Roebuck &
Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (CROSS-OVER for bras and CROSSOVER for ladies’
sportswear differed in meaning because “CROSS-OVER” was suggestive of the construction
of bras, while “CROSSOVER” for sportswear was “likely to be perceived by purchasers either
as an entirely arbitrary designation, or as being suggestive of sportswear which ‘crosses over’
the line between informal and more formal wear . . . or the line between two seasons"); In re
British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (PLAYERS for men’s underwear and
PLAYERS for shoes differed in meaning because PLAYERS implied a fit, style, color, and
durability suitable for outdoor activities when applied to shoes, but “implie[d] something else,
primarily indoors in nature” when applied to men’s underwear); In re Sydel Lingerie Co., 197
USPQ 629, 630 (TTAB 1977) (BOTTOMS UP for ladies’ and children’s underwear and
BOTTOMS UP for men’s clothing differed in meaning because the wording connoted the
drinking phrase “Drink Up” when applied to men’s clothing, but not when applied to ladies’
and children’s underwear). The inherent differences between foods and beverages have
nothing to do with the meaning of GO FRESH when used for containers for those goods; that
meaning is highly similar in both instances.
11 March 2, 2018 Office Action at 2.
Serial No. 87684091
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even assuming that GO FRESH is highly suggestive as applied to the goods, and that
the cited mark should be given slightly narrower protection as a result, we have found
above that the words have essentially the same meaning in both marks, and the
relative weakness of GO FRESH does not render the marks less similar in meaning.
We find that the marks are similar in connotation and commercial impression
when considered in their entireties. Because they are also similar in appearance and
sound, they are similar in all relevant means of comparison, and the first du Pont
factor supports a finding of a likelihood of confusion, particularly with respect to the
Class 21 goods in the application and registration, which we find below to be legally
identical in part. See, e.g., Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“[w]hen marks would appear on
virtually identical goods or services, the degree of similarity [between the marks]
necessary to support a conclusion of likely confusion declines.”).
B. Similarity or Dissimilarity of the Goods
The second du Pont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration.” Stone Lion, 110
USPQ2d at 1159. The analysis under this factor is premised on the identifications of
goods in the application and in the cited registration. Id. at 1161-63; Octocom Sys.,
Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). “[L]ikelihood of
confusion can be found ‘if the respective goods are related in some manner and/or if
the circumstances surrounding their marketing are such that they could give rise to
Serial No. 87684091
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the mistaken belief that they emanate from the same source.’” Coach Servs., 101
USPQ2d at 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). Like the similarity of the marks, the similarity of the goods is a
matter of degree. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1992).
The Class 11 goods identified in the application are:
Filters for drinking water; filters made of fiber for water
filtration; water filtering apparatus; water filters;
apparatus for filtering drinking water
The Class 21 goods identified in the application are:
Drinking bottles for sports; insulating sleeve holder for
bottles; neoprene zippered bottle holders; plastic water
bottle holders and attached carabiner clip sold as a unit;
portable beverage container holder; reusable stainless steel
water bottles sold empty; sports bottles sold empty;
vacuum bottles; vacuum bottles; water bottles sold empty.
The goods identified in the cited registration are:
Thermally insulated containers for food; lockable non-
metal household containers for food; household containers
for foods; thermal insulated containers for food or
beverages; household storage containers for pet food.
The refusal to register may be affirmed as to a particular class if there is a likelihood
of confusion with respect to any of the goods in that class. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); FabFitFun,
127 USPQ2d at 1672.
Serial No. 87684091
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Applicant acknowledged during prosecution that the goods in its application and
the goods in the cited registration are “somewhat related,” though not identical,12 and
Applicant “has not disputed in its appeal brief that the parties’ goods are related.” 6
TTABVUE 10.13 While Applicant’s admission of a degree of similarity is relevant,
given Applicant’s equivocation, the Examining Attorney still bears the burden of
establishing a relationship between the goods with evidence.
We turn first to the identifications of goods. The Class 21 goods identified in the
application include “drinking bottles for sports,” “reusable stainless steel water
bottles sold empty,” “sports bottles sold empty,” “vacuum bottles,” and “water bottles
sold empty.” These broad and unrestricted identifications are “deemed to encompass
‘all the goods of the nature and type described therein . . . .’” In re Solid State Design
Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump Designs LLC, 80
USPQ2d 1370, 1374 (TTAB 2006)). These various forms of bottles encompass thermal
insulated ones, and thus they encompass the goods identified in the cited registration
as “thermal insulated containers for . . . beverages.”14 These sets of goods from the
application and registration are thus legally identical.

12 March 8, 2018 Response to Office Action at 7.
13 As noted above, Applicant discusses the goods only to the extent that they bear on the
claimed different commercial impressions of the marks.
14 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 form or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial notice
that a “bottle” is “a glass or plastic container for liquids, usually with a narrow part at the
top that is called the neck” and a “container” is “something used for storing or holding things,
for example a box, bottle, or bowl.” MACMILLAN DICTIONARY (macmillandictionary.com, last
accessed on December 17, 2018).
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The Examining Attorney argues that the goods are related “because they are (1)
commonly manufactured and sold together under the same mark (e.g., Thermos,
Stanley, Hydro Flask), (2) commonly sold together by the same retail sources, and (3)
similar and complementary in purpose or function” because “the parties’ goods both
involve containers for preserving food and liquids (whether cold, hot or room
temperature) for later use.” Id.
With respect to the Examining Attorney’s first argument, the three cited examples
are all of the uses in the record. They show use of the THERMOS mark on an
insulated food jar, a replacement filter for portable filtered hydration bottles, a water
filtration bottle, and a steel hydration bottle;15 use of the STANLEY mark on a
vacuum insulated food jar, a replacement filter cartridge for a skimmer, and a steel
water bottle;16 and use of the HYDROFLASK mark on a vacuum water bottle, a water
bottle holder, and a food flask.17 Evidence that different goods are offered under the
same mark can be probative of the relatedness of the goods. In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Here, there are three examples of use of
the same mark for both food containers and water bottles, but only one clear example
of use of the same mark for both food containers and one of the Class 11 water
filtration goods identified in the application.18

15 March 2, 2018 Office Action at 5-8.
16 Id. at 9-11.
17 Id. at 12-16.
18 The replacement filter cartridge sold under the STANLEY mark and the subsidiary mark
PoolTec appears to be intended for use in a swimming pool filter. March 2, 2018 Office Action
at 10. Three of Applicant’s Class 11 goods, “filters made of fiber for water filtration,” “water
filtering apparatus,” and “water filters,” are not specific to the filtration of drinking water,
Serial No. 87684091
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The Examining Attorney’s use evidence supports the relatedness of bottles and
food containers, but it does not support the relatedness of food containers and water
filtration goods, particularly because it is not augmented by other evidence, much
less the Examining Attorney’s claim that food containers and water filtration goods
are “commonly manufactured and sold together under the same mark.” 6 TTABVUE
10.
The Examining Attorney’s second argument for relatedness is that the “goods are
sold or provided through the same channels of trade and used by the same classes of
consumers . . . since consumers of water bottles, water filters and insulated food jars
can obtain these products and their accessories from the same retail sources (i.e.,
Amazon.com and REI.com).” 6 TTABVUE 8. The channels of trade for the goods
involves the third du Pont factor, not the second, and where, as here, the goods are
legally identical in part, they are “‘presumed to travel in the same channels of trade
to the same class of purchasers.’” Viterra, 101 USPQ2d at 1908 (quoting Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002)). We do not find the Examining Attorney’s argument persuasive in any event.
A very wide variety of goods is sold through amazon.com, as evidenced by the
website’s masthead on each webpage in the record:

and, as discussed above, these goods are deemed to encompass all the goods of the nature and
type described therein. Solid State Design, 125 USPQ2d at 1413. Even assuming, however,
that these filtration goods, as described, encompass pool filters, the STANLEY mark is not
used for a pool filter per se, but rather for a component.
Serial No. 87684091
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19
The masthead of the rei.com website, which is the channel of trade for one pair of
bottles and food containers, similarly suggests that a wide variety of goods is sold by
that company:
20
The Board has long recognized that “[n]ot everything that is sold by a large retail
establishment selling a plethora of otherwise unrelated goods is necessarily
connected, within the meaning of §2(d) of the Act, to every other product that happens
to be displayed or offered under the same roof,” Sheller-Globe Corp. v. Scott Paper
Co., 204 USPQ 329, 335 (TTAB 1979), and that principle applies with equal force to
online retailers. The mere fact that some of the goods identified in the application
and registration are available through common online channels of trade in which a
host of other goods are also sold does not show that the identified goods are related.
The Examining Attorney’s final argument for relatedness is that the Class 21
goods “are similar or complementary in terms of purpose or function since registrant’s
insulated food jars are meant to keep food cold or hot for later use and applicant’s
products include insulated and non-insulated bottles for keeping beverages for later

19 March 2, 2018 Office Action at 5-11.
20 Id. at 12-16.
Serial No. 87684091
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use.” 6 TTABVUE 8.21 According to the Examining Attorney, the “vacuum bottles”
identified in the application “are not limited to liquids and thus could encompass
registrant’s ‘thermally insulated containers for food’ and ‘thermal insulated
containers for food or beverages.’” Id. at 8. As discussed above, the several types of
bottles identified in the application and the “thermal insulated containers for . . .
beverages” identified in the registration are legally identical. In addition, the
inherent nature of bottles and food containers is such that they are functionally
similar in purpose, and could be used together to preserve food and beverages. We
agree with the Examining Attorney that the functional similarity of the food and
beverage containers identified in the application and registration supports a finding
that those goods are related.
Taken together, the legal identity of the Class 21 goods in part, the evidence of
several uses of the same mark for food containers and water bottles, and the
functional similarity and complementarity of those goods, are sufficient to show that
the Class 21 goods in the application and registration are “related in some manner.”
Coach Servs., 101 USPQ2d at 1722. Accordingly, the second du Pont factor supports
a finding of a likelihood of confusion as to Class 21 in the application. On the other
hand, a single instance of the sale of a drinking water filter and a food container
under the same mark, unaccompanied by other evidence and otherwise unsupported
by the identifications of goods themselves, is simply insufficient to show that any of

21 The Examining Attorney makes no specific argument that water filtration goods and food
containers are similar in purpose or complementary in use.
Serial No. 87684091
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the Class 11 goods in the application are related to any of the goods in the
registration. The second duPont supports a finding of no likelihood of confusion as to
the Class 11 goods in the application.
C. Conclusion
The marks are similar in appearance, sound, connotation, and commercial
impression. Because the record shows that the Class 21 goods in the application and
registration have been sold under the same marks and are legally identical in part
and functionally similar in purpose and use, “the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source” when sold under the similar marks here. Coach Servs., 101
USPQ2d at 1722. Because the record and the identifications of goods do not show that
any of the Class 11 goods in the application are related to any of the goods in the cited
registration, the dissimilarity of those goods makes confusion unlikely
notwithstanding the similarity of the marks.
Decision: The refusal to register as to the goods in Class 21 is affirmed. The
refusal to register as to the goods in Class 11 is reversed.