Skechers U.S.A., Inc. II

Trademark Trial and Appeal Board

Jan 3, 2013

No. 85148348 (T.T.A.B. Jan. 3, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 3, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Skechers U.S.A., Inc. II
_____

Serial Nos. 85148348, 85148374 and 85148406
_____

Marshall A. Lerner of Kleinberg & Lerner, LLP for Skechers U.S.A., Inc. II.

Geoffrey Fosdick, Trademark Examining Attorney, Law Office 111 (Robert L.
Lorenzo, Managing Attorney).
_____

Before Holtzman, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Skechers U.S.A., Inc. II filed applications to register on the Principal Register
the mark TWINKLE TOES, in standard character form,1 and the word and design
mark set forth below:2

1 Application Serial No. 85148348, filed under Trademark Act § 1(b), 15 U.S.C. §1051(b), on
October 8, 2010.
2 Application Serial No. 85148406, filed under Trademark Act § 1(b), 15 U.S.C. §1051(b), on
October 8, 2010.
Serial Nos. 85148348, 85148374, and 85148406

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In each case, registration of the mark is sought for the following services:
Distribution of sample chapters and excerpts from books
for publicity purposes; providing information pertaining
to books, literary works, and authors for advertising and
sales purposes, all by means of a global computer
network, International Class 35; and
Book publishing, entertainment services relating to books,
authors, author events, reading groups and book clubs,
namely, providing electronic publications in the nature of
online newsletters and online book club companion
magazines in the field of education, animation and
children's entertainment; providing online reviews and
articles about books and authors; providing information
about authors and their works and publishing, all by
means of a global computer information network, in
International Class 41.
Applicant filed a third application3 to register the same word and design mark
shown above on the Principal Register for the following goods:
Action figures and accessories; action skill games; plush
toys; balloons; bath toys; christmas tree ornaments; board
games; toy building blocks; playing cards; dolls and doll
clothing; doll playsets; crib toys; manipulative games;
jigsaw puzzles; kites; music box toys; party favors in the
nature of small toys; inflatable pool toys; disc-type toss
toys; toy vehicles; model toy cars; hand-held units for
playing video games other than those adapted for use
with an external display screen or monitor; musical toys;
modeled plastic toy figurines; toy banks; puppets; yo-yos;

3 Application Serial No. 85148374, filed under Trademark Act § 1(b), 15 U.S.C. §1051(b), on
October 8, 2010.
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toy scooters; talking toys; bubble making wands and
solution sets; model toy trucks, in International Class 28.
The trademark examining attorney refused registration as to all three
applications under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s marks, as used or intended to be used in connection with
applicant’s goods and services, so resemble the mark TWINKLE TOES, which is
registered on the Principal Register in standard character form for “series of books
for children; children’s activity books; children’s books; children’s storybooks; song
books,”4 in International Class 16, as to be likely to cause confusion, or to cause
mistake, or to deceive. When the refusals were made final, applicant appealed. In
connection with each case under appeal, applicant and the examining attorney have
filed their respective appeal briefs, and applicant has filed a reply brief.
1. Proceedings Consolidated.
The issues raised by the three above-noted appeals are identical in part and
otherwise highly similar. The briefs and evidentiary record in all cases are in large
part identical and are otherwise highly similar. Accordingly, the Board will address
all three appeals in a single opinion. Citations to the briefs refer to the briefs filed
with respect to application Serial No. 85148348 unless otherwise noted. We have, of
course, considered all arguments and evidence filed in each case, including any
arguments and evidence not specifically discussed in this decision.

4 Reg. No. 3261904, issued on July 10, 2007.
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2. Discussion.
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). In this case, the applicant and
the examining attorney have also submitted evidence regarding the classes of
customers, relevant trade channels, the strength of the cited registered mark, and
the number of other similar marks in the marketplace.
We turn first to the similarity or dissimilarity of the marks as to appearance,
sound, connotation and commercial impression. Du Pont, 177 USPQ at 567.
A. Applicant’s standard character mark.
Applicant’s mark set forth in application Serial No. 85148348 is identical to
the cited registered mark; that is, each mark is TWINKLE TOES in standard
character form. In the ultimate analysis as to likelihood of confusion, the identity of
the marks will weigh heavily against applicant. Applicant argues that “Even marks
that are identical in sound and/or appearance may create sufficiently different
meanings and commercial impressions when applied to the respective parties’ goods
and services…,” and asserts that applicant’s mark “evokes a young female
character” that is portrayed in applicant’s advertising and entertainment
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materials.5 Considering the mark’s reference to “toes,” the mark may well be
interpreted as the name of a fictional character, as applicant suggests, or as the
name of some other person or creature that has “toes.” However, this interpretation
applies to the cited registered mark as well as it applies to applicant’s mark.
Indeed, the evidence of record indicates that the registrant’s mark has been used as
the name of a character, in particular “a cat named TWINKLE TOES who walks on
her toes.”6 Even assuming that the marks are intended to create the impression of
a name of a fictional character, this factor indicates greater similarity, not
dissimilarity, between the marks. There is nothing in the designation TWINKLE
TOES that could possibly indicate which of the two characters it identifies. Viewed
in their entireties, the two marks are identical in appearance, sound, meaning and
commercial impression. We see little reason to view the two marks as anything
other than identical in all respects.
B. Applicant’s Word and Design Mark.
Applicant’s mark set forth in Serial Nos. 85148374 and 85148406
(“applicant’s word and design mark”) combines the wording TWINKLE TOES with
a design depicting “a child waving while holding a rabbit,” together with various
circular, oval, and star-shaped design elements.7 In the case of marks consisting of
words and a design, the words are normally given greater weight because they
would be used by consumers to request the products. In re Viterra Inc., 671 F.3d

5 Applicant’s brief at 9.
6 Applicant’s brief at 10; and Exhibit 8 filed with applicant’s response filed August 15, 2011.
7 See the description of the mark set forth in the applications.
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1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553,
1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). We must, of course,
consider the marks at issue in their entireties. However, 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., 224 USPQ
at 751. The word portion of applicant’s word and design mark is identical to the
cited mark, which is registered in standard character form.
Applicant argues:
“Words… do not always dominate over design features….”
[citing In re Elbaum, 211 USPQ 639, 641 (TTAB 1981)] …
“The design, particularly if prominent… may
dominate….” [citing Richard L. Kirkpatrick, LIKELIHOOD
OF CONFUSION IN TRADEMARK LAW § 4:9.2 (2006)] … In
this instance, the design is the dominant part of
Applicant’s Mark, and it is much more conspicuous then
[sic] the word portion. The design element of Applicant’s
Mark makes the first and greatest visual impact on the
consumer. Not only does the design come first in the
mark, but its unique image of a child waving while
holding a rabbit makes it impossible to ignore.
Applicant’s brief (85148374) at 10-11.
It is true that words do not always dominate over design features. However,
we are not persuaded by applicant’s argument for the dominance of the design over
the words in applicant’s word and design mark. The present case is not similar to
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In re Electrolyte Laboratories Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990),
where designs were found to dominate over the literal portions of the marks because
the literal portions were descriptive or generic, having little source-indicating
power. To the contrary, the designation TWINKLE TOES is an arbitrary
designation and, as such, has strong inherent source-indicating power with respect
to the goods and services of both applicant and the cited registrant. Moreover, the
primary rationales for treating the literal portion of a mark as the dominant portion
are applicable in this case: the wording TWINKLE TOES would be used by
customers in orally requesting the goods and services, and the wording TWINKLE
TOES, without design, would most likely be used in textual materials in order to
identify applicant’s goods and services. See In re Viterra, 101 USPQ2d at 1911; In
re Dakin’s Miniatures, Inc., 59 USPQ2d at 1596; CBS Inc. v. Morrow, 708 F.2d
1579, 1582, 218 USPQ 198, 200 (Fed. Cir. 1983). We do not perceive any way in
which the design may be said to “come first in the mark,” as applicant contends. We
do not find the size of the lettering to be so “much smaller”8 than the design as to
compromise the dominance that wording usually has over designs. Nor do we find
the design elements of applicant’s mark so strikingly unusual as to achieve
dominance over the wording. Images of a young girl, a bunny, and stars are well
within the range of juvenile-oriented imagery that one would expect to see in
connection with goods and services (whether those of applicant or of registrant) that
are marketed to children.

8 Applicant’s brief (85148374) at 12.
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In comparing applicant’s word and design mark to the cited mark, which is in
standard character form, we bear in mind that a standard character mark is not
limited to any particular font, size, style, color, or other graphic presentation. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010). The rights
associated with a mark in standard characters reside in the wording and not in any
particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). While we do not
assume that registrant’s mark would be displayed with graphic designs that closely
resemble those of applicant, we must consider that registrant’s mark could be
displayed in the same stylized format in which TWINKLE TOES appears in
applicant’s mark. Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“[A] registrant is entitled to depictions of
[its] standard character mark regardless of font style, size, or color.”) In view of the
foregoing, we regard applicant’s word and design mark as highly similar to the cited
registered mark.
We will turn now to consider the similarities and differences between the
goods and services of applicant and registrant. Where, as here, the marks at issue
are identical or very similar to the cited registered mark, the degree of similarity
between the parties’ goods and services that is required to support a finding of
likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688-1689 (Fed. Cir. 1993) (“even when the goods or services are not
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competitive or intrinsically related, the use of identical marks can lead to the
assumption that there is a common source”); Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001). It is only necessary that there be a viable relationship between the
two to support a finding of likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The issue here, of course, is
not whether purchasers would confuse the parties’ goods and services, but rather
whether there is a likelihood of confusion as to the source of the goods and services.
In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
C. The services in Serial Nos. 85148348 and 85148406.
Application Serial Nos. 85148348 and 85148406 cover the same services in
International Classes 35 and 41, which are set forth at the opening of this decision.
These services may be briefly described as advertising by means of online
distribution of excerpts from books and information relating to books, literary
works, and authors; providing electronic newsletters and book club companion
magazines in various fields, including “animation and children’s entertainment”;
providing online reviews and articles about books and authors and information
about “authors and their works and publishing.” The two applications discussed in
this section differ only in that one application seeks registration of TWINKLE
TOES in standard character form, and the other seeks registration of the
applicant’s word and design mark.
Applicant’s characterization of its services is enlightening:
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Applicant’s mark is used to appeal to young girls who
enjoy consuming information related to fashion, and in
particular, casual footwear.9
… Applicant’s services are focused on distribution and
publishing of information that appeals to young girls who
enjoy consuming information related to casual footwear.
The service will promote Applicant’s line of casual shoes
to young girls. In particular, the services will facilitate
the marketing of applicant’s shoes to young girls who are
fashion conscious and who relate to the youthful and
trendy nature of the female characters shown in the
advertising materials.10
… Applicant’s services are specifically targeted towards
youthful consumers who enjoy information related to
casual footwear.11
Viewing the identification of services in light of applicant’s explanations set
forth in its brief, it appears that applicant is or intends to be the source of online
“newsletters” and “book club companion magazines.”12 Applicant also intends to
distribute, via the internet, excerpts from books and information about books, but it
is not clear whether the books at issue will be products of applicant. There is
intended to be a commercial connection between these online publishing and
information services, on the one hand, and applicant’s own casual footwear
business, on the other. Apparently, applicant’s publishing and information services
are intended to have an advertising impact upon applicant’s customers. If this
advertising impact is successful, it would presumably promote an interest in

9 Applicant’s brief at 10.
10 Id. at 12.
11 Id. at 20.
12 Although the wording “Book publishing,… namely…” appears in the identification, it is
not clear that providing books will be among applicant’s services.
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applicant’s footwear products among applicant’s customers. These services are
marketed to “young girls” and “youthful consumers.”
While we consider applicant’s characterization of its services for purposes of
helping us understand the nature of those services, we must consider the full scope
of the services that are identified in the application itself for purposes of
determining applicant’s right to registration of its mark. Octocom Syst. Inc. v.
Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
The goods of the cited registrant are “series of books for children; children’s
activity books; children’s books; children’s story books; song books.” Applicant has
submitted evidence to indicate that registrant’s goods may be limited to
“educational materials” featuring “playful animal characters,” and that such goods
are intended only for children up to 7 years of age.13 However, we may not consider
such extrinsic evidence for the purpose of limiting the registrant’s goods, customers,
or channels of trade; rather we must look to the identification of goods set forth in
the registration itself for the purpose of determining the scope of the registrant’s
goods. In re Elbaum, 211 USPQ at 640, citing Kalart Co., Inc. v. Camera-Mart, Inc.,
119 USPQ 139 (CCPA 1958). The registration at issue is limited to goods for
“children,” but not children of any particular age range. The registration is not
limited to “educational materials.” We must presume that the registrant’s
identification of goods “encompasses not only all the goods of the nature and type

13 Applicant’s brief at 10, and Exhibits 7 and 8 filed with applicant’s response of August 15,
2011.
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described therein, but that the identified goods are offered in all channels of trade
which would be normal therefor, and that they would be purchased by all potential
buyers thereof.” In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006).
Applicant’s services are related to registrant’s goods in a number of ways.
The electronic newsletters and book club companion magazines that applicant
distributes are related to children’s books in that they are all reading matter having
a component of children’s entertainment. (Applicant has confirmed in its briefs that
its services are directed to young girls and youthful consumers; and its newsletters
and magazines are identified in the application as being in the field of “children’s
entertainment.”) Similarly, the “chapters and excerpts” of books and the
“information” about books distributed by applicant “for publicity purposes” are
reading matter directed to children. We do not view the advertising component of
applicant’s services, discussed above, as creating a clear distinction between the
nature of applicant’s services and the nature of children’s books. It appears from
the record that young girls’ interest in the entertainment value of applicant’s
“chapters and excerpts,” “information,” “newsletters” and “magazines” would be the
customers’ primary motive in seeking out and selecting applicant’s services. That
the chapters or books are intended for publicity does not detract from their
presumptive entertainment value to their consumers, nor from the fact that they
substitute as reading material. We note also that the identification of applicant’s
“newsletters and… magazines in the field of… children’s entertainment” does not
contain the limitation “for publicity purposes.”
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The likely channels of trade for the services and goods at issue are also
similar. All of applicant’s services are identified as being offered on the internet.
The internet is now a marketplace through which books are offered and delivered to
customers. Books are delivered in electronic form over the internet to users of e-
readers and other electronic devices. Physical books are also commonly marketed
and sold over the internet.14 Such books (whether physical or electronic) may be
expected to include children’s books: much internet content is oriented toward
children,15 and children are currently learning to make use of computers, electronic
devices, and the internet at a very young age. Accordingly, the internet is a normal
channel of trade for goods of the type identified in the cited registration. Applicant
delivers electronic “newsletters,” “magazines,” “chapters and excerpts” of books and
“information” about books over the internet.
The classes of likely customers for the goods and services at issue also
overlap substantially. The ultimate users of children’s books are, of course,
children. Applicant has confirmed that “young girls” and “youthful consumers” are
its target customers, and as applicant’s electronic newsletters and magazines are
“in the field of… children’s entertainment,” we must assume that children are
among the likely customers. As the examining attorney has pointed out, the
parents or other guardians of such children and youthful consumers might also be
an involved class of customers. We have no reason to believe that any of these

14 See Exhibit 2 filed with applicant’s request for remand of April 25, 2012.
15 See Exhibits 7 and 8 filed with applicant’s response of August 15, 2011.
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classes of customers will exercise such a high degree of care as to be immune to
source confusion.
Our analysis indicates that applicant’s electronic newsletters and magazines
in the field of children’s entertainment, as well as applicant’s distribution of
chapters and excerpts of books and information about books, are closely related to
children’s books in nature, classes of customers, and likely channels of trade. In
reaching this determination, we have not relied upon the third-party registrations
that the examining attorney submitted for the purpose of demonstrating that the
respective goods and services of applicant and registrant are of types that may
emanate from the same source.16 As none of those registrations appear to have
been issued on the basis of use of the marks in commerce, they are of little probative
value.
D. The strength of the registered mark.
Applicant argues that the registered mark TWINKLE TOES is weak and
entitled to only a narrow scope of protection, which should not extend so far to
encompass services in Classes 35 and 41.17 As evidence of the weakness of the
mark, applicant has submitted information relating to seven children’s books that
contain the term TWINKLE TOES in their titles.18 These include two such books
by the author Karen Katz. Applicant argues that these book titles may be
considered to be trademarks that dilute and weaken the source-indicating power of

16 Included in the Office action of February 17, 2011.
17 Applicant’s brief at 7-8.
18 Exhibit 1 to applicant’s response filed August 15, 2011 and Exhibit 2 to applicant’s
request for remand of April 25, 2012.
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the registrant’s mark. We do not agree. Under most circumstances, the title of a
book and a trademark perform very different functions. A trademark indicates the
source of goods or services, whereas the title of a book is, in essence, the name
assigned to it by its author; as such it describes the work but in no way indicates
the source of the work. In re Cooper, 254 F.2d 611, 117 USPQ 396, 399-400 (CCPA
1958); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1144 (TTAB 2011). It is
well settled that the title of a single book is not considered a trademark. Cooper,
117 USPQ 396; Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002). Following this principle, we do not perceive trademark use in
five of the book titles identified by applicant, as each is the title of a single work. In
the case of a series of books having titles that share a common element (such as Ms.
Katz’s two books “Twinkle Toes” and “Nutcracker Twinkle Toes”), the common
element might function as a trademark, as illustrated in In re Scholastic Inc., 23
USPQ2d 1774 (TTAB 1992). However, even if we assume that TWINKLE TOES
functions as a mark in the titles of books by Ms. Katz, the existence of a single
third-party use of the mark in the marketplace is not sufficient to show that the
registered mark is weak or entitled to only a narrow scope of protection. For the
reasons discussed, the use of the designation TWINKLE TOES in the titles of the
seven books adduced by applicant is not probative of any weakening of the source-
indicating power of the registrant’s trademark.
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Applicant has also pointed out that candies are sold under the mark
TWINKLE TOES.19 We agree with the examining attorney that this one instance
of trademark use in connection with goods that are relatively dissimilar in nature
from those of the registrant have little diluting effect upon the source-indicating
power of the cited registered mark. See Nat’l Cable Television Ass’n, Inc. v. Am.
Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir.
1991).
E. Conclusion re Serial Nos. 85148348 and 85148406.
Considering all of the evidence of record and the arguments of applicant and
the examining attorney, we find that the use of applicant’s standard character mark
TWINKLE TOES, which is identical to the cited registered mark, in connection with
the services identified in application Serial No. 85148348, would be likely to give
rise to confusion, mistake or deception vis-à-vis the registered mark as applied to
the goods identified in the cited registration.
Similarly, we find that the applicant’s word and design mark shown in
application Serial No. 85148406 so closely resembles the cited registered mark as to
cause confusion, mistake or deception as to the source of applicant’s services.
F. Serial No. 85148374.
Application Serial No. 85148374 seeks registration of the same word and
design mark set forth in Serial No. 85148406. Our discussion of that mark in
comparison to the cited registered mark, as set forth in part 2(B) above, concluded

19 Applicant’s brief at 14, and Exhibit 3 to applicant’s request for remand of April 25, 2012.
The goods are apparently lollipops in the shape of human feet.
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that applicant’s word and design mark is highly similar to the cited registered
mark, inasmuch as the literal portion of applicant’s word and design mark is
identical to the registered mark and the design elements of applicant’s word and
design mark are not sufficiently unusual or distinctive as to be perceived as the
dominant source-indicating feature of the mark.
In the present case, the applicant presented arguments and evidence that are
virtually identical to those presented in Serial Nos. 85148348 and 85148406 to show
that the source-indicating power of the cited mark is diluted or weakened by
widespread third-party use in the marketplace. Those arguments and evidence are
discussed above in part 2(D), where we found that the evidence is not probative of
any substantial weakening of the source-indicating power of the registrant’s
trademark.
We accordingly proceed to consider the similarity or dissimilarity of the goods
identified in applicant’s application and those described in the cited registration. As
discussed above, the goods in the registration are children’s books. The goods in the
application now under review are a variety of toys, including, among other things,
action figures, board games, playing cards, dolls, hand-held video game units,
modeled plastic toy figurines, puppets, and talking toys. Applicant states the
following with respect to its goods:
The mark TWINKLE TOES among relevant purchasers of
Applicant’s goods and services evokes a young female
character in connection with casual footwear and apparel
for young girls;…
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…Applicant will use its mark on toys, play sets and games
that are based on the footwear theme….20
…Applicant’s goods are toys, play sets and games that are
based on applicant’s footwear featured in Applicant’s
advertising materials. The goods are used to promote
Applicant’s line of casual shoes for young girls. In
particular, the shoes and the toys, play sets and games
are marketed to young girls who are fashion conscious
and who relate to the youthful and trendy nature of the
female characters shown in the advertising materials.21
The identification of goods in the application says nothing of a connection
between the identified toys and footwear or apparel, nor does it indicate that the
toys have any promotional purpose or any connection to characters shown in
advertising materials. Accordingly, we may not apply these limitations to the
identified goods in our analysis. Octocom, 16 USPQ2d at 1787.
Similarly, as in the other two cases discussed in this decision, Applicant
urges us to view the goods set forth in the registration as limited to “educational
materials” featuring “playful animal characters,” and intended only for children up
to 7 years of age.22 As before, we may not consider any such limitations on the
identification of goods shown in the registration. In re Elbaum, 211 USPQ at 640.
For the purpose of demonstrating that applicant’s goods are closely related to
the goods identified in the cited registration, the examining attorney has made of
record five third-party U.S. trademark registrations that cover goods listed in both

20 Applicant’s brief (85148374) at 14.
21 Id. at 6.
22 Applicant’s brief (85148374) at 15.
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the application and registration at issue.23 However, only two of these registrations
were issued on the basis of use. These two registrations have some probative value
to the extent that they serve to suggest that the listed goods are of types that may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). The other three we have not considered, as they have very little probative
value.
The examining attorney has also made of record evidence, collected from the
websites of online stores, demonstrating six cases in which children’s books and toys
of the types listed in applicant’s application are offered under the same
trademark.24 In particular, the evidence shows that the mark DORA THE
EXPLORER has been used on children’s books and dolls, action figures, and toy
figurines; STRAWBERRY SHORTCAKE has been used on children’s books and
dolls, doll clothing, and toy vehicles; HELLO KITTY has been used on children’s
books and board games; DR. SEUSS has been used on children’s books and board
games; BLUES CLUES has been used on children’s books, plush toys, and toy
vehicles; and TRANSFORMERS has been used on children’s books, action figures
and toy vehicles.
In order to counter this evidence, applicant has made of record six pairs of
trademark registrations, showing in each case that the Patent and Trademark

23 Office action (85148374) of February 17, 2011.
24 Office action (85148374) of May 22, 2012 responding to applicant’s request for
reconsideration.
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Office issued a registration in Class 28 to one owner and a registration covering the
same mark in Class 16 to another owner.25 Only two of the paired cases cover goods
that are closely similar to the goods at issue in the present case: the mark
MEREDITH, being registered to one owner for dolls, doll clothing, and doll
accessories, and to another owner for books on a variety of topics;26 and the mark
PAW PRINTS, being registered to one owner for parlor games and to another owner
for children’s books.27 (We assume that applicant’s characterization of the
ownership and covered goods of the twelve registrations is accurate, as set forth in
applicant’s brief at 20-21.) Even if this evidence were more plentiful, it would be
difficult to assign a meaningful degree of probative weight to it: the Board can only
speculate as to the circumstances under which these registrations issued. Certainly
pairs of registrations like these cannot be taken as evidence of a policy decision of
the Patent and Trademark Office that the goods of the respective registrants are
disparate and commercially unrelated. See In re G.B.I. Tile and Stone Inc., 92
USPQ2d 1366, 1370 (TTAB 2009) (the fact that applicant was able to find and
submit for the record third-party registrations for the same marks owned by
different entities for the goods at issue herein does not rebut the examining
attorney’s evidence showing the existence of numerous third-party registrations
using the same marks on a variety of items, including applicant’s and registrant’s
goods.). By contrast, the examining attorney’s evidence from online stores clearly

25 See applicant’s brief (85148374) at 19-21 and Exhibit 5 to applicant’s request for remand
of April 25, 2012.
26 U.S. Reg. Nos. 3895619 and 1247661.
27 U.S. Reg. Nos. 3902818 and 4005456.
Serial Nos. 85148348, 85148374, and 85148406

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indicates that goods of certain types have been marketed under the same mark and
through the same trade channel.
Applicant argues that “toys are not a reasonable or suitable replacement as
educational books for children, and vice versa.”28 However, it is not necessary that
goods be directly competitive in nature to support a holding of likelihood of
confusion; it is sufficient that the goods be related in some manner or be marketed
under conditions such that they could be encountered by the same persons under
circumstances in which similar marks used on the goods could give rise to the
mistaken belief that the goods originate from or are in some way associated with
the same producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399. 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504,
507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ
851, 854 (TTAB 1978).
Applicant argues that its toys are “sold through company owned stores, the
internet and department and specialty stores”; and that, by contrast, the
registrant’s books “are primarily sold through its own website….” 29 However,
neither applicant’s identification of goods nor the cited registration contains any
limitation as to the channels of trade through which the goods may be offered. We
must therefore assume that the goods will be found in all ordinary channels of trade
for goods of these types. Octocom, 16 USPQ2d at 1787; Elbaum, 211 USPQ at 640.

28 Applicant’s brief (84148374) at 23.
29 Id. at 24.
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Finally, applicant argues that “for personal items that receive much wear and
attention, like toys, play sets and games, consumers pay particular attention to
details such as the color and the look of the goods. Furthermore, for educational
items [for children],… consumers (children and parents) pay particular attention to
details such as the source, publisher, and content.”30 The suggestion that children
are particularly careful consumers is counter-intuitive and, as there is no evidence
of record supporting this proposition, we are inclined to disagree. Children are
impulsive shoppers and we would expect them to be more prone to mistake than
adults. We assume that parents who shop for toys and children’s books exercise
care in selecting products for their children. However, such parents would still be
susceptible to mistake when confronted with highly similar trademarks on closely
related goods.
G. Conclusion re Serial No. 85148374.
Considering all of the evidence of record and the arguments of applicant and
the examining attorney, we find that applicant’s word and design mark is highly
similar to the registered mark TWINKLE TOES in standard character form. The
identified goods at issue, toys and children’s books, are similar in nature, as both
types of goods are for the use and enjoyment of children. The evidence shows that
both types of goods have been offered by a single producer under the same
trademark; that both types of goods are marketed through the trade channel of the
online stores, sometimes side-by-side; and that both types of goods appeal to the

30 Id. at 22.
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same classes of purchasers. The evidence indicates that trademarks applied to both
types of goods would likely be encountered by the same potential purchasers, under
circumstances in which such purchasers would be likely to believe that highly
similar marks indicate a single source of goods. Accordingly, we find that
applicant’s word and design mark, as applied to applicant’s identified goods, so
closely resembles the registered mark TWINKLE TOES for children’s books 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 with respect to applications
Serial Nos. 85148348, 85148374 and 85148406.