Water Babies Limited

Trademark Trial and Appeal Board

Dec 16, 2016

No. 79163879 (T.T.A.B. Dec. 16, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Water Babies Limited
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Serial No. 79163879
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Cathleen E. Stadecker and Peter B. Kunin of Downs Rachlin Martin PLLC for
Water Babies Limited.

Tina H. Mai, Trademark Examining Attorney, Law Office 117 (Hellen Bryan
Johnson, Managing Attorney).
_____

Before Zervas, Masiello, and Lynch, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Water Babies Limited (“Applicant”) filed an application for extension of protection
to the United States of its International Registration of the mark shown below:1

The goods and services identified in the application are as follows:

1 Application Serial No. 79163879 was filed on August 26, 2014 under Trademark Act
Section 66(a), 15 U.S.C. § 1141f(a), based on International Registration No. 1243895 dated
August 26, 2014, with a priority filing date of May 19, 2014. No claim is made to the
exclusive right to use BABIES apart from the mark as shown. The colors blue and white are
claimed as a feature of the mark.
Serial No. 79163879

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Printed instructional and teaching material in the field of
swimming instruction; stationery; printed matter,
namely, brochures, booklets and teaching material in the
field of swimming instruction; printed matter in the
nature of books, leaflets, pamphlets, and manuals
containing information, instruction and coursework in the
field of swimming classes, techniques and/or routines;
photographs; photographs of babies; photographs of
babies for car windscreens; stickers; stickers for car
bodywork; underwater photographs; cards, namely, blank
cards, greeting cards, note cards, business cards; car
stickers; car stickers affixed by suction, in International
Class 16;
Training services relating to swimming for infants and
babies, and/or entertainment services in the form of live
exhibitions, all relating to swimming for infants and
babies; training services relating to aerobics, exercise
and/or exercise activities performed in water by women
before or after their pregnancy, and/or entertainment
services in the form of live exhibitions, all relating to
aerobics, exercise and/or exercise activities performed in
water by women before or after their pregnancy;
education and training services relating to photography,
namely, providing classes and workshops about
photographing swimming infants and babies;
photography; photography services; portrait photography;
underwater photography; provision of swimming bath and
swimming pool facilities; swimming instruction; aerobics,
and exercise instruction and/or instruction relating to
exercise activities performed in water by women before or
after their pregnancy; teaching of aerobics, exercise
and/or exercise activities performed in water by women
before or after their pregnancy; training of teachers for
aerobics, exercise and/or exercise activities performed in
water by women before or after their pregnancy; teaching
of swimming; training of swimming teachers; training of
photographers; physical fitness training services;
educational services in the form of classes and instruction,
teaching, instruction and training services in the field of
swimming; education, teaching, instruction and/or
training services in the fields of aerobics and exercise
classes and instruction and/or classes and instruction in
the field of exercise activities performed in water by
women before or after their pregnancy; providing of
Serial No. 79163879

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training services, being the provision of aerobics and
exercise classes and instruction and/or classes and
instruction in the field of exercise activities performed in
water by women before or after their pregnancy;
organizing and conducting entertainment and/or
educational events relating to aerobics, exercise and/or
exercise activities performed in water by women before or
after their pregnancy; classes, lessons, schools and/or
entertainment and/or educational shows in the fields of
aerobics, exercise and/or exercise activities performed in
water by women before or after their pregnancy;
entertainment in the nature of shows in the fields of
aerobics, exercise and/or exercise activities performed in
water by women before or after their pregnancy;
instruction in aerobics, exercise and/or exercise activities
performed in water by women before or after their
pregnancy; presentation of live performances in the fields
of aerobics, exercise and/or exercise activities performed
in water by women before or after their pregnancy;
personal coaching services in the fields of aerobics,
exercise and/or exercise activities performed in water by
women before or after their pregnancy; entertainment in
the nature of performances in the fields of aerobics,
exercise and/or exercise activities performed in water by
women before or after their pregnancy; education,
teaching and/or instructional services, being the provision
of swimming classes and instruction; providing of training
services, being the provision of swimming classes and
instruction; provision of swimming classes and
instruction; physical education services; organizing and
conducting educational and/or entertainment events
relating to swimming; swimming classes, lessons, schools
and/or educational and/or entertainment shows;
entertainment in the nature of swimming shows;
instruction in swimming; presentation of live swimming
performances; personal coaching services in the field of
swimming; entertainment services, namely, providing a
website featuring non-downloadable playback of MP3
recordings of digital music and non-downloadable videos
in the field of swimming; entertainment in the nature of
swimming performances; consultancy, advisory and
information services for or in relation to any or all of the
aforementioned services for entertainment and/or
educational purposes, in International Class 41.
Serial No. 79163879

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The Trademark Examining Attorney refused registration under Section 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 and services, so resembles the registered mark
WATERBABIES in standard characters as to be likely to cause confusion, or to
cause mistake, or to deceive. The cited mark is registered for “Swimming
instruction,” in International Class 41.2 When the refusal was made final, Applicant
appealed and requested reconsideration. The Examining Attorney denied the
request for reconsideration and this appeal proceeded. Applicant and the
Examining Attorney have filed briefs. We affirm in part and reverse in part.
1. USPTO error as ground for appeal.
Applicant’s brief is limited to arguing that the cited registration was issued in
error because Applicant owns an application that should have blocked the cited
registration’s issuance. Applicant points out that the application underlying the
cited registration (the “Underlying Application”) was filed on January 17, 2013; and
that Applicant owns application Serial No. 79147272 (the “’272 Application”), filed
under the Madrid Protocol, for the mark WATER BABIES (in stylized form in the
colors blue and white), which was entitled to a priority filing date of October 23,
2012. See 15 U.S.C. § 1141g. At the time the International Bureau notified the
USPTO of the ’272 Application on May 29, 2014, the Underlying Application had
already been published for opposition, on March 18, 2014.3 Nonetheless, the

2 Reg. No. 4595259, issued September 2, 2014.
3 The relevant USPTO records have been made of record in this appeal. Applicant’s
response of June 1, 2016.
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Underlying Application proceeded and the registration now cited against Applicant
issued.
The examination procedures of the Trademark Office contemplate the possibility
that the USPTO may receive notice of a Madrid Protocol application entitled to a
priority filing date after the USPTO has already approved another application
having a later filing date:
In some cases, another U.S. application filed after the
§66(a) applicant’s priority date may proceed to publication
or registration because the request for extension of
protection for the §66(a) application was not yet of record
in the United States when the examining attorney
searched USPTO records for conflicting marks. If the
USPTO learns that a §66(a) application is entitled to
priority over another pending application before the other
mark registers, the USPTO will take appropriate action to
give the §66(a) application the priority to which it is
entitled. The §66(a) applicant may bring the priority-date
issue to the USPTO’s attention by submitting a letter of
protest in the other pending application. See TMEP §1715
regarding letters of protest.
If an examining attorney discovers a conflicting
application entitled to priority under §66(a) after taking
action in a case, the examining attorney must issue a
supplemental action correcting the situation. If the mark
has been published, the examining attorney must request
jurisdiction before issuing the action. See TMEP
§§1504.01 and 1504.04(a) regarding the examining
attorney’s jurisdiction.
However, if the conflicting mark has already registered,
the USPTO does not act to cancel the registration sua
sponte. The §66(a) applicant may seek to cancel the
registration by filing a petition for cancellation with the
Trademark Trial and Appeal Board.
TMEP § 1904.01(e) (2016).
Serial No. 79163879

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Applicant contends that, if the USPTO had taken note of the existence of the
’272 Application, it would have found it to be in conflict with the Underlying
Application; and would therefore have suspended the Underlying Application and
allowed the ’272 Application to be processed first. We need not determine whether
the ’272 Application should have blocked the approval of the Underlying
Application, because, regardless, in the case now before us, the Examining
Attorney’s refusal of registration under Section 2(d) was procedurally sound and
required by the statute. An argument similar to Applicant’s was rejected in In re
House Beer, LLC, 114 USPQ2d 1073, 1076 (TTAB 2015), noting “[w]e cannot give
the internal examining procedures of the USPTO such primacy over the statutory
law.”
Section 2(d) provides for refusal on the basis of a mark’s resemblance to “a mark
registered in the Patent and Trademark Office….” 15 U.S.C. § 1052(d) (emphasis
added). This provision of the statute makes no reference to the filing date of the
application underlying the registration cited as the basis for the refusal.4 If a
confusingly similar mark already is registered, it must be cited as grounds for
refusing registration. The Examining Attorney’s refusal under Section 2(d) is
procedurally valid even though certain examination procedures were not followed
during the independent examinations of Applicant’s ’272 Application and the
Underlying Application. In re House Beer, 114 USPQ2d at 1076. Now that the cited
registration has issued, Applicant cannot effectively challenge its validity in this ex

4 Section 2(d) does give regard to filing dates of underlying applications where a concurrent
use registration is at issue; but that provision is not relevant to the case before us.
Serial No. 79163879

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parte appeal proceeding. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (“It is true that a prima facie presumption of validity
may be rebutted. [Citations omitted.] However, the present ex parte proceeding is
not the proper forum for such a challenge.”) A cancellation proceeding, in which the
cited Registrant is a party, would be an appropriate forum for a claim based on
priority of use. “It bears noting, however, that mere error in the examination of the
Underlying Application would not be a valid ground for an inter partes challenge to
the cited registration.” In re House Beer, LLC, 114 USPQ2d at 1077.
For the reasons stated, we find that the Examining Attorney’s refusal under
Section 2(d) was procedurally valid. We turn, therefore, to the merits of the refusal.
2. Refusal under Section 2(d).
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 as set forth in 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).
(a) The marks.
We first consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The wording of the two marks is
Serial No. 79163879

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identical in sound and meaning. In appearance, the marks’ wording differs only by
virtue of the space between WATER and BABIES in Applicant’s mark, and this
difference is insignificant to distinguish the marks. Further, marks must be
considered in light of the fallibility of memory. In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1085 (Fed. Cir. 2014), and this minor difference might well be
overlooked or not remembered. The marks also differ in appearance by virtue of the
design element of Applicant’s mark, the stylized lettering of its wording, and its
blue and white color scheme. However, “[i]n the case of a composite mark containing
both words and a design, the verbal portion of the mark is the one 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) (internal quotations omitted).
Moreover, the cited mark is registered in standard characters, is not limited to any
particular form of display, Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983), and could be displayed in styles and colors similar to those of
Applicant’s mark.
Overall, we find that the two marks create highly similar commercial impressions.
Accordingly, the du Pont factor of the similarity or dissimilarity of the marks
weighs in favor of a finding of likelihood of confusion.
(b) The goods and services.
We next consider the similarity or dissimilarity of the goods and services as
identified in the application and the cited registration. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014);
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Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
Registrant’s services are “swimming instruction,” and Applicant’s services in
Class 41 include “instruction in swimming.” Thus, with respect to the Class 41
portion of the application, the services are identical in part. For purposes of finding
likelihood of confusion, it is sufficient if confusion is likely with respect to use of the
mark for any service within a given class. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
As Applicant’s swimming instruction services are legally identical to those of
Registrant, we must presume that they move in the same channels of trade and are
offered to the same classes of consumers. See In re Viterra Inc., 101 USPQ2d at
1908 (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion). Accordingly, for purposes of Class 41, the du Pont factors
relating to the similarity or dissimilarity of services, the trade channels, and the
classes of customers favor a finding of likelihood of confusion.
We next compare Applicant’s Class 16 goods to Registrant’s services. Applicant’s
goods are various paper goods, including stationery, and various kinds of printed
matter, including “Printed instructional and teaching material in the field of
swimming instruction.” In order to demonstrate that such goods are commercially
related to Registrant’s services, the Examining Attorney has submitted the
following relevant use-based third-party registrations:
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Reg. No. Mark Relevant goods Relevant services
3634813 FUELING
THE
MULTISPORT
LIFESTYLE
Printed educational
and instructional
materials on the
subject of athletic
competitions involving
swimming, biking and
running
Health club and wellness
center services, namely,
providing instruction and
equipment in the field of
swimming, biking and
running, and physical
exercise

3722391 [design mark] Stationery, etc. Providing instruction and
training in juggling,
clowning, acrobatics,
gymnastics, dance and
swimming

4026802 QUEEN
ELIZABETH
Books, magazines,
newsletters, brochures
in the fields of travel,
food and beverage,
entertainment and
leisure and maritime;
stationery
Entertainment services,
namely, … swimming
competitions; health club
services, namely, providing
instruction, classes and
equipment in the field of
physical exercise

4411257 SQUAW
VALLEY
Printed brochures,
pamphlets and booklets
featuring information
about … ski and
snowboard
instructional materials,
resort sports and
recreational activities

Providing recreational
facilities for and instruction
in … swimming

Third-party registrations which individually cover different goods and services and
are based on use in commerce may serve to suggest that the listed goods and
services are of types which may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). However, the nature and quantity of
Serial No. 79163879

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these few registrations do not persuade us that paper goods or printed matter
regarding swimming are commercially related to swimming instruction, such that
customers would believe that they emanate from the same source. The goods and
services in several of these third-party registrations are not a good approximation of
the goods and services of Applicant and Registrant. The business of providing
swimming instruction is far different in nature from the writing and publishing of
printed teaching materials, and there is no reason for us to assume, without
evidence, that such goods and services would be provided by a single entity. There is
even less inherent similarity between swimming lessons and paper goods like
stationery, stickers, and greeting cards. Thus, with respect to Applicant’s Class 16
goods, the du Pont factor of the similarity or dissimilarity of the goods and services
does not support a finding of likelihood of confusion.
We note the Examining Attorney’s argument that “[a]bsent restrictions in an
application and/or registration, the identified goods and/or services are ‘presumed to
travel in the same channels of trade to the same class of purchasers.’”5 However, the
logic of this presumption holds only where the identified goods or services are
identical. This presumption cannot be made with respect to Applicant’s paper and
printed goods and Registrant’s swimming instruction services.
(c) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. With respect to

5 Examining Attorney’s brief, 8 TTABVUE 6.
Serial No. 79163879

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Applicant’s identified services in International Class 41, we find that Applicant’s
mark so resembles the cited registered mark as to be likely to cause confusion,
mistake or deception as to the source of Applicant’s services. With respect to
Applicant’s goods in International Class 16, the Examining Attorney has not
demonstrated a likelihood of confusion.
Decision: With respect to Applicant’s services in Class 41, the refusal to register
is AFFIRMED. With respect to Applicant’s goods in Class 16, the refusal to register
is REVERSED.