Worldwise, Inc.

Trademark Trial and Appeal Board

Nov 29, 2005

No. 76602722 (T.T.A.B. Nov. 29, 2005)

Mailed:
Nov. 29, 2003

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Worldwise, Inc.
________

Serial No. 76602722
_______

Michael E. Dergosits of Dergosits & Noah LLP for Worldwise,
Inc.

Charles G. Joyner, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Hairston, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark FISHBONZ (in standard character form) for goods
identified as “cat toys.”1
The Trademark Attorney has issued final refusals of
registration on two grounds, i.e., mere descriptiveness
under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),

1 Serial No. 76602722, filed July 19, 2004. The application is
based on use in commerce, and January 13, 2003 is alleged to be
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76602722
2
and likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. §1052(d). We shall address the mere
descriptiveness refusal first.

MERE DESCRIPTIVENESS
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it

the date of first use anywhere and the date of first use in
commerce.
Ser. No. 76602722
3
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
We agree with the Trademark Examining Attorney’s
contentions that applicant’s mark, FISHBONZ, is merely a
misspelling of and thus is legally equivalent to the words
FISH BONES; that FISH and BONES are defined as, and taken
together would be understood to mean, a fish skeleton; and
that FISH BONES or FISHBONZ is merely descriptive of a
feature or characteristic of applicant’s goods, i.e., their
shape or appearance. In support of this last contention,
Ser. No. 76602722
4
the Trademark Examining Attorney has made of record
printouts from several pet toy retailer websites
(hartz.com, cattoys.com, and petsmart.com) which show that
cat toys often take the shape of various animals, such as
mice, dogs, birds, etc., including toys shaped like fish.
Based on this evidence, we find that applicant’s cat
toy, is or could be (consistent with the identification of
goods), shaped like a fish skeleton, be imprinted with the
design of a fish skeleton, or otherwise have the appearance
of fish skeleton. FISHBONZ, the legal equivalent of FISH
BONES, merely describes this feature or characteristic of
applicant’s cat toys, i.e., their shape or appearance, and
thus is merely descriptive of applicant’s goods. See,
e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 547,
126 USPQ 362 (CCPA 1960)(MATCHBOX SERIES merely descriptive
of toys sold in boxes having the size and appearance of
matchboxes); In re Metcal Inc., 1 USPQ2d 1334 (TTAB
1986)(SOLDER STRAP merely descriptive of self-regulating
heaters in form of flexible bands or straps); In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982)(TOOBS, the phonetic
equivalent of “tubes,” merely descriptive of bathroom and
kitchen fixtures in the shape of tubes); and In re Ideal
Industries, Inc., 134 USPQ 416 (TTAB 1962)(WING NUT
Ser. No. 76602722
5
descriptive of electrical connecters shaped like a wing
nut).

LIKELIHOOD OF CONFUSION
The Trademark Examining Attorney also has refused
registration on the ground that applicant’s mark, as
applied to the goods identified in the application, so
resembles two previously-registered marks (owned by a
single owner) as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d). The
first cited registration is of the mark FISHBONE
(registered in standard character form) for a wide variety
of goods in Class 28 including the goods cited by the
Trademark Examining Attorney, i.e., “dog toys.”2 The second

2 Registration No. 2774308, issued on October 21, 2003 pursuant
to Trademark Act Section 44, U.S.C. §1126. The Class 28 goods
identified in the cited registration are “games and playthings,
namely dolls, bath toys, crib toys and pop up toys, stuffed toys,
dog toys, plush toys, soft sculpture toys, talking toys,
inflatable toys, gymnastic articles, namely gymnastic apparatus,
horizontal and parallel bars, vaulting horses and training
stools; sporting articles for climbing, golfing, surfing,
sailing, diving, mountain skiing, cross-country skiing,
snowboarding, and ice-hockey, namely surf fins, ski poles,
climbing equipment, namely climbing ropes, nuts, expanders,
chucks, carabiners, and pitons, golf balls, golf clubs, golf
tees, golf gloves, golf bags, non-motorized golf carts, surf
boards, surfboard leashes, surfboard wax, sail boards, sail board
masts, sail board leashes, flippers for use in scuba diving, ice-
hockey sticks, skis, ski goggles, and snowboards; ski bags,
special bags in order to store and transport ski gear and
snowboards; gloves for climbing, horseback riding, skiing,
boxing, rowing and canoeing.” The registration also includes
various goods in Class 25.
Ser. No. 76602722
6
cited registration is of the mark depicted below
(hereinafter “FISHBONE and design”), for goods identical to
those in the first cited registration, including “dog
toys.”3

Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

3 Registration No. 2760570, issued on September 9, 2003 pursuant
to Trademark Act Section 44.
Ser. No. 76602722
7
We turn initially to the first du Pont factor, i.e.,
whether applicant’s mark, FISHBONZ, and the cited
registered marks, FISHBONE and FISHBONE and design, are
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. We make this determination in accordance with
the following principles.
The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Ser. No. 76602722
8
In terms of appearance, we find that applicant’s mark
is similar to the cited standard character mark FISHBONE,
and to the literal portion of the FISHBONE and design mark,
to the extent that the registered marks begin with the
letters FISHBON. Each of the marks is displayed as a
single compound term. Applicant’s mark and the cited
registered marks are dissimilar to the extent that
registrant’s marks ends with an “E” while applicant’s mark
ends with an “Z.” Applicant’s mark also is dissimilar to
the FISHBONE and design mark to the extent that the
registered mark, but not applicant’s mark, includes the
design of a fish skeleton. However, the fish skeleton
design element of the cited registered mark is but the
pictorial representation of applicant’s FISHBONZ mark.
Viewing the respective marks as a whole, we find that the
similarity which arises from the presence of their use of
the letters FISHBON outweighs the points of dissimilarity.
In terms of sound, we find that the marks are
essentially identical. Applicant’s mark FISHBONZ is the
legal equivalent of the term “fish bones.” Although
applicant’s mark would be pronounced as the plural “fish
bones” while the cited registered marks would be pronounced
as the singular “fish bone,” that difference is
insufficient, in itself, to distinguish the marks in terms
Ser. No. 76602722
9
of sound, when the marks are considered in their
entireties.
In terms of connotation, we find that applicant’s mark
FISHBONZ is the legal equivalent of, and would be
understood to mean, “fish bones,” or the skeleton of a
fish. The cited registered FISHBONE mark, although it
would be understood to refer to a single fish bone rather
than to an entire fish skeleton, is close enough to the
meaning of the plural FISHBONZ or “fish bones” that the
marks must be deemed to be similar rather than dissimilar
in terms of connotation. That similarity is even more
pronounced when we compare applicant’s mark to the cited
FISHBONE and design mark. That mark’s pictorial
representation of a fish skeleton would be understood as
connoting the same thing that applicant’s mark connotes,
i.e., a fish skeleton.
In terms of overall commercial impression, we find
that applicant’s mark and each of the cited registered
marks are similar rather than dissimilar. Each of the
marks brings to mind the bones of a fish. As noted above,
the appearance of the fish skeleton feature of the cited
FISHBONE and design mark merely reinforces the similarity
between that mark and applicant’s mark. Also as noted
above, each of the marks is presented as a compound word.
Ser. No. 76602722
10
The points of dissimilarity, i.e., applicant’s misspelling
of the words “fish bones” as FISHBONZ, and applicant’s use
of the plural rather than the singular, do not suffice to
distinguish applicant’s mark from the cited registered
marks.
For the reasons discussed above, we find that the
applicant’s mark is similar to each of the cited registered
marks, and that the first du Pont factor weighs in favor of
a finding of likelihood of confusion. We are not persuaded
by applicant’s arguments to the contrary.
We turn next to the second du Pont factor, i.e., the
similarity or dissimilarity of the respective goods, i.e.,
the “cat toys” identified in applicant’s application and
the “dog toys” identified in the cited registrations.
It is settled that it is not necessary that the
respective goods be identical or even competitive in order
to support a finding of likelihood of confusion. That is,
the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. It is sufficient that the goods
be related in some manner, or that the circumstances
surrounding their use be such that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
Ser. No. 76602722
11
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
The Trademark Examining Attorney has made of record
printouts from four third-party websites (busypettoys.com,
hartz.com, kongcompany.com, and petsmart.com) showing that
cat toys and products and dog toys and products are
retailed by a single source. The Trademark Examining
Attorney also has made of record printouts of fifteen
third-party registrations4 which include, in their
respective identifications of goods, both “dog toys” and
“cat toys.” Although such registrations are not evidence
that the marks shown therein are in use or that the public
is familiar with them, they nonetheless have probative
value to the extent that they serve to suggest that the

4 The Trademark Examining Attorney submitted seventeen third-
party registrations in all, but we have not considered two of
them. One of them is based on Trademark Act Section 44 and
therefore is not evidence of use of the mark in this country.
The other registration likewise is not evidence that the mark is
used on the relevant goods in commerce, because the relevant
goods have been deleted from the registration.
Ser. No. 76602722
12
goods listed therein are of a kind which may emanate from a
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Based on this evidence, we find that “cat toys” and
“dog toys” are related goods, and that the second du Pont
factor weighs in favor of a finding of likelihood of
confusion. We are not persuaded by applicant’s arguments
to the contrary.
Because neither applicant’s nor registrant’s
respective identifications of goods are limited or
restricted in any way, we must presume that their
respective goods are marketed in all normal trade channels
and to all normal classes of purchasers for such goods. In
re Elbaum, 211 USPQ 639 (TTAB 1981). We find that the
trade channels for applicant’s and registrant’s goods are
overlapping, and would include pet stores and supermarkets
(where the respective goods are likely to be offered for
sale in the same aisle). We also find that the classes of
purchasers for the goods would be the same, i.e. ordinary
consumers. It is not uncommon for such consumers to have
both dogs and cats as pets. Finally, we find that dog toys
and cat toys are inexpensive items that are likely to be
purchased on impulse. Based on these findings, we find
Ser. No. 76602722
13
that the third and fourth du Pont evidentiary factors weigh
in favor of a finding of likelihood of confusion.
Having considered all of the du Pont factors relevant
to this case, we conclude that a likelihood of confusion
exists. Purchasers familiar with dog toys sold under
registrant’s marks are likely to assume that cat toys sold
under applicant’s mark originate from the same or a related
source. To the extent that any doubts might exist as to
the correctness of this conclusion, we resolve such doubts
against applicant. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).

Decision: The refusals to register under Trademark
Act Section 2(e)(1) and 2(d) are affirmed.