Worldwise, Inc.

Trademark Trial and Appeal Board

Feb 23, 2017

No. 87063609 (T.T.A.B. Feb. 23, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Worldwise, Inc.
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Serial No. 87063609

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Nathan P. Koenig of Bay Area Technology Law Group PC,
for Worldwise, Inc.

Tabitha Messick, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
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Before Zervas, Ritchie and Masiello,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Worldwise, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark GLOWFETCH in standard characters for “Pet toys” in International Class 28.1

1 Application Serial No. 87063609, filed June 7, 2016, pursuant to Trademark Act § 1(b), 15
U.S.C. § 1051(b), claiming an intent to use the mark in commerce.

Serial No. 87063609
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Registration No. 40355412
for the standard character mark GO FETCH for “Pet toys, excluding throwing sticks
for dogs” in International Class 28.
After the Examining Attorney issued a Final Office Action, Applicant appealed
the refusal to register. Both Applicant and the Examining Attorney filed briefs. We
reverse the refusal to register.
Likelihood of confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a likelihood
of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of
record on these factors, we keep in mind that “[t]he fundamental inquiry mandated
by Section 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); see also In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).

2 Registered October 4, 2011; Section 8 and 15 affidavits accepted and acknowledged.
Serial No. 87063609
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Similarity of the Goods, Classes of Consumers and Trade Channels
With regard to the goods, we must make our determinations under this factor
based on the goods identified in the cited registration and in the application. See In
re Dixie Rests. Inc., 41 USPQ2d at 1534. See also Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). Applicant’s goods are “pet toys,” and registrant’s goods
are “Pet toys, excluding throwing sticks for dogs.” With the exception of throwing
sticks for dogs, the goods are identical. Applicant has not offered any argument that
the goods are not related.
When an applicant’s goods are overlapping with a registrant’s goods, we must
presume that the channels of trade and classes of purchasers for those overlapping
goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (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); In re Yawata Iron & Steel Co., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of
trade and classes of purchasers are considered to be the same). The Internet evidence
in the record demonstrates that pet toys are offered to the general public. Thus, both
Applicant’s and the registrant’s goods are sold to the general public, and travel in the
same trade channels.
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The factors regarding the goods, trade channels and classes of consumers weigh
in favor of a finding of likelihood of confusion.
The Number and Nature of Similar Marks in Use on Similar Goods/Strength of
the Cited Mark

The sixth du Pont factor requires us to consider evidence pertaining to the number
and nature of similar marks in use on similar goods. “The purpose of [an applicant]
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers ‘have been educated to distinguish
between different such marks on the bases of minute distinctions.’” Palm Bay, 73
USPQ2d at 1691. “Third party registrations are relevant to prove that some segment
of the composite marks which both contesting parties use has a normally understood
and well-recognized descriptive or suggestive meaning, leading to the conclusion that
that segment 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
and Unfair Competition § 11:90 (4th ed. 2015)). See also Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 917 (CCPA 1976) (even if “there is no evidence of actual use” of
“third-party registrations,” such registrations “may be given some weight to show the
meaning of a mark in the same way that dictionaries are used.”). “The weaker [a
registrant’s] mark, the closer an applicant’s mark can come without causing a
likelihood of confusion and thereby invading what amounts to its comparatively
narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.
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Applicant placed the following third-party registrations into the record:3
MARK REG. NO. GOODS
FETCH PET PRODUCTS
(With Design)

4803153

Cat toys; Dog toys; Pet toys;
Pet toys containing catnip;
Pet toys made of rope; Plush
toys; Stuffed and plush toys;
Stuffed toy animals; Stuffed
toys; Toys for domestic pets;
Water toys
SEA AND FETCH 4776848 Dog toys
FETCH & CHEW 4559166 Dog toys
KICK FETCH 4258756 Pet toys
FETCH MACHINE 4635266 Pet toy in the nature of a
mechanical ball launcher for
propelling objects to be
caught and retrieved by
dogs
FETCHDOG (With Design) 3815776 Pet toys
FETCHDOG 3716897 Pet toys
FETCH BOY! THE BALL
LAUNCHER (With Design)
3685862 Pet toys
FETCH-N-GO4 4016488 Dog toys
GO FETCH 4035541 Pet toys, excluding throwing
sticks for dogs

3 Other third-party registrations introduced by Applicant are not relevant because they
concern goods and services not relevant to the goods involved in this appeal, or concern marks
which have a substantially different commercial impression.
4 Although the Examining Attorney maintains that that this mark has a different commercial
impression than that of the cited mark, we include this mark because “fetch” has the same
meaning in both marks.
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In addition, the Examining Attorney introduced one webpage showing use of the
mark FETCH & GLOW for a glow-in-the-dark ball as a dog toy.5
FETCH is highly suggestive of a toy which one would use to play “fetch” with a
dog. “Fetch” is defined in the online version of Merriam-Webster’s Dictionary as “to go
or come after and bring or take back.”6 The third-party marks listed above suggest
the same meaning of “fetch” in the context of pet toys, which of course include toys
for playing a game of “fetch.” See the following description of “Glow Dog Toys” on the
FETCH & GLOW webpage:
Two glow-in-the-dark balls offer your dog safe, fun fetching
day or night. Playing fetch with your dog improves your
bond and gives your dog much-needed activity and
exercise. Glow-in-the-dark latex Fetch & Glow ball is an
ideal fetch toy, indoors or out, and offered in two sizes. To
activate, simply expose the ball to light.7
We find the term FETCH to be highly suggestive for pet toys, and is not a strong
basis for finding the marks are similar. Rather, we have a situation here where
customers “have been educated to distinguish between different such [FETCH] marks
on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1691.
Similarity or Dissimilarity of the Marks
We next compare the marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Id. at 1692. The test is not whether

5 www.drsfostersmith.com. Sept. 1, 2016 Office Action, TSDR 10-11.
6 https://www.merriam-webster.com/dictionary/fetch. See In re Red Bull GmbH, 78 USPQ2d
1375, 1378 (TTAB 2006) (Board may take judicial notice of dictionary definitions). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
7 www.drsfostersmith.com. Sept. 1, 2016 Office Action, TSDR 10.
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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 services offered under the respective
marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. In re Association of the United States Army, 85 USPQ2d
1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Where the goods of an applicant and registrant are “similar in kind and/or closely
related,” the degree of similarity between the marks required to support a finding of
likelihood of confusion is not as great as in the case of diverse goods. In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
The marks we address in the present case, GLOWFETCH and GO FETCH, share
the word FETCH. GLOW in Applicant’s mark, and GO in registrant’s mark are both
common English language words with different, readily understood meanings. The
Examining Attorney maintains:
[T]he first term of applicant’s mark, GLOW, is highly
similar in sound and appearance to the wording GO, the
first term in registrant’s mark. Specifically, both words
begin with the letter “g,” the “g” in both marks is
pronounced with a hard “g” sound and both words end with
letters that will sound like the word “oh,” when
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pronounced. When the words GLOW and GO are combined
with the word FETCH in their respective marks, both
marks will sound similar when pronounced. Although the
“l” in “glow” sounds a little different than “go,” when
combined with FETCH the difference is barely noticeable.
Slight differences in the sound of similar marks will not
avoid a likelihood of confusion.8
The Examining Attorney also argues that “consumer confusion has been held
likely for marks that convey the same idea, stimulate the same mental reaction, or
may have the same overall meaning,” citing Downtowner Corp. v. Uptowner Inns,
Inc., 178 USPQ 105, 109 (TTAB 1973) (UPTOWNER for motor inn and restaurant
services likely to be confused with DOWNTOWNER for the same services).9
The terms GO and GLOW are the first terms in the respective marks; their
placement as the first terms is not without a consequence because the first term in a
mark is often the most prominent part of a mark. See Palm Bay 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the
identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). The dominance of the words GO
and GLOW is increased, in each mark, by the relative weakness of the second term,

8 Examining Attorney Brief, 6 TTABVUE 5.
9 Id. at 7.
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FETCH. As noted by the Examining Attorney, the terms GO and GLOW have
different sounds due to the inclusion of the letter “L” in GLOW. The letters “L” and
“W” in GLOW are not likely to be missed. The different terms GO and GLOW impart
different appearances and meanings, and a different commercial impression to each
mark, with one using the command “go fetch,” and the other based on the same
command but with a clever and noticeable difference of fetching a glow toy. This
difference is not at all subtle and would be readily noticed and understood by
purchasers. We therefore find that the marks differ more than they are similar and
resolve the du Pont factor regarding the marks against a finding of likelihood of
confusion.
Balancing the factors
In summary, while we have found the goods to be overlapping, and the trade
channels and classes of purchasers to be identical, we have also found the marks to
be dissimilar, with the common component of the marks being highly suggestive. In
view thereof, we find that Applicant’s mark for its recited goods is not likely to cause
confusion with the cited registrant’s mark for its recited goods.
Decision: The refusal to register is reversed.