Bright House Networks LLC

Trademark Trial and Appeal Board

Oct 20, 2008

No. 76663959 (T.T.A.B. Oct. 20, 2008)

Mailed:October 20, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bright House Networks LLC
________

Serial No. 76663959
_______

Pamela A. Rask of Sabin, Bermant & Gould for Bright House
Networks LLC.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hairston, Cataldo and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On August 1, 2006, Bright House Networks LLC applied
to register the mark BRIGHT KIDS NETWORK and design, as
reproduced below,

for “educational services in the nature of providing
after-school programs for children and young adults
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76663959
2
featuring seminars, workshops and meetings” in
International Class 41.1
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the mark THE BRIGHT KIDS
RESOURCE, INC. (in standard character form) for “education
services, namely, providing to parents of bright and highly
able children intellectually stimulating resources,
activities, seminars, and workshops in the field of
parenting.”2 The cited registration is on the Supplemental
Register. It is the examining attorney’s position that
applicant’s mark so resembles the registered mark that, as
used in connection with the identified services, it is
likely to cause confusion, to cause mistake, or to deceive.
In addition, the trademark examining attorney has
refused registration in view of applicant's failure to
comply with the requirement for a disclaimer of BRIGHT KIDS
NETWORK under Section 6(a) of the Trademark Act.
When the refusals were made final, applicant filed
this appeal. Applicant and the examining attorney have
filed briefs. We affirm the refusal based on a requirement

1 Serial No. 76639959, based on an allegation of a bona fide
intent to use the mark in commerce under Section 1(b).
2 Registration No. 3102488 issued June 6, 2006.

Serial No. 76663959
3
for a disclaimer; however, we reverse the refusal based on
a likelihood of confusion.
As a preliminary matter, we note the examining
attorney argues in his brief that applicant “has not
provided any arguments in its brief or request for
reconsideration in response to the disclaimer requirement.”
Brief, (unnumbered, p. 11). He concludes that applicant
has “waived its position regarding the requirement.” We
disagree. In its brief, applicant states that it has
“responded with arguments against the disclaimer, noting
the overall mark in the context of [applicant’s] services
is at least suggestive.” Brief, p. 5. And, in its
concluding paragraph, applicant specifically requests the
Board “to reverse the examining attorney’s decision...to
require a disclaimer of ‘BRIGHT KIDS NETWORK’.” Brief, p.
6. Based on these statements, we do not find that
applicant has conceded the disclaimer requirement.
Disclaimer
As provided in Section 6(a) of the Trademark Act, the
Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable. A
component of a mark is unregistrable if, when used in
connection with applicant's goods or services, it is merely
Serial No. 76663959
4
descriptive of the goods or services under Section 2(e)(1)
of the Trademark Act.
The examining attorney argues that BRIGHT KIDS NETWORK
is merely descriptive of applicant's services. In support
of this contention the examining attorney submitted the
definition of “bright”; copies of fifteen use-based, third-
party registrations for marks used in connection with
educational services, each of which includes a disclaimer
of "NETWORK" or is on the Supplemental Register; and over a
dozen article excerpts containing the phrase “bright
kid(s)” used in the context of describing intelligent
children.
Based on the evidence of record, we find that the
phrase BRIGHT KIDS NETWORK is merely descriptive of
applicant’s educational services for children and young
adults. Specifically, the phrase describes that
applicant’s services are geared to “bright kids” (or gifted
and intelligent children) and involve or comprise a
“network” (or interconnected group). As a result, we find
that BRIGHT KIDS NETWORK merely describes a feature or
characteristic of applicant’s services, namely, that they
provide an interconnected group of after-school programs
for gifted children and young adults. Consumers of
applicant’s services, upon viewing applicant’s mark in
Serial No. 76663959
5
connection with the recited services, would readily
perceive the phrase BRIGHT KIDS NETWORK as describing the
services.
In view of the above, we find the phrase BRIGHT KIDS
NETWORK is merely descriptive of applicant’s educational
services. Accordingly, the phrase must be disclaimed.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
In this case, we think the du Pont factor involving
the strength of the cited registration, or rather the lack
of strength, plays a significant role in our analysis. The
cited registration, as noted above, is on the Supplemental
Register. There is no question that a mark registered on
the Supplemental Register may be cited as a Section 2(d)
bar to the registration of an applicant's mark. See In re
The Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978); In
re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975). However,
marks registered on the Supplemental Register are presumed
Serial No. 76663959
6
to have been (at least as of the time of registration)
merely descriptive at a minimum, and they therefore are
deserving of a lesser scope of protection than arbitrary or
suggestive marks registered on the Principal Register. Id.
As the Court explained in Sure-Fit Products Company v.
Saltzson Drapery Company, 254 F.2d 158, 117 USPQ 295, 297
(CCPA 1958):
It seems both logical and obvious to us that where a
party chooses a trademark which is inherently weak, he
will not enjoy the wide latitude of protection
afforded the owners of strong trademarks. Where a
party uses a weak mark, his competitors may come
closer to his mark than would be the case with a
strong mark without violating his rights. The essence
of all we have said is that in the former case there
is not the possibility of confusion that exists in the
latter case.

Accordingly, the level of descriptiveness of a cited mark
on the Supplemental Register may influence the conclusion
that confusion is likely or unlikely. Indeed, in such
cases, the scope of protection accorded to them has been
consequently narrow, so that likelihood of confusion has
normally been found only where the marks and goods are
substantially similar. In re Hunke & Jochheim, supra.; see
also, In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Keeping the above in mind, we turn now to the du Pont
factor involving the level of similarity or dissimilarity
of the marks. We must determine whether applicant’s mark,
Serial No. 76663959
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BRIGHT KIDS NETWORK (in stylized letters and with a
design), and registrant’s mark, BRIGHT KIDS RESOURCE, INC.,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression.
As to appearance and sound of the marks, the obvious
similarity between the marks is the common element, BRIGHT
KIDS, which appears first in both marks. However,
considering the marks in their entireties, we must also
take into account the dissimilarities, namely, the addition
of RESOURCE, INC. at the end of the registered mark, and
applicant’s use of NETWORK at the end of its mark, the
concentric circles design, and the boxed letters. We agree
with the examining attorney that any differences in
stylization or lowercase letters is immaterial inasmuch as
the cited registration appears in typed letters and thus
may be appear, in use, in lowercase letters or the same
stylized format as applicant’s.
In terms of connotation and commercial impression, we
again find the respective marks to be similar to the extent
that the common phrase, BRIGHT KIDS, will be understood as
meaning intelligent or gifted children. However, we agree
with applicant that when the marks are considered in their
entireties and in connection with their respective
Serial No. 76663959
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services, the connotations and commercial impressions are
distinguishable. That is, registrant’s mark connotes a
“resource” or tool for parents in that registrant offers
educational workshops and seminars on parenting gifted
children; on the other hand, applicant’s mark connotes a
“network” or system by which it provides its after school
educational programs for children and young adults.
On balance, we find that the marks are more dissimilar
than similar. Accordingly, the first du Pont factor weighs
against a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the services as recited in
the application and in the cited registration. Here, we
find that the services may be distinguished in that
applicant is essentially rendering after school programs
for children or young adults whereas registrant is
rendering parenting workshops and seminars. The ultimate
recipients of the educational services are certainly
different. Obviously, the subject matter of the
educational services will likewise be different, i.e.,
applicant’s after school programs will not include
parenting instruction. In this respect, we note there is
no evidence to suggest that consumers would believe that
the two services would be rendered by the same entity.
Serial No. 76663959
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Nonetheless, as the examining attorney pointed out, there
is some relationship between the services because they both
involve providing educational services and, as the
examining attorney pointed out, there is the possibility
that parents may send their children to applicant’s after-
school programs while learning parenting skills for their
“bright and highly able children” through registrant’s
workshops and seminars.
Ultimately, we find that the services of applicant and
registrant are related. That factor weighs in favor of a
finding of likelihood of confusion.
Under the third du Pont factor, we find that
applicant's services and registrant's services would be
marketed in the same trade channels and to the same classes
of purchasers. There are no restrictions or limitations in
the respective recitations of services, so we must presume
that the services are marketed in all normal trade channels
for such services and to all normal classes of purchasers
for such services, namely, parents. The third du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Weighing all of the evidence of record as it pertains
to the relevant du Pont factors, and keeping in mind the
narrowed scope of protection to be afforded weak marks
Serial No. 76663959
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registered on the Supplemental Register, we conclude that
there is no likelihood of confusion. The marks are
dissimilar when viewed in their entireties and as applied
to the respective services. The services themselves,
albeit falling under the umbrella of educational services,
are also different in that applicant’s educational services
are for children and registrant’s services are aimed at
parents of highly able children. When we consider the
narrow scope of protection to be accorded to the cited
mark, and the cumulative differences in the marks and
services, we find that there is no likelihood of confusion.
Decision: The refusal to register based on a
likelihood of confusion with Registration No. 3102488 is
reversed.
The requirement for a disclaimer under Trademark Act
Section 6(a), and the refusal of registration in the
absence of a disclaimer, is affirmed. However, if
applicant submits the required disclaimer of BRIGHT KIDS
NETWORK to the Board within thirty days, this decision will
be set aside as to the affirmance of the disclaimer
requirement, and the application then shall proceed to
Serial No. 76663959
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publication.3 See Trademark Rule 2.142(g), 37 C.F.R.
§2.142(g).

3 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use BRIGHT KIDS
NETWORK is claimed apart from the mark as shown.” TMEP §
1213.08(a) (4th ed. April 2005).