KidVid, Inc.

Trademark Trial and Appeal Board

Feb 21, 2003

No. 75710402 (T.T.A.B. Feb. 21, 2003)

Mailed: 21 FEB 2003
Paper No. 14
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re KidVid, Inc.
________
Serial No. 75/710,402
_______
Lee B. Beitchman, Esq. for KidVid, Inc.
Rebecca A. Smith, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Chapman, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On June 16, 1999, KidVid, Inc. (applicant) filed an
application to register the mark “… A LITTLE GENIUS IN THE
MAKING” (in typed form) for goods ultimately identified as
a “series of audio and video works, namely, prerecorded
videotapes, compact discs, and audio cassettes
containing musical recordings, narratives, instruction on
the functionality of various objects, phonics and scenes
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/710,402
2
depicting infants and children at play, for developing and
improving the creative and intellectual faculties and brain
development of infants and children” in International Class
9.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark “LITTLE GENIUS” (in typed form) for:
Musical sound recordings and musical video recordings
in International Class 9
Children's books, baby books, children's activity
books, calendars, sheet music, song books, picture
books, decals, bumper stickers, paper cake
decorations, greeting cards, flash cards, playing
cards, trading cards, disposable diapers, children's
encyclopedias, printed teaching materials for teaching
youth development skills, life skills, and problem
solving, stickers, temporary tattoos, and wrapping
paper in International Class 16.2
When the refusal was made final3, applicant filed this
appeal.
The examining attorney argues that the marks “… A
LITTLE GENIUS IN THE MAKING” and “LITTLE GENIUS” are highly
similar and that the letter “a” “has little or no trademark
1 Serial No. 75/710,402. The application contains an allegation
of a bona fide intention to use the mark in commerce.
2 Registration No. 2,372,130, issued August 1, 2000.
3 The examining attorney also cited a second registration of the
same owner for the same mark for goods in International Classes
25 and 28 (Registration No. 2,344,760). The examining attorney
subsequently withdrew the citation of this registration.
Ser No. 75/710,402
3
significance. The terms ‘IN THE MAKING’ comprise
subordinate matter since the dominant portion[s] of the
marks are the terms LITTLE GENIUS.” Brief at 6. The
examining attorney also found that both applicant’s and
registrant’s goods include musical sound recordings, and
that while applicant has limited its musical sound
recordings to those for developing children’s intellect,
“registrant’s musical recordings could also be for
improving intellectual development.” Brief at 7-8. The
examining attorney determined that because “these items are
identical, the goods are likely to be sold in the same
stores and move in the same channels of trade.” Brief at
8. Therefore, the examining attorney held that there is a
likelihood of confusion.
Applicant’s position is that the “addition of the
words ‘in the making’ to the LITTLE GENIUS mark renders its
mark distinguishable from registrant’s mark because the
LITTLE GENIUS mark is highly suggestive of educational
products for children.” Brief at 3. In addition,
applicant argues that the Office has often “approved
identical and nearly identical marks for registration, even
where the categories of goods and services are arguably
related.” Brief at 5. Another point applicant makes is
that its mark is a “slogan to further identify the product
Ser No. 75/710,402
4
of applicant, already registered as BRAINY BABY.” Brief at
6.
We affirm.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
The first factor we consider is a comparison of
applicant’s mark with the mark in the registration cited by
the examining attorney as the basis of the refusal to
register. In this case, applicant’s mark is the slogan
“… A LITTLE GENIUS IN THE MAKING,” while registrant’s mark
consists of the words “LITTLE GENIUS.” Obviously, both
marks contain the same words “Little Genius.” In addition,
applicant has taken the entire registered mark and added
other matter to it. The question becomes whether this
additional matter changes the commercial impression.
Applicant adds an ellipse and the indefinite article before
the words and the phrase “in the making” after the shared
words. The addition of the ellipse and the indefinite
article does not significantly change the pronunciation,
Ser No. 75/710,402
5
appearance, meaning, or commercial impression of the mark.
The Court of Customs and Patent Appeals held that the
addition of a hyphen and another digit did not eliminate
the similarity of marks. See Phillips Petroleum Co. v.
C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971)(“The addition of the extra 6 and the hyphen has
already been held not to avoid likelihood of confusion, and
in the absence of some other apparent significance for the
term 6-66 we find this conclusion inescapable”).
Similarly, the addition of the phrase “in the making” adds
little to distinguish the marks because the phrase refers
back and emphasizes the “little genius” portion of the
mark. Therefore, the words “Little Genius” would dominate
applicant’s mark and, of course, it is the entire
registered mark. These marks have obvious similarities in
appearance, sound, meaning, and commercial impression.
When the marks are viewed in their entireties, we find that
they are very similar. In re Dixie Restaurants, 105 F.3d
1405, 1407, 41 USPQ 1357, 1534 (Fed. Cir. 1993) (THE DELTA
CAFE and design held confusingly similar to the word DELTA;
more weight given to common dominant word DELTA).
Regarding the goods, we find that they are at least in
part overlapping. Applicant’s goods include “prerecorded
videotapes, compact discs, and audio cassettes
Ser No. 75/710,402
6
containing musical recordings, narratives, instruction on
the functionality of various objects, phonics and scenes
depicting infants and children at play, for developing and
improving the creative and intellectual faculties and brain
development of infants and children.” Registrant’s goods
include “musical sound recordings and musical video
recordings.” Both applicant’s and registrant’s goods
include musical video and audio recordings. While
applicant’s identification of goods recites that its goods
are used for the development of infants and children, there
is nothing that would preclude registrant’s recordings from
also being used for the same purpose. Thus, there is no
legal difference between the goods on this point. We must
consider the goods as they are described in the
identification of goods in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). We also do not
Ser No. 75/710,402
7
read limitations into the identification of goods.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
limitations into the registration”). When we view the
goods as they are described in the application and
registration, they are in part virtually identical, i.e.,
musical sound and video recordings.
Inasmuch as applicant’s and registrant’s goods include
musical video and sound recordings that could be marketed
to parents to encourage child development, the channels of
trade and potential purchasers would also be very similar,
if not identical.
Because the marks are used, at least in part, on
highly similar if not identical goods, there is a greater
likelihood that when similar marks are used in this
situation, confusion will be likely. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines”). In this case, we conclude that when
Ser No. 75/710,402
8
prospective customers familiar with registrant’s “LITTLE
GENIUS” musical sound and video recordings encounter
applicant’s “… A LITTLE GENIUS IN THE MAKING” prerecorded
videotapes, compact discs, and audio cassettes
containing musical recordings, narratives, instruction on
the functionality of various objects, phonics and scenes
depicting infants and children at play, for developing and
improving the creative and intellectual faculties and brain
development of infants and children, they are likely to
believe that, at a minimum, there is some association
between the sources of these goods.
In response to applicant’s other arguments, we note
that inasmuch as the examining attorney did not need to
show that registrant’s mark was famous, the lack of
evidence of fame is not significant. Majestic Distilling,
65 USPQ2d at 1205 (citation omitted) (“Although we have
previously held that the fame of a registered mark is
relevant to likelihood of confusion, we decline to
establish the converse rule that likelihood of confusion is
precluded by a registered mark’s not being famous”).
Similarly, the fact that applicant may be using the mark “…
A LITTLE GENIUS IN THE MAKING” as a slogan with its mark
“BRAINY BABY” does not mean that there is no likelihood of
confusion. Applicant has not sought registration of the
Ser No. 75/710,402
9
combined marks, but instead it seeks registration of the
slogan alone. As such, applicant is not restricted from
using the slogan alone or in combination with other marks.
“Ordinarily, for a word mark, we do not look to the trade
dress, which can be changed at any time.” Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). Accord
Squirtco, 216 USPQ at 939 (By seeking registration for a
mark in a typed drawing, a difference in type style with
the registrant’s mark “cannot legally be asserted by that
party” since the style of the typed mark can be changed at
any time).
Applicant also included two third-party registrations
for the marks LIL GENIUS and design for electronic
calculators and SAPIENTINO (“Little Genius” in Italian) for
educational games along with other registrations combining
the word “Genius” with different words and designs for a
variety of goods and services. The registration of similar
marks for different goods and the fact that one word in the
mark is the subject of other registrations are hardly
significant. These registrations do not show that
applicant’s mark should be registered when the goods are
virtually the same and the marks are very similar. While
third-party registrations may be used to demonstrate that a
Ser No. 75/710,402
10
portion of a mark is suggestive or descriptive, they cannot
be used to justify the registration of another confusingly
similar registration. In re J.M. Originals, 6 USPQ2d 1393,
1394 (TTAB 1988).4
Decision: The Examining Attorney’s refusal to
register applicant’s mark on the ground that if it is used
on the goods identified in the application it is likely to
cause confusion with the mark in the cited registration
under Section 2(d) of the Trademark Act is affirmed.
4 To the extent that applicant refers to other registrations in
its appeal brief that are not of record, we do not consider them
as they have been untimely referenced and copies of the
registrations were not submitted. 37 CFR § 2.142(d). See also
In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983)(“[W]e
do not consider a copy of a search report to be credible evidence
of the existence of the registrations and the uses listed
therein”). Moreover, we note that references to the registration
of different marks for different goods and services do not show
that there is no likelihood of confusion in this case.