Kim

Trademark Trial and Appeal Board

Feb 27, 2007

No. 78475526 (T.T.A.B. Feb. 27, 2007)

Mailed: February 27, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kim
________

Serial No. 78475526
_______

John G. Posa of Gifford, Krass, Groh, Sprinkle, Anderson for John
Kim II.

Dahlia George, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Hohein, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

John Kim II has filed an application to register the
mark "COMPASS CAFE" in standard character form on the Principal
Register for the services of providing "children's entertainment
and amusement centers, namely, interactive play areas" in
International Class 41.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to his services, so resembles the
following marks, which are owned by the same registrant for the

1 Ser. No. 784765526, filed on August 30, 2004, which is based on an
allegation of a bona fide intention to use the mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 78475526
2
services indicated below, as to be likely to cause confusion, or
to cause mistake, or to deceive:
(i) the mark "COMPASS KIDS' CLUB," which
is registered on the Principal Register in
standard character form for "entertainment
services, namely, arranging and conducting
recreational activities for children in the
nature of arts and crafts classes, pizza
parties, movies, beach and swimming parties,
playground games, petting zoos, camp-outs,
pony rides, and outdoor sports";2 and

(ii) the mark "COMPASS CLUB," which is
registered on the Principal Register in
standard character form for "entertainment
services, namely, arranging and conducting
recreational activities in the nature of
golf, tennis, table tennis, air hockey and
billiards tournaments, jungle gym relays,
boat outings, outdoor sports, aerobics and
weight training classes, dance classes, arts
and crafts classes, bingo games, movies, and
birthday parties."3

Applicant has appealed and briefs have been filed. We
affirm the refusal to register as to both of the cited
registrations.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion

2 Reg. No. 2,570,767, issued on May 21, 2002, which sets forth a date
of first use of the mark anywhere and in commerce of September 1998.
The words "KIDS' CLUB" are disclaimed.

3 Reg. No. 2,670,866, issued on January 7, 2003, which sets forth a
date of first use of the mark anywhere and in commerce of September
1998. The word "CLUB" is disclaimed.
Ser. No. 78475526
3
analysis, two key considerations are the similarity or
dissimilarity in the goods or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.4
Applicant contends in his brief that "the Examining
Attorney is engaging in inappropriate dissection in comparing the
proposed mark to [those in] the registrations, and that, when the
marks are considered in their entireties, a markedly different
commercial impression is established, thereby defeating
likelihood of confusion." In particular, applicant asserts that,
"[w]ith respect to the '767 Registration, the use of 'KIDS' CLUB'
cannot simply be ignored" because, "[d]espite the fact that the
proposed mark and the registered mark include the term 'COMPASS,'
the terms 'CAFÉ,' [sic] and 'KIDS' CLUB[,]' are entirely
different, creating a distinct commercial impression in each
case." According to applicant, the commercial impression given
by the mark "COMPASS KID'S CLUB" is one of "some sort of service
directed to children," while the commercial impression engendered
by his mark "COMPASS CAFE" is "that of being some sort of coffee
shop." Similarly, applicant insists, as to "the '866
Registration, again, 'CAFÉ' [sic] and 'CLUB' are entirely
different and deliver an entirely different commercial
impression." Applicant cites in support of its contentions In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992)

4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks." 192 USPQ at 29.

Ser. No. 78475526
4
[finding no likelihood of confusion between the marks "VARGA
GIRL" and "VARGAS" for calendars due to the "significant
contribution" in the former of the descriptive word "GIRL"]; and
Conde Nast Publications, Inc. v. Miss Quality, Inc., 597 F.2d
1404, 184 USPQ 422, 425 (CCPA 1975) [holding that mark "COUNTRY
VOGUES" for ladies' and misses' dresses does not so resemble
"VOGUE" for a magazine as to be likely to cause confusion because
such marks "do not look or sound alike"].
Moreover, as to the respective services, applicant
notes that, as to those "associated with the '767 Registration,
... the Registrant provides the services of 'arranging and
conducting recreational activities for children in the nature of
classes, parties, and so forth.'" Registrant, applicant insists,
"provides entirely different services through entirely different
means" than those rendered by applicant and thus applicant
"disagrees that the [respective] services are likely to be found
in the same channels of trade, namely, advertising to printed
publications and electronic means." Likewise, "[w]ith respect to
the '866 registration," applicant maintains that "the same
arguments presented above ... apply in this case, insofar as the
entertainment services provided by Registrant are identical."
The Examining Attorney, on the other hand, urges in her
brief that confusion is likely, arguing that "the dominant and
most significant portion of all the marks is the term COMPASS"
and pointing out that such term "appears in the same sequence in
all of the marks." In particular, noting that the cited
registrations "contain a disclaimer of the terms 'KIDS' CLUB' and
Ser. No. 78475526
5
'CLUB,' respectively," the Examining Attorney contends that
(footnote omitted):5
Disclaimed matter is typically less
significant or less dominant when comparing
marks. Although a disclaimed portion of a
mark certainly cannot be ignored, and the
marks must be compared in their entireties,
one feature of a mark may be more significant
in creating a commercial impression. In re
Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997); In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985); and In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553 (TTAB 1987). ....

.... Here the term COMPASS is the
dominant element of all of the marks.
Indeed, all of the marks begin with that
term. In relation to the relevant services,
the term COMPASS is arbitrary for
entertainment services. The Examining
Attorney respectfully requests that the Board
take judicial notice of the following
dictionary definition of the term "COMPASS."
The term COMPASS means a device used to
determine geographic direction, usually
consisting of a magnetic needle or needles
horizontally mounted or suspended and free to
pivot until aligned with the earth's magnetic
field. See in re Dodd International, Inc.,
222 USPQ 268 (TTAB 1983); In re Canron, Inc.,
219 USPQ 820 (TTAB 1983); TBMP §§ 712 et seq.
(stating that the Board may take judicial
notice of definitions from printed
dictionaries, even if they are not made of
record by the applicant or examining attorney
prior to appeal).

5 Inasmuch as it is settled that the Board may properly take judicial
notice of dictionary definitions, the Examining Attorney's request in
her brief that the Board take judicial notice of the definition of the
term "compass" from The American Heritage Dictionary of the English
Language (4th ed. 2000) is approved. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).

Ser. No. 78475526
6
In consequence thereof, the Examining Attorney further
argues that:
.... Here, the relevant market is the
specific and narrow world of children's
entertainment. Thus, the entire marks in
both cited registrations give the impression
of either a kids' club or a club that has the
characteristic or trait of determining
geographic direction or location. The
Applicant's mark gives the impression of a
cafe that has the characteristic or trait of
determining geographic direction or location.
Therefore, given the nature of the services
here, the term COMPASS is completely
arbitrary. Thus, upon encountering each
mark, consumers must first notice this
identical lead word: COMPASS. Here, the
differences in the marks, .i.e., the addition
of the terms CAFE, KIDS' CLUB and CLUB,
respectively, in the Applicant and
Registrant's marks, do not serve to
distinguish them, such that consumers would
assume that the marks indicate separate
sources for the children's entertainment
services which both Applicant and Registrant
provide.

As to the respective services, the Examining Attorney
asserts that such are related because "[p]eople who seek
recreational activities for their children in the nature of
[Registrant's] jungle gym relays, outdoor sports, pony rides, and
playground games are likely to also encounter the Applicant's
'interactive play areas' for children." Contrary to applicant's
contentions that the respective services are entirely different,
for which the Examining Attorney points out that applicant "does
not provide any evidence in support of that claim," the Examining
Attorney insists that "it is reasonable that both the applicant
and registrant advertise [their respective services] in the same
media and employ the same trade channels in promoting and
Ser. No. 78475526
7
marketing their children's entertainment services." In
particular, she insists that (underlining in original):
In the instant case, both the Applicant
and the Registrant's services cater to
entertainment activities targeted to
children. The Registrant's "recreational
activities" certainly and reasonably
encompass the Applicant's "interactive
areas." The Examining Attorney respectfully
refers the Board's attention to the
supporting evidence attached by the Examining
Attorney in its 11/16/2005 Office Action
where it is shown that "interactive play
areas" are offered as a component/aspect of
recreational activities for children. ....
The circumstances surrounding any marketing
or advertising for "interactive play areas"
and "recreational activities for children"
are such that they would be likely to be
encountered by the same persons under
situations that would give rise to the
mistaken belief that they originate from or
are in some way associated with the same
entity or provider.

As evidence to support her conclusion that
"[e]stablishments that offer children's recreational activities
commonly include interactive play areas as a desirable and
attractive component to activities such as swimming, basketball
courts, playground, and picnic areas for barbecues," the
Examining Attorney has made of record copies of printouts from
several websites which, as asserted in her final refusal, list
"both 'recreational activities' and 'play areas.'" The most
pertinent of such printouts include two articles from the "White
Hutchinson Leisure & Learning Group" website, one of which is
dated November 6, 20056 and, under the headline "Not Mere Child's
Play," reports among other things that:

6 The website indicates that such article also "was published in the
May 1998 issue of Athletic Business."
Ser. No. 78475526
8
Many recreation and fitness centers are
adding separate children's play areas to
broaden their facilities' appeal, increase
value to existing customers, attract new
customers and increase their revenues.
Facilities that can benefit from adding
children's areas include community centers;
fitness, health and wellness centers;
recreational centers; and athletic clubs[;]

and the other article, which is dated November 7, 2005,7
similarly indicates, under the headline "Adding Children's Play &
Entertainment to MWR Fitness and Recreation Facilities," that:
Free standing [Children's Entertainment
Centers or] CECs originally started
exclusively with soft-contained-play
equipment (the maze of plastic tubes, slides
and ball pits), a restaurant area and
birthday party rooms. ....

One example of the current generation of
CECs is Bamboola, a CEC our company recently
designed and produced for the owners of the
Almaden Valley Athletic Club in San Jose,
California. The entertainment center
includes 23 different types of activities for
children of which soft-contained-play is only
one. Activities include ... interactive
water play, ... interactive cooking, ... and
pretend dress-up. Outdoors there is an
adventure play garden with sand play areas
...[;]

and a printout from the website of the Anoka County, Minnesota,
Department of Parks and Recreation which, with respect to its
"Bunker Beach Water Park" facility, lists among other
recreational activities both a children's "ADVENTURE POOL" with
"interactive features [which] let kids play and interact [with]
the water using valves, levers, handles and a water gun" and
"summer birthday parties" for children "with our personal touch!"

7 Such article, according to the website, "is an unedited version of
the article published in the March/April 1999 issue of MWR Today."
Ser. No. 78475526
9
In addition, the Examining Attorney has made of record
copies of various use-based third-party registrations which, she
urges, show the same marks registered for the same or similar
services as those of the applicant and registrant in this case.
Such registrations, in particular, list such services as
"providing facilities for recreation activities, including
swimming and child play areas" (Reg. No. 2,625,619, issued on
September 24, 2002); "entertainment services, namely, providing
games and activities for children; ... [and] providing
recreational areas for others in the nature of children's play
areas" (Reg. No. 2,813,142, issued on February 10, 2004); and
"children's entertainment and amusement centers, namely,
interactive play areas," "providing fitness and exercise
facilities, including swimming pools," and "golf and tennis
instruction" (Reg. No. 2,975,308, issued on July 26, 2005).
Based upon the above arguments and evidence, the
Examining Attorney maintains that confusion is likely. She
distinguishes the two cases principally relied on by applicant by
pointing out that:
The relevant marks in the Hearst case
were VARGA GIRL and VARGAS. There, the
dominant portion of the marks is not
identical, as is the case here. In Conde
Nast, the marks in dispute were COUNTRY
VOGUES and VOGUE. Unlike the instant case,
the dominant term of both marks was not
identical and the dominant portion did not
appear in the beginning of the mark.

By contrast, the Examining Attorney maintains that "[h[ere, the
term COMPASS is virtually indistinguishable and the addition of
such terms as 'KIDS' CLUB,' 'CLUB,' or 'CAFE' is insufficient to
Ser. No. 78475526
10
distinguish between the marks as a whole and ... avoid
confusion." Instead, quoting from In re Smith & Mehaffey, 33
USPQ2d 1531, 1533 (TTAB 1994), she concludes that (italics in
original):
"Although consumers may well note the
differences in the marks, they will assume
that the differences indicate variant marks
of a single source, rather than identify
separate sources ..." for the recreational
activities and interactive play areas. ....

Given the arbitrary nature of the term
COMPASS and that the term appears in the same
order in all of the marks, it is likely for
consumers to mistakenly believe that the
applicant's services are associated or
somehow connected to the registrant's
services. .... Therefore, any doubt as to
the existence of a likelihood of confusion
must be resolved in favor of the registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d
[840], 6 USPQ2d 1025 (Fed. Cir. 1988); Lone
Star Mfg. Co.[, Inc.] v. Bill Beasley, Inc.,
498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

We agree with the Examining Attorney that
contemporaneous use by applicant of the mark "COMPASS CAFE" in
connection with his services of providing "children's
entertainment and amusement centers, namely, interactive play
areas," is likely to cause confusion with registrant's use of the
marks "COMPASS KIDS' CLUB" and "COMPASS CLUB" in connection with
its various "entertainment services, namely, arranging and
conducting recreational activities," including those specifically
provided to children. As the Examining Attorney persuasively
argues, registrant's marks are dominated in each instance by the
arbitrary term "COMPASS," given the descriptiveness of the terms
"KIDS' CLUB" and "CLUB" (as evidenced by the disclaimers thereof
in the cited registrations). While, by contrast, the word "CAFE"
Ser. No. 78475526
11
in applicant's mark cannot be said to be descriptive of the
services for which applicant is presently seeking registration of
his mark,8 the term "COMPASS" in such mark is arbitrary as
applied to applicant's services and, also like each of
registrant's marks, such term is notably the first element
thereof. Given the prominence of the term "COMPASS" in the marks
at issue, it is apparent that when considered in their
entireties, they are substantially similar in sound, appearance
and overall commercial impression. While, nonetheless, the term
"CAFE" in applicant's mark is different in meaning from the terms
"KIDS' CLUB" and "CLUB" in registrant's marks, the overall
difference in connotation of the marks at issue is outweighed by
the substantial similarities shared by such marks in their
entireties as to sound, appearance and commercial impression due
to the presence of the arbitrary term "COMPASS" as the initial
and principal source-indicative element of each mark. If the
respective marks were therefore to be used in connection with the
same or commercially related services, confusion as to the source
or sponsorship of such services would be likely to occur.
In this case, we additionally concur with the Examining
Attorney that the services at issue are commercially related. It
is well settled, in this regard, that as the Examining Attorney
has observed in her brief, goods and/or services need not be

8 As recounted by the Examining Attorney in discussing the prosecution
of the application, applicant originally sought registration of his
mark for services which included "restaurant services." The Examining
Attorney's corresponding requirement for a disclaimer of the generic
term "CAFE" was mooted by applicant's subsequent amendment of the
identification of his services to delete "restaurant services."

Ser. No. 78475526
12
identical or even competitive in nature in order to support a
finding of likelihood of confusion. It is sufficient, instead,
that the goods and/or services are related in some manner and/or
that the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons in
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Here, both applicant and registrant provide children's
recreational entertainment services in the nature of interactive
play areas or other forms of play activities. As the evidence
provided by the Examining Attorney helps to make clear, services
like applicant's "children's entertainment and amusement centers,
namely, interactive play areas" are likely to be rendered as part
of other recreational entertainment services directed at
children, including such playtime activities as the "arts and
crafts classes, pizza parties, movies, beach and swimming
parties, playground games, petting zoos, camp-outs, pony rides,
and outdoor sports" offered by registrant as well as its "golf,
tennis, table tennis, air hockey and billiards tournaments,
jungle gym relays, boat outings, ... dance classes, ... bingo
games ... and birthday parties." Plainly, parents seeking
recreational activities as entertainment for their children would
be likely to regard applicant's services as commercially related
Ser. No. 78475526
13
to those offered by registrant, particularly when such services
are rendered under substantially similar marks.
We accordingly conclude that customers and prospective
consumers who are familiar or acquainted with registrant's
"COMPASS KIDS" CLUB" mark and/or its "COMPASS CLUB" mark for its
various "entertainment services, namely, arranging and conducting
recreational activities" which are respectively provided under
such marks, would be likely to believe, upon encountering
applicant's substantially similar "COMPASS CAFE" mark for the
services of providing "children's entertainment and amusement
centers, namely, interactive play areas," that such commercially
related services emanate from, or are sponsored by or associated
with, the same source. In particular, notwithstanding the
difference in meaning conveyed by the presence in applicant's
mark of the term "CAFE" rather than the terms "KIDS' CLUB" or
"CLUB" which appear in registrant's marks, the substantial
overall similarities in sound, appearance and commercial
impression in the marks at issue, which are imparted thereto by
the arbitrary term "COMPASS" as the first element thereof,
outweigh the difference in meaning and create a likelihood of
confusion when respectively used in connection with applicant's
and registrant's services. To the extent, however, that there is
any doubt as to our conclusion in this regard, we resolve such
doubt, as we must, in favor of the registrant. See, e.g., In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948
(Fed. Cir. 2004); In re Hyper Shoppes (Ohio), Inc., supra at 6
USPQ2d 1026; In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d
Ser. No. 78475526
14
156, 223 USPQ 1289, 1290 (Fed. Cir. 1984; and In re Pneumatiques
Caoutchouc Manufacture et Plastiques Kelber-Columbes, 487 F.2d
918, 179 USPQ 729, 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.