Shenzhen Tomtop Technology Co., Ltd.

Trademark Trial and Appeal Board

Sep 21, 2018

No. 87286184 (T.T.A.B. Sep. 21, 2018)

Mailed: September 21, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Shenzhen Tomtop Technology Co., Ltd.
————
Serial No. 87286184
————

John Alumit of Alumit IP,
for Shenzhen Tomtop Technology Co., Ltd.
Rebecca T. Caysido, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
————
Before Bergsman, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Shenzhen Tomtop Technology Co., Ltd. (“Applicant”) seeks registration on the
Principal Register of the stylized mark TOOARTS, as displayed below, for “Busts of
porcelain, ceramic, earthenware and glass; China ornaments; Figurines of porcelain,
ceramic, earthenware and glass; Statues of porcelain, ceramic, earthenware and
glass; Works of art of porcelain, ceramic, earthenware and glass” in International
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87286184
2
Class 21.1

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark TOO (in standard characters) for
use, in relevant part, with “plates, glass beverageware” in International Class 21.2
When the refusal was made final, Applicant appealed. We affirm the refusal to
register.3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key

1 Application Serial No. 87286184, filed on December 31, 2016, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming April 20,
2016 as the date of first use and July 5, 2016 as the date of first use in commerce. The
description of the mark reads as follows: “The mark consists of the stylized wording
‘TOOARTS.’” Color is not claimed as a feature of the mark.
2 Registration No. 4452084, issued on December 17, 2013. The registration also identifies the
following goods: “furniture and pillows” in International Class 20 and “rugs” in International
Class 27.
3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 87286184
3
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
A. Similarities of the Marks
We initially address the first du Pont factor, “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the [owners].” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Applicant’s mark is . The cited mark is TOO. The sole differences
between the marks is the inclusion of the term ARTS in Applicant’s mark, as well as
the stylization of Applicant’s mark.
Applicant argues that its applied-for mark contains double the amount of letters
than the cited mark and, as a result, the marks differ in appearance and sound.4

4 Applicant’s Appeal Brief, p. 5, 4 TTABVUE 6.
Serial No. 87286184
4
Additionally, Applicant contends that there is one unbroken curvy line forming the
words TOOARTS, thereby making a virtually unseverable mark in which consumers
would only view its mark as TOOARTS and not “TOO ARTS.”5 As such, Applicant
concludes that the overall appearance, sound, connotation and commercial
impressions of the marks at issue would be different, particularly since TOOARTS
has no meaning.6
Applicant further contends that even if Applicant’s mark were to be viewed as two
separate words, the marks still differ in connotation and commercial impression
because prospective consumers would understand the cited mark to mean “also,”
while the same consumers would view Applicant’s mark as “also arts” or “extremely
arts.” Applicant also argues that if its mark is viewed as two words, the addition of
ARTS in its mark sufficiently distinguishes the marks in sound, appearance and
connotation so as to avoid any confusion.7
We are not persuaded by Applicant’s arguments. There is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Keeping this principle in mind, we observe

5 Id.
6 Id. at pp. 5-6; 4 TTABVUE 6-7.
7 Id.
Serial No. 87286184
5
that Applicant’s and Registrant’s marks are comprised, either in whole or in part, of
the term TOO. Moreover, the entirety of the cited mark TOO is encompassed within
Applicant’s mark; in such cases, confusing similarity has often been found. See In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar
to ML MARK LEES); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526
F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL and BENGAL LANCER and
design found to be similar); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153
USPQ 406, 407 (CCPA 1967) (THE LILLY similar to LILLI ANN); In re United States
Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE similar to CREST
CAREER IMAGES). In addition, the term TOO is the first element in Applicant’s
mark. Consumers are also generally more inclined to focus on the first word, prefix,
or syllable in any trademark or service mark. See Palm Bay Imps., 73 USPQ2d at
1692; Presto Prods., Inc. v. Nice-Pak Prods., 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” when making purchasing decisions).
Additionally, when viewing Applicant’s mark, the term TOO is likely to be
accorded more weight by consumers because the remaining wording, i.e., ARTS, is
merely descriptive, if not generic, of Applicant’s art goods, as demonstrated by the
evidence of record.8 Matter that is descriptive of or generic for a party’s goods is

8 The Examining Attorney submitted a dictionary definition of the term “arts” which is
defined as “the conscious use of skill and creative imagination especially in the production of
aesthetic objects * the art of painting landscapes; also: works so produced * a gallery for
modern art.” See March 28, 2017 Office Action, TSDR p 10. Additionally, the Examining
Attorney submitted the dictionary definition of the phrase “work of art” which is defined as
Serial No. 87286184
6
typically less significant or less dominant in relation to other wording in a mark. See
Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB
2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir.
2004)). Thus, this wording is less significant in terms of affecting the applied-for
mark’s commercial impression, and renders the wording “TOO” the more dominant
element of Applicant’s mark.
Furthermore, the cited mark is a standard character mark, and marks appearing
in standard character form may be displayed in any stylization, font, color and size,
including the identical stylization of Applicant’s TOOARTS mark, because the rights
reside in the wording and not in any particular display or rendition. See Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where one party asserts rights in
no particular display. By presenting its mark merely in a typed drawing, a difference
cannot legally be asserted by that party.”) Thus, because the cited mark may be
displayed in the identical or in a similar manner as Applicant’s mark, the stylization
of Applicant’s mark is insufficient to distinguish the parties’ respective marks.
While we have not overlooked the stylization of Applicant’s mark or the inclusion
of the term ARTS in Applicant’s mark, we nonetheless conclude that Applicant’s mark
and the cited TOO mark, when considered in their entireties, are substantially

“a product of one of the fine arts; especially: a painting or sculpture of high artistic quality.”
Id., TSDR p. 11. Based on this evidence and inasmuch as Applicant’s identification of goods
includes “works of art of porcelain, ceramic, earthenware and glass,” we find that the ARTS
portion of Applicant’s mark is merely descriptive, if not generic, of Applicant’s identified
goods.
Serial No. 87286184
7
similar. Therefore, the first du Pont factor supports a conclusion that confusion is
likely
B. Strength of the Cited TOO Mark
Applicant argues that the word “too” is a weak term when used in connection with
goods similar to those identified in the cited registration, thereby entitling the cited
mark to a narrow scope of protection.9 In support of its position, Applicant submitted
the following seven third-party registrations:10
• TOO COLD TO HOLD (Reg. No. 4832253) for, among other things, “drink-
ware, namely, beverageware; and insulating sleeve holders for beverage
cups and cans” in International Class 21;

• I’M TOO SEXY (Reg. No. 41112348) for, among other things, “Coffee cups,
tea cups and mugs; Coffee mugs; Cups and mugs; Earthenware mugs; Glass
mugs; Porcelain mugs” in International Class 21;

• CABELL’S TOO (Reg. No. 3191414) for “Hand painted pottery, namely,
plates, dishes, trays, platters, bowls, mugs, and pitchers” in International
Class 21;

• TOO TOUGH TO TAME (Reg. No. 1822316) for, among other things,
“household utensils; namely, mugs, shot glasses, drinking glasses, fruit jars
and decanters” in Class 21;

• TOOTERS (Reg. No. 3282218) for “Plastic and glass drink ware, namely,
drinking glasses, shot glasses, and tubular shaped drinking containers” in
International Class 21;
• (Reg. No. 4555790) for “cup” in International Class 21; and

• TOOLOUD (Reg. No. 5125182) for, among other things, “water bottles sold
empty; Insulating sleeve holders for bottles; Coffee mugs; Plastic and hard-
board coasters; Coasters not of paper and other than table linen; Portable

9 Applicant’s Appeal Brief, p. 6, 4 TTABVUE 7.
10 September 26, 2017 Response to Office Action, TSDR pp. 6-12.
Serial No. 87286184
8
beverage coolers for cans and bottles; oven mitts; potholders” in Interna-
tional Class 21.

Additionally, Applicant submitted Internet evidence demonstrating commercial
use of the marks CABELL’S TOO, TOOTERS, TOOLOUD, TOO COLD TO HOLD
and TOO TOUGH TO TAME which are subject to the third-party registrations
identified above, as well as the following additional mark used in connection with
beveragewear: TOO SEXY COFFEE MUGS.11
The Federal Circuit has stated that evidence of the extensive registration and use
of a term by others can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Moreover, under the sixth
du Pont factor, we must consider evidence of “[t]he number and nature of similar
marks in use on similar goods.” du Pont, 177 USPQ at 567. This is sometimes referred
to as market or commercial strength, referring to consumers’ association between a
mark and the source of the goods. See In re Chippendales USA, Inc., 622 F.3d 1346,
96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d
1458, 1476 (TTAB 2014); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881
(TTAB 2006).

11 Id., TSDR pp. 13-18.
Serial No. 87286184
9
Here, the wording of the marks subject to the third-party registration submitted
by Applicant differ in nature from the cited mark. Specifically, the third-party
registrations contain wording that is suggestive or arbitrary in addition to the word
“TOO.” With the addition of suggestive or arbitrary wording, the commercial
impressions of the marks are truly different. A mark is suggestive if some
imagination, thought, or perception is needed to understand the nature of the goods
described in the wording of the mark; whereas a descriptive term immediately and
directly conveys some information about the goods. See Stoncor Grp., Inc. v. Specialty
Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1755 (Fed. Cir. 2012)); TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) §1209.01(a) (Oct. 2017).
In particular, the marks TOO COLD TO HOLD, TOO TOUGH TO TAME, and
TOOLOUD include wording that is suggestive and arbitrary as applied to the goods;
thereby, creating connotations that differ from the cited mark. The mark I’M TOO
SEXY is a phrase, conveying a general message to the public from the person using
the goods. The mark CABELL’S TOO uses its house mark as a possessive as the
beginning of the mark, changing the impression of the mark to the house mark,
CABELL’S. The additional letters in the mark TOOTERS create an arbitrary word.
The mark, BE A HEALTH NUT TOO, is also a lengthy phrase, conveying a general
message to the public. As such, each of the third-party registrations use the word
“TOO” in their mark so as to sufficiently change the meaning and commercial
Serial No. 87286184
10
impression of the word “TOO”. Accordingly, we find that Applicant’s third-party
registration evidence, as well as the corresponding evidence of use, does not
demonstrate that the cited mark is weak or diluted when used in connection with the
goods identified in the cited registration.
Thus, the sixth du Pont factor regarding the nature and extent of similar marks
on similar goods is neutral.
C. Similarities of the Goods
We next turn to the comparison of the goods, the second du Pont factor, keeping
in mind the greater the degree of similarity between the marks, the lesser the degree
of similarity between the goods necessary to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). In making our
comparison, we consider the goods as identified in Applicant’s application vis-à-vis
the goods identified in the cited registration. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Sys., Inc. v. Hous. Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.2d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002). At the outset, we note that the goods in question are not
identical. However, it is not necessary that the products of the parties be similar or
even competitive in nature in order to support a finding of likelihood of confusion, it
being sufficient that the goods are related in some manner or that the circumstances
surrounding their marketing be such that they would be likely to be encountered by
the same persons under circumstances that would give rise, because of the marks
employed thereon, to the mistaken belief that they emanate from the same source.
Serial No. 87286184
11
Coach Servs., 101 USPQ2d at 1722; see also In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991). Evidence of relatedness may include news articles
and/or evidence from computer databases showing that the relevant goods are used
together or used by the same purchasers; advertisements showing that the relevant
goods are advertised together or offered by the same manufacturer or dealer; and/or
copies of prior use-based registrations of the same mark for both Applicant’s goods
and the goods listed in the cited registration. In re Davia, 110 USPQ2d 1810, 1817
(TTAB 2014) (finding pepper sauce and agave related where evidence showed both
were used for the same purpose in the same recipes and thus consumers were likely
to purchase the products at the same time and in the same stores). The issue is not
whether purchasers would confuse the goods, but rather whether there is a likelihood
of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
The Examining Attorney made of record third-party, use-based registrations, each
identifying, under a single mark, both Applicant’s and Registrant’s goods.12 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 goods listed therein are of a kind which may
emanate from a single source under a single mark. See In re Albert Trostel & Sons

12 March 28, 2017 Office Action, TSDR pp. 22-52; October 20, 2017 Final Office Action, TSDR
pp. 54-89.
Serial No. 87286184
12
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). For example:
• (Reg. No. 4226439) for, among other things,
“picture frames; mirrors; plastic key chains; resinous works of art;
plastic works of art; plaster works of art; pillows” in International
Class 20 and “chinaware, namely, plates, mugs, cups and platters of
china; porcelain wares, namely, plates, piggy banks and mugs; metal
plates; shot glasses; beverage glassware; mugs, glass ornaments;
glass works of art; china works of art; porcelain works of art; vacuum
bottles; mixing and serving spoons; cooking and serving forks,
toothpick containers; coasters for glasses and mugs not of paper or
table linen” in International Class 21;

• JUNGLENUTS (Reg. 4384415) for various goods, including
“beverage glassware; drinking glasses; drinking glasses, namely,
tumblers; earthenware basins; earthenware mugs; figurines made
out of fiberglass; figurines of glass, porcelain; plates; sculptures of
earthenware, fiberglass; serving trays; soap dishes; statues of china,
earthenware, glass, terra cotta, porcelain; tea pots; tea pots not of
precious metal; vases; works of art of china, earthenware, glass,
porcelain, terra cotta; house ware and glassware, namely, shot
glasses; holiday ornaments of glass; table center sculpture made of
ceramic, china, crystal, earthenware, glass, porcelain; wall hangings
made of porcelain” in International Class 21;

• MBW (Reg. 4403994) for various goods, including “drinking glasses;
Drinking glasses, namely, tumblers; Earthenware basins;
Earthenware mugs; Figurines made out of fiberglass; Figurines of
glass and porcelain; Plates; Sculptures of earthenware, fiberglass;
Statues of china, earthenware, glass, terra cotta, porcelain; Works of
art of china, earthenware, glass, porcelain, terra cotta; house ware
and glassware, namely, shot glasses; table center sculpture made of
ceramic, china, crystal, earthenware, glass, porcelain; porcelain
figurines that may be hung on walls” in International Class 21;

• MARY ELIZABETH ARTS (ARTS disclaimed) (Reg. No. 4691075) for
“Beverage glassware; Cake plates; Cocktail glasses; Coffee cups, tea
cups and mugs; Cups and mugs; Decorative plates; Dessert plates;
Dishes and plates; Drinking glasses; Glass beverageware; Glass
carafes; Glass dishes; Glass mugs; Glass storage jars; Margarita
Serial No. 87286184
13
glasses; Martini glasses; Pilsner drinking glasses; Plates for hors
d'oeuvre; Serving platters; Shot glasses; Wine glasses; Works of art
of ceramic, glass or porcelain” in International Class 21;

• RICHLAND (Reg. No. 4864150) for, among other things,
“dinnerware; beverage glassware; candlesticks of glass; containers
for household or kitchen use; glass bowls; glass dishes; coasters made
of glass; decorative beads made of glass; glass jars; works of art made
of glass; decorative works made of glass; vases; napkin rings; napkin
holders not of precious metal; serving trays; and disposable
dinnerware, namely, plates, bowls, cups, glasses, and serving trays”
in International Class 21;

• APPALACHIAN TERROIR (Reg. No. 4933875) for, among other
things, “Dinnerware; beverage glassware; stemware; ceramic
sculptures, vases, vessels, bowls, plates, and pots; glass bowls;
candlesticks of glass; containers for household use not of precious
metal; works of art made of glass, china, crystal, porcelain or
earthenware; flowerpots; figurines of glass, porcelain, or
earthenware” in International Class 21;

• JACK AND JILL (Reg. No. 4064135) for goods including “beverage
glassware; beverageware; ceramic figurines; ceramic sculptures,
dinnerware; dishes and plates; figurines of glass, porcelain,
earthenware, terra cotta; glass beverageware” in International Class
21;

• iDab (Reg. No. 4288940) for, among other things, “Busts of crystal,
china, terra cotta, earthenware, glass, porcelain; Figures of crystal,
china, terra cotta, earthenware, glass, porcelain; Figurines of crystal,
china, terra cotta, earthenware, glass, porcelain; Glass
beverageware; Sculptures of china, crystal, earthenware, terra cotta,
glass, porcelain; Stained glass figurines; Statues of china, crystal,
earthenware, glass, terra cotta, porcelain; Statuettes of china,
crystal, earthenware, glass, terra cotta, porcelain; Unfinished glass
for vehicle windows; Unwrought glass; Works of art made of glass;
Works of art of china, crystal, earthenware, terra cotta, glass,
porcelain” in International Class 21; and

• GORJUSS (Reg. No. 5299762) for, among other things,
“Beverageware and dinnerware of glass, porcelain, china and
earthenware; figurines of porcelain, earthenware, terracotta,
ceramic, crystal or glass; plates, drinking glasses, mugs; dishes;
works of art of porcelain, terracotta or glass; pottery, namely,
sculptures of earthenware; cups and mugs not of precious metal” in
Serial No. 87286184
14
International Class 21.

The Examining Attorney also submitted Internet evidence demonstrating that that
plates and glass beveragewear have been viewed as works of art. 13 For example, the
evidence from the Houzz commercial website illustrates that hand blown glass plate
is an “art glass plate.”14 The evidence from Venice Clay Artists website also depicts
many different styles of “art plates”.15 Additionally, evidence derived from the Artful
Home website lists “Drinkware & Barware” as a type of “art glass” and contains
images of several different types of glass beverageware as art.16 Furthermore,
Chinese porcelain is also viewed as artwork.17 For example, the evidence from the
Good Orient website demonstrates that an artist creates the ceramic and porcelain
chinaware, and the goods are sold, labelled as a “Decorative Plate.”18
In view of the evidence of record, as well as the fact that Applicant has not
disputed the relatedness of the goods at issue, we find that Applicant’s goods and
Registrant’s goods are commercially related and are the types of goods that have been
offered under a single mark by a single entity such that, when identified by
substantially similar marks, as is the case here, confusion as to source is likely. Cf.
In re Shell Oil Co., 922 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven

13 March 28, 2017 Office Action, TSDR pp. 12-21; and October 20, 2017 Final Office Action,
TSDR pp. 9-53.
14 March 28, 2017 Office Action, TSDR p. 13.
15 October 20, 2017 Final Office Action, TSDR pp. 9-14.
16 Id., TSDR pp. 15-24.
17 March 28, 2017 Office Action, TSDR p. 17.
18 Id., TSDR p. 20.]
Serial No. 87286184
15
when goods or services are not competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common source.”).
Thus, the second du Pont factor favors a finding of likelihood of confusion.
D. Similarities in Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because there are no limitations as to channels of trade or classes of
purchasers in either the application or cited registration and the identified goods are
related, we must presume that the goods identified in Applicant’s application and the
cited registration travel through all normal and usual trade channels for such goods,
and that they are sold to all classes of prospective purchasers for those goods, i.e., the
average consumer of household items. Stone Lion Capital, 110 USPQ2d at 1161; see
also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are presumed to
travel in all normal channels ... for the relevant goods”). The only probative evidence
relating to the trade channels through which the goods at issue travel is the third-
party website evidence submitted by the Examining Attorney discussed above. This
evidence shows that Applicant’s goods and Registrants’ goods are the type of goods
that may be provided in the same online marketplace to similar or overlapping
purchasers. Therefore, the third du Pont factor also weighs in favor of finding a
likelihood of confusion.
E. Applicant’s Existing Registration of in Class 6
In its application, Applicant claims ownership of Registration No. 5250767.
Applicant contends that the mark subject to this registration is the same stylized
Serial No. 87286184
16
TOOARTS mark as in its involved application but registered in connection with
“bronze holiday ornaments; busts of common metal; figurines of common metal;
statues of common metal; statuettes of common metal; works of art of common metal”
in International Class 6.19 Applicant argues that since the examining attorney who
examined the underlying application for Registration No. 5250767 did not issue a
refusal based on the cited registration in this appeal, its current application should
be approved for the sake of consistency and fairness.20
We initially note that although Applicant claimed ownership of Registration No.
5250767 in its involved application, Applicant did not submit evidence of this
registration into record. Notwithstanding, since the Examining Attorney addressed
the issues regarding Applicant’s prior registration on the merits and did not object on
Applicant’s reliance thereon, we deem the registration stipulated into the record.
We consider Applicant’s prior registration under the thirteenth du Pont factor,
which “relates ‘to any other established fact probative of the effect of use.’” du Pont,
177 USPQ at 567. Our decision in In re Strategic Partners, Inc., 102 USPQ2d 1397
(TTAB 2012) is instructive. In Strategic Partners, applicant owned a registered mark
that had coexisted with the cited mark for over five years. Because applicant’s prior
registration was over five years old, it was not subject to challenge by the owner of
the cited registration based on a claim of likelihood of confusion. Id. at 1399.

19 Applicant’s Appeal Brief, p. 6, 4 TTABVUE 7.
20 Id. at pp. 6-7, 4 TTABVUE 7-8.
Serial No. 87286184
17
In finding no likelihood of confusion in Strategic Partners, the Board provided the
following explanation:
[T]he present case involves the unique situation presented
by the coexistence of applicant’s existing registration with
the cited registration for over five years, when applicant's
applied-for mark is substantially similar to its existing
registered mark, both for identical goods. When we
consider these facts under the thirteenth du Pont factor,
we find in this case that this factor outweighs the others
and leads us to conclude that confusion is unlikely.
Id. at 1400.
While we acknowledge that refusing to register the mark now before us may be
considered inconsistent with the issuance of Applicant’s earlier registration and
although we are sympathetic to Applicant’s position on this point, we do not consider
the issuance of Applicant’s prior registration to be a dispositive factor against a
finding of likelihood of confusion. As discussed above, the Examining Attorney’s
refusal is justified on the record in this case. Unlike the situation in Strategic
Partners, Applicant’s earlier registration was only issued on July 25, 2017 and,
therefore, is still subject to cancellation by the owner of the cited registration on the
basis of priority and likelihood confusion, an important distinction from Strategic
Partners. See Section 14 of the Trademark Act, 15 U.S.C. § 1064. We find, on this
record, that the existence of Applicant’s prior registration does not outweigh the other
du Pont factors. To hold otherwise would give preclusive effect to the decision of the
examining attorney in granting Applicant’s prior registration, and the Board is not
bound by the decisions of examining attorneys. To the contrary, “the [US]PTO must
decide each application on its own merits, and decisions regarding other registrations
Serial No. 87286184
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do not bind either the [USPTO] or [the reviewing] court.” See In re Boulevard Entm’t,
334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003). The issuance of Applicant’s
prior registration does not compel the issuance of a second registration if it would
otherwise be improper to do so. Cf. In re Shinnecock Smoke Shop, 571 F.3d 1171, 91
USPQ2d 1218, 1221 (Fed. Cir. 2009).
In that regard, Applicant was not without any remedy against the refusal of
registration in this case. Applicant could have sought a suspension of this appeal or
the prosecution of its application after receiving the Section 2(d) refusal to pursue (1)
a cancellation proceeding against the cited registration, if appropriate, or (2) possibly
a consent agreement with the Registrant. The record demonstrates, however, that
Applicant pursued neither of these alternatives. Overall, this is not a case in which
the existence of Applicant’s earlier registration outweighs the impact of the other du
Pont factors on the issue of a likelihood of confusion.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are substantially similar; that Applicant’s identified
goods are commercially related to Registrants’ goods and move in similar or
overlapping trade channels; and that they would be offered to the same or similar
classes of purchasers, we conclude that Applicant’s mark, as used in
connection with the identified goods, so resembles the cited mark TOO in standard
characters as to be likely to cause confusion or mistake, or to deceive under Section
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2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark under Section
2(d) of the Trademark Act is affirmed.