TeKanAid Solutions Inc.

Trademark Trial and Appeal Board

Sep 22, 2020

88398796 (T.T.A.B. Sep. 22, 2020)

Mailed: September 22, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re TeKanAid Solutions Inc.
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Serial No. 88398796
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Francis John Ciaramella of Francis John Ciaramella PLLC
for TeKanAid Solutions Inc.

Oreoluwa Alao, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
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Before Taylor, Adlin and English, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant TeKanAid Solutions Inc. seeks registration of TOYS TELL TALES, in
standard characters, with a voluntary disclaimer of “‘TOYS’ or ‘TALES,’” for “toy cars;
toy figures; toy vehicle track sets and roadways and accessories therefor; toy vehicles;
electronic toy vehicles” in International Class 28.1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the previously registered mark
TOYTALES, in standard characters, for a wide variety of toys in International Class

1 Application Serial No. 88398796, filed April 23, 2019 under Trademark Act Section 1(a), 15
U.S.C. § 1051(a), based on first use in commerce on April 16, 2019.
This Opinion is Not a
Precedent of the TTAB
Serial No. 88398796
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28, including “toy cars … toy figures … toy vehicle track sets and roadways and
accessories therefor … toy vehicles … electronic toy vehicles… 2 (the “Registration”),
that use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion. After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. Applicant and the Examining Attorney filed
briefs.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key 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.”).

2 Registration No. 5725179, issued April 16, 2019.
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A. The Goods, Channels of Trade and Classes of Consumers
The goods are identical because each of Applicant’s identified goods is also
identified in the cited Registration, word for word. Because the goods are identical,
we must presume that the channels of trade and classes of purchasers are as well.
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018);
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).
The identity of Applicant’s and Registrant’s goods and their overlapping channels
of trade and classes of purchasers not only weigh heavily in favor of finding a
likelihood of confusion, but also reduce the degree of similarity between the marks
necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
B. The Marks
The marks are quite similar “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). Indeed, they both begin with TOY and
end with TALES, and the only distinction between them is that Applicant’s mark
incorporates the plural form of TOY and includes the word TELL in between TOYS
and TALES. This relatively minor distinction is insufficient to avoid confusion.
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Perhaps most importantly, the marks convey the same meaning, as Applicant
admits. According to Applicant, its “mark suggests multiple meanings: 1) that
Applicant’s goods are toys; and 2) that Applicant’s toys tell a story or are particularly
imaginative (i.e., tell a tale).” 7 TTABVUE 7 (Applicant’s Appeal Brief at 6)
(emphasis added). We agree. Thus, Applicant’s mark conveys that Applicant’s goods
“tell a tale,” and the cited mark is TOYTALES, which conveys that Registrant’s toys
also “tell a tale.” In other words, while TELL is absent from the cited mark, the term
merely clarifies that the toys are the source of the TALES, but does not significantly
change the mark’s essential meaning.
In reaching this conclusion, we have kept in mind: (1) “the fallibility of memory
over a period of time;” (2) that the “average” purchaser “normally retains a general
rather than a specific impression of trademarks;” and (3) that Applicant’s and
Registrant’s marks both identify “toys” which tell or are otherwise associated with
“tales.” Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). See also
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks
must be considered in light of the fallibility of memory”) (citation, internal quotation
marks, and ellipsis omitted). Consumers familiar with Registrant’s TOYTALES toy
cars and figures who encounter Applicant’s tale-telling toys sold under a similar name
may, whether they remember the entirety of Registrant’s mark or not, assume that
there is some type of connection or affiliation between Applicant and Registrant.
Obviously, the marks also look and sound similar, because they both begin with
TOY(S) and end with TALES. The word TELL in Applicant’s mark, which is absent
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from Registrant’s, changes the appearance and sound of Applicant’s mark somewhat,
but not enough to avoid confusion because “[t]he 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 parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901,
1905 (TTAB 2007)). Here, while any consumers who encounter the marks together
may notice the relatively minor visual and aural differences between them, we must
also be concerned with consumers who are first exposed to just one of the marks, and
do not encounter the other until days, weeks or months later.
Applicant makes much of its voluntary disclaimer of TOYS or TALES, arguing
that it “renders the dominant (and only protectible) (sic) portion of the mark as
TELL.” 7 TTABVUE 5. However, as the Examining Attorney points out, Applicant
was advised in the July 3, 2019 Office Action that disclaiming TALES was “not
required” because the term is registrable. See TMEP § 1213.01(c) (2018). It is settled
that “[t]he technicality of a disclaimer in [an] application to register [a] mark has no
legal effect on the issue of likelihood of confusion.” In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). More specifically, voluntarily disclaiming
terms “as a tactical strategy, believing it would assist in avoiding a holding of
likelihood of confusion … cannot affect the scope of protection to which another’s
mark is entitled.” Id. In short, Applicant is improperly dissecting its mark, and
Serial No. 88398796
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contrary to Applicant’s argument in its Appeal Brief, the Examining Attorney is not.
7 TTABVUE 5.
Applicant’s and Registrant’s marks convey the same meaning and create the same
commercial impression – “toys” which tell or otherwise relate to “tales.” The apparent
but insubstantial differences between the marks’ appearance and sound are not
enough to overcome their similar commercial impressions. This factor also weighs in
favor of finding a likelihood of confusion.
C. Consumer Sophistication and Care
Applicant argues that Applicant’s and Registrant’s goods “can be extremely
expensive,” and that their purchasers are “sophisticated.” 7 TTABVUE 9. There is no
evidence supporting this mere argument. Moreover, we do not need evidence to know
that various types of “toy cars” and “toy figures” are ubiquitous, or that some are so
inexpensive that they are included as “prizes” in, for example, cereal boxes.
In any event, we must base our decision on the “least sophisticated potential
purchasers” for the goods, which as identified could encompass “hi-tech” toy cars and
toy figures which feature and “tell tales” through powerful computers, or more
traditional cars and figures made of plastic without any expensive or complicated
components. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162-63 (Fed. Cir. 2014).3 This factor is neutral.

3 The goods are not identified as toy cars and figures which “tell tales.” Rather, they are
identified more simply and generally as “toy cars” and “toy figures,” and thus could include
cars and figures which do not tell tales at all, or toys and figures which tell tales not through
computers, but instead through included, pre-printed pamphlets made of inexpensive paper.
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D. Fame of the Cited Mark
Applicant correctly points out that there is no evidence that the cited mark is
famous, but that is irrelevant. Indeed, “the owner of the cited registration is not a
party to this ex parte appeal, and the Examining Attorney is under no obligation to
demonstrate the fame of a cited mark.” In re Integrated Embedded, 120 USPQ2d
1504, 1512 (TTAB 2016). See also In re Majestic Distilling Co., 65 USPQ2d at 1205
(“Although we have previously held that the fame of a registered mark is relevant to
likelihood of confusion, DuPont, 476 F.2d at 1361, 177 USPQ at 567 (factor five), we
decline to establish the converse rule that likelihood of confusion is precluded by a
registered mark’s not being famous.”); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1086
(TTAB 2016) (“in an ex parte appeal the ‘fame of the mark’ factor is normally treated
as neutral because the record generally includes no evidence as to fame.”); In re Davey
Prods. Pty Ltd. 92 USPQ2d 1198, 1204 (TTAB 2009) (“[I]t is settled that the absence
of such evidence is not particularly significant in the context of an ex parte
proceeding.”); In re Big Pig Inc., 81 USPQ2d 1436, 1439 (TTAB 2006) (“It is not
necessary that a registered mark be famous to be entitled to protection against a
confusingly similar mark.”).
E. Actual Confusion
Similarly, Applicant’s reliance on the absence of actual confusion is misplaced,
because there is no evidence regarding the extent of Applicant’s use of its mark , or
the extent of Registrant’s use of the cited mark. Therefore, we cannot gauge whether
or the extent to which there has been an opportunity for confusion to occur if it were
likely to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12
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USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion
is of very little, if any, probative value here because (1) no evidence was presented as
to the extent of ETF’s use of the VITTORIO RICCI mark on the merchandise in
question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB
1984). In any event, a lack of evidence of actual confusion carries little weight in an
ex parte case such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t is
unnecessary to show actual confusion in establishing likelihood of confusion.” Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir.
1983). This factor is neutral.
F. The Number and Nature of Similar Marks Used on Similar Goods
Applicant argues that the cited mark is commercially weak based on third-party
uses of similar marks for similar goods. However, the only evidence Applicant relies
upon in support of this argument is several third-party registrations. February 19,
2020 Request for Reconsideration TSDR 19-31. Third-party registrations do not
establish that a mark is in use, and therefore there is no basis to find that Registrant’s
mark is commercially weak. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1998) (third-party registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public is familiar with them”).
Furthermore, while the third-party registrations Applicant relies upon all contain
the word TALE/TALES, only one also includes the word TOY (Reg. No. 5516270), and
it is presented in a distinctive format which makes it much less similar to Registrant’s
mark than is Applicant’s mark:
Serial No. 88398796
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February 19, 2020 Request for Reconsideration TSDR 29. This factor is neutral.
II. Conclusion
The goods are identical and presumed to travel in overlapping channels of trade
to the same consumers. The marks are highly similar. Confusion is therefore likely.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.