b. Dazzle, Inc.

Trademark Trial and Appeal Board

Apr 25, 2007

No. 76624697 (T.T.A.B. Apr. 25, 2007)

Mailed: April 25, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re b. Dazzle, Inc.
________

Serial No. 76624697
_______

Jonathan E. Grant of Grant Patent Services for b. Dazzle, Inc.

Nora Buchanan Will, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by b. Dazzle, Inc. to register
the mark SCRAMBLE SQUARES/LITTLE GENIUS ("Squares" disclaimed) in
standard character form for goods ultimately identified as
"puzzles for children" in Class 28.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 76624697, filed December 17, 2004 based on an
allegation of a bona fide intention to use the mark in commerce.
The application includes a claim of ownership of Registration No.
2808349 for the mark SCRAMBLE SQUARES for "jigsaw puzzles."
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 76624697
2
applicant's mark, when applied to applicant's goods, so resembles
the mark LITTLE GENIUS (in typed form) shown in the following two
registrations for the goods identified therein, as to be likely
to cause confusion.
Registration No. 2372130:2

Musical sound recordings and musical video recordings
(in 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 Class 16).

Registration No. 2344760:3

Clothing, namely, dresses, jumpers, cardigans, suits,
overcoats, trousers, jackets, singlets, socks, belts,
knit shirts, sport shirts, sweat shirts, turtle necks,
T shirts, pants, sweaters, socks, ties, bow ties,
shorts, beach visors, beachwear, swimsuits, hats,
caps, beanies, blouses, underwear, jackets, pull

2 Issued August 1, 2000. We note that a Section 8 affidavit was due to
be filed in connection with this registration by August 1, 2006 and
that the 6-month grace period of February 1, 2007 for filing the
affidavit has passed. However, because Office records do not indicate
that the registration has been cancelled, the cited registration must
be treated as existing and valid. Ordinarily, under these
circumstances, we would suspend action on the appeal pending a
determination as to whether the cited registration has been cancelled,
which in this case should occur in May 2007. However, because Office
records show that a Section 8 affidavit has been filed in connection
with Registration No. 2344760, we see no reason to suspend in this
case. Instead, the appeal will go forward, but solely on the basis of
the refusal as it pertains to Registration No. 2344760.

3 Issued April 25, 2000; Sections 8 and 15 affidavits accepted and
acknowledged.
Serial No. 76624697
3
overs, overalls, sporting shirts, jerseys, and pajamas
(in Class 25).

Toys, namely, action toys, bathtub toys, construction
toys, pet toys, plush toys, ride-on toys, sandbox
toys, squeeze toys, wind-up toys, musical toys, crib
toys, crib mobiles, stuffed toy animals, children's
multiple activity toys, adults' and children's party
games, all types of dolls, doll accessories, climbing
units, children's play cosmetics, card games, role
playing games, board games and card games for teaching
of alphabet, math, music, and language, and, adult and
children's sporting goods, namely, playground balls,
beach balls, basketballs, baseballs, baseball bats,
baseball mitts, ball hoops and fishing rods (in Class
28).

When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the goods. In our analysis we will focus
on a comparison of those of registrant's goods which can be
considered closest to applicant's "puzzles for children," namely
the toys in Class 28 as identified in Registration No. 2344760.
Serial No. 76624697
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Applicant argues that its goods, which applicant describes
as complex, nine-piece puzzles, "greatly differ" from the
"musical toys" in the cited registrations. We are not persuaded
by this argument. It is well settled that goods need not be
similar or competitive in nature to support a finding of
likelihood of confusion. See Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). It is sufficient
if the respective goods are related in some manner and/or that
the conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon, give
rise to the mistaken belief that they emanate from or are
associated with, the same source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant's goods are identified as "puzzles for children."
Registrant's goods in Class 28 are not limited to "musical" toys
as applicant contends. Rather they include a variety of toys,
such as children's multiple activity toys, board games and card
games for teaching of alphabet, math, etc., action toys, dolls
and stuffed animals. In any event, registrant's various toys,
which consist of or encompass toys for children, and applicant's
puzzles for children are interrelated products. We note that the
examining attorney has submitted a number of use-based third-
party registrations showing a mark in each instance that is
Serial No. 76624697
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registered for puzzles on the one hand and one or more items in
Class 28 of the cited registration. For example, Registration
No. 2984266 for the mark CHILD OF MINE lists manipulative
puzzles, as well as multiple activity toys, card games and board
games; Registration No. 2789687 for the mark FRY FRIENDS lists
"educational toys" in the nature of cube, manipulative and jigsaw
puzzles, as well as action toys, baby multiple activity toys,
board games and card games; Registration No. 2799073 for the mark
BONGANTE GARDENS lists puzzles, as well as board games and card
games; Registration No. 2974656 for the mark SECRET VINEYARD
lists puzzles, as well as plush toys, and board and card games.
Although third-party registrations are not evidence that the
marks shown therein are in use or that the public is familiar
with them, they nevertheless have some probative value to the
extent that they serve to suggest that the goods listed therein
may emanate from a single source. See In re Albert Trostel &
Sons Co., supra, and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988).
Applicant argues that the goods are marketed "in different
locales," and that its product is "a complex puzzle for high[ly]
intelligent children" which is found in puzzle shops and very
high end novelty and gift stores. However, the authority is
legion that the question of likelihood of confusion in a Board
proceeding must be decided on the basis of the goods set forth in
Serial No. 76624697
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the application and registration, without limitations as to the
actual nature of the goods, their channels of trade and/or
classes of purchasers that are not reflected therein. See J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 1464, 18
USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d 1783 (Fed.
Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983).
Because there are no limitations in either the application
or the registration, we must assume that registrant's toys as
well as applicant's puzzles would be sold in all the normal
channels of trade, including all the usual retail outlets for
toys, and that registrant's toys would be directed to all the
usual purchasers and users, including the children that would use
applicant's puzzles. Purchasers encountering these closely
related goods, if offered under similar marks, would naturally
assume the goods originated with or are in some way associated or
connected with the same company.
We turn then to the marks. Applicant argues that merely
because the two marks share a common term does not necessarily
render the marks confusingly similar. Applicant points to a
number of infringement cases including McGregor-Doniger Inc. v.
Drizzle Inc., 599 F.2d 1126, 202 USPQ 81 (2d Cir. 1979); Vitarroz
Corp. v. Borden, Inc., 644 F.2d 960, 209 USPQ 969 (2d Cir. 1981);
Serial No. 76624697
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E.S. Originals Inc. v. Stride Rite Corp., 656 F.Supp. 484, 2
USPQ2d 1934 (S.D.N.Y. 1987); and Uniroyal, Inc. v. Kinney Shoe
Corp., 453 F.Supp. 1352, 202 USPQ 273 (S.D.N.Y. 1978), where in
each case, according to applicant, the addition of the
manufacturer's name to otherwise similar marks was sufficient to
distinguish the marks as a whole. Based on these and other
cases, applicant reasons that "the purchasing public recognizes
Scramble Squares to be nine squared puzzles emanating from b.
Dazzle, Inc."; and that in view of the prominence of the mark
SCRAMBLE SQUARES, and the fact that mark "has become synonymous
with 'Be Dazzle' [sic] and thus stands in the place of the
manufacturer's name," and because "the packaging, lettering, and
trade dress for b. Dazzle, Inc.'s [mark and the cited mark]
differ so greatly from each other," there can be no likelihood of
confusion.
We first need to clarify the proper focus of the analysis.
It is well established that, in contrast to an infringement
action where the court examines the visual appearance of the
marks in the context of actual use, in proceedings before the
Board, actual use is not relevant. Jim Beam Brands Co. v.
Beamish & Crawford, Ltd., 937 F.2d 729, 19 USPQ2d 1352 (2d Cir.
1991). Thus, none of the infringement cases cited by applicant
is particularly helpful to our determination. Moreover,
applicant's arguments regarding matter, such as the company name
Serial No. 76624697
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"b. Dazzle" or trade dress appearing on applicant's packaging,
which is not part of the mark applicant seeks to register, are
not relevant to the analysis.4 The right to register a mark
must be determined on the basis of applicant's mark "exactly as
shown in the application" regardless of the manner of actual use.
Jim Beam Brands Co. v. Beamish & Crawford Ltd., supra.
(distinguishing infringement proceedings from Board proceedings).
See also Bellbrook Dairies, Inc. v. Hawthorn-Mellody Farms Dairy,
Inc., 117 USPQ 213, 214 (CCPA 1958); and Blue Cross and Blue Shield
Association v. Harvard Community Health Plan Inc., 17 USPQ2d
1075, 1077 (TTAB 1990). Consequently, applicant's additional
contention that purchasers would somehow associate SCRAMBLED
SQUARES with applicant's company name "b. Dazzle" is not only
speculative, but it is also irrelevant.
We turn then to a comparison of the marks before us,
applicant's mark SCRAMBLED SQUARES/LITTLE GENIUS and registrant's
mark LITTLE GENIUS. In determining the similarity or
dissimilarity of marks, we must consider the marks in their
entireties in terms of sound, appearance, meaning and commercial
impression. See du Pont, supra. See also Palm Bay Imports, Inc.

4 Notwithstanding applicant's argument to the contrary in its reply
brief at p. 3, applicant has clearly taken the position in its main
brief that the actual use and appearance of its SCRAMBLED SQUARES mark
as well as its company name on its packaging are factors to consider in
determining whether the marks in this case are distinguishable.
Serial No. 76624697
9
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005).
The marks SCRAMBLE SQUARES/LITTLE GENIUS and LITTLE GENIUS
are similar in sound. The phrase LITTLE GENIUS is registrant's
entire mark, and that identical phrase is a major component of
applicant's mark. LITTLE GENIUS is also a visually significant
component of applicant's mark. The terms SCRAMBLED SQUARES and
LITTLE GENIUS do not blend together as a single phrase. The
slash line in applicant's mark physically separates the two
phrases, giving the term LITTLE GENIUS separate visual prominence
in the mark.
In addition, the marks as a whole are substantially similar
in meaning and commercial impression. Both marks suggest
challenging toys or toys for a highly intelligent child, and that
meaning and impression in both marks is conveyed by the term
LITTLE GENIUS. The combination of SCRAMBLED SQUARES and LITTLE
GENIUS simply suggests one particular type of LITTLE GENIUS toy.
Contrary to applicant's contention, this situation is not similar
to cases such as In re Sydel Lingerie Co., Inc., 197 USPQ 629
(TTAB 1977) and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB
1984), where the marks created different commercial impressions
when applied to the respective goods. For example, in Sydel, the
Board found that BOTTOM'S UP for men's clothing suggested an
association with the drinking phrase, "drink up!" which was
Serial No. 76624697
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"hardly the connotation" as applied to underwear. Sydel, at 630.
There is no such double entendre here. Indeed, there is no
meaningful difference in either the connotation or commercial
impression.
Furthermore, the overall similarity in the marks is not
overcome despite any asserted claim by applicant of long use of
SCRAMBLED SQUARES,5 or that the term may be distinctive and
unique or even the subject of a prior registration. The
additional term SCRAMBLED SQUARES would do nothing to prevent
consumers from mistakenly assuming that applicant's puzzle is a
new or special toy within the line of registrant's LITTLE GENIUS
toys, or that applicant's product is licensed or sponsored by, or
is otherwise associated with registrant.
In making our determination that the marks as a whole are
similar, we note the line of cases holding that the addition of
other matter, such as a house mark, primary mark or other
material, to one of two otherwise similar marks, will not
necessarily be sufficient to distinguish the marks as a whole.
See, generally, First International Services Corp. v. Chuckles
Inc., 5 USPQ2d 1628 (TTAB 1988); In re Champion Oil Company, 1
USPQ2d 1920 (TTAB 1986); In re Christian Dior, S.A., 225 USPQ 533

5 Applicant's list of trade shows, which was submitted for the first
time with applicant's appeal brief, is untimely evidence and it has not
been considered. See Trademark Rule 2.142(d). However, even if this
evidence had been considered it would not affect our decision herein.
Serial No. 76624697
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(TTAB 1985); and In re C. F. Hathaway Company, 190 USPQ 343 (TTAB
1976). The additional matter has been found sufficient to
distinguish the marks under circumstances where:
(i) there are recognizable differences in the common term.
See, for example, Rockwood Chocolate Co., Inc. v. Hoffman Candy
Co., 372 F.2d 552, 152 USPQ 599 (CCPA, 1967) (ROCKWOOD BAG-O-GOLD
for candy not confusingly similar to CUP-O-GOLD for candy); or
(ii) the appropriated matter is highly suggestive or merely
descriptive or has been frequently used or registered by others
in the field for the same or related goods or services. See, for
example, Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d
1313 (TTAB 2005); and In re Merchandising Motivation, Inc., 184
USPQ 364 (TTAB 1974) (MEN'S WEAR for a semi-monthly magazine not
confusingly similar to MMI MENSWEAR for fashion consulting for
men because "MENSWEAR" is merely descriptive of such services);
or
(iii) the marks in their entireties convey significantly
different meanings or commercial impressions. See, for example,
Lever Brothers Company v. The Barcolene Company, 463 F.2d 1107,
174 USPQ 392 (CCPA 1972) ("ALL CLEAR!" a play on an expression
popularized in connection with air raid drills, not confusingly
similar to ALL, both for household cleaning products); or
(iv) the incorporated matter has been so merged with the
other matter that it "loses its separate identity." See In re
Serial No. 76624697
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Champion International Corporation, 196 USPQ 48, 49 (TTAB 1977).
See also, for example, Castle & Cooke, Inc. v. Oulevay, S. A.,
370 F.2d 359, 152 USPQ 115, 115 (CCPA 1967) (FARENDOLE not
confusingly similar to DOLE for related food products; DOLE "is
so merged into" FARANDOLE "that it loses its individual identity
therein"); and B. Kuppenheimer & Co., Inc. v. Kayser-Roth
Corporation, 326 F.2d 820, 140 USPQ 262, 263 (CCPA 1964) (the
mark for pants is not confusingly similar to SUPP-
HOSE for hosiery; stating that the house mark "is completely
integrated with the other portion of the mark" and noting that
the result might be different where the house mark word is
"divisible from the other word or words in the mark.")
None of these circumstances exists here. In this case,
there are no differences in the common portions of the marks.
They are identical. While LITTLE GENIUS may be suggestive of
toys, there is no evidence that the term is highly suggestive of
the identified goods or that it has been commonly used or
registered by others for similar goods. The commercial
impressions created by the two marks are not distinctly
different, as we noted above. Nor is LITLE GENIUS indivisible
from SCRAMBLED SQUARES or so merged with SCRAMBLED SQUARES that
it loses its identity. In fact, LITTLE GENIUS still remains a
Serial No. 76624697
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conspicuous and separately recognizable portion of applicant's
mark.
Finally, none of the cases cited by applicant is factually
analogous to the present case. For example, in Vitarroz Corp.
both parties prefaced their marks (BRAVOS for crackers v. BRAVO'S
for tortilla chips) with their house marks, whereas in the
present case, there are no other portions in registrant's mark to
distinguish it from applicant's mark. In McGregor-Doniger, the
finding of dissimilarity did not turn merely on the presence of
the manufacturer's name, but also on the fact that the
manufacturer's name was prominently featured and set apart from
the product mark, as described by the Court, "in striking plaid
letters." Unlike In E.S. Originals (ZIPS BY STRIDE RITE v. ZIP
‘N GO) and Uniroyal, Inc. (KEDS v. KINNEY KIDS), the appropriated
term in the present case is identical. Neither these cases nor
any of the other cases cited by applicant compel a finding in
this case that the addition of matter to these otherwise
identical marks is sufficient to avoid a likelihood of confusion.
In view of the foregoing, and because very similar marks are
used in connection with closely related goods that are sold in
the same channels of trade to the same purchasers, likelihood of
confusion exists.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.