Baby Love, Inc.v.The Brainy Baby Company, LLC

Trademark Trial and Appeal Board

Mar 17, 2008

No. 91166831 (T.T.A.B. Mar. 17, 2008)

Mailed:
March 17, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Baby Love, Inc.
v.
The Brainy Baby Company, LLC
________

Opposition No. 91166831
against Serial No. 78492463
_______

Daniel S. Polley of Daniel S. Polley, P.A. for Baby Love,
Inc.

Lee B. Beitchman of Beitchman & Hudson for The Brainy Baby
Company, LLC.
_______

Before Bucher, Kuhlke and Bergsman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Brainy Baby Company, LLC seeks registration on the
Principal Register of the mark BABY LOVE (in standard
character format) for goods identified as a “series of
prerecorded videotapes, audio cassettes, digital video discs
and compact discs featuring live and animated educational
materials intended to develop and improve the creative and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91166831
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intellectual faculties of infants and children” in
International Class 9. 1
Baby Love, Inc. has opposed the application on the
ground of likelihood of confusion, alleging that applicant’s
mark, when used in connection with the identified goods, so
resembles opposer’s previously used marks, also registered
by opposer as follows:
BABY LOVE for “retail store services
featuring infant and child
clothing, furniture, accessories
and toys” in Int. Class 42;2 and

for “retail store services
featuring infant and child
clothing, furniture, accessories
and toys” in Int. Class 42;3

as to be likely to cause confusion, to cause mistake or to
deceive under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d). Opposer also claimed prior common law trademark
and service mark rights in the words BABY LOVE and the
logos from its continuous use in commerce in connection with
a plethora of goods and services directed to toddlers,
children and juveniles.

1 Application Serial No. 78492463 was filed on September 30,
2004 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

2 Registration No. 1780709 issued on July 6, 1993; renewed.

3 Registration No. 1784606 issued on July 27, 1993; renewed.
Opposition No. 91166831
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Opposer also alleges, as a second ground for
opposition, that applicant’s mark so resembles opposer’s
mark as to cause dilution of the distinctive quality of
opposer’s mark.
Applicant, in its answer, has denied all of the salient
allegations in the notice of opposition.
The Record
By operation of the rules, the record includes the
pleadings and the file of the opposed application. In
support of its case, opposer made of record the testimony
declaration of Elliot Komroff, Vice President of Opposer,
with Exhibits A through P (submitted pursuant to the
parties’ joint stipulation for declaration testimony); and
evidence under three separate Notices of Reliance: on
February 23, 2007, certified status and title copies of
opposer’s valid and subsisting pleaded U.S. Trademark
Registrations as well as copies of third-party
registrations; on February 27, 2007, copies of applicant’s
responses to opposer’s First Request For Admissions to
Applicant, with opposer specifically relying on applicant’s
responses to Requests for Admission 1, 2, 5, 6, 8-10 and 18-
38; and on February 28, 2007, a copy of a Federal Trade
Commission complaint of May 1, 2006. Applicant made of
record the April 2007 testimony declaration of Dennis
Opposition No. 91166831
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Fedoruk, CEO and manager of applicant, with the attached
exhibits (which as noted previously, was submitted pursuant
to the parties’ joint stipulation that testimony could be
submitted by declaration testimony). Finally, during its
rebuttal testimony period, opposer filed another declaration
from Elliot Komroff, which included additional exhibits.
The parties have fully briefed the case.
Preliminary matters
Opposer has raised objections to that portion of
applicant’s brief referring to a search of the Internet that
yielded more than four million hits for the term “Baby Love
Products.” We agree with opposer that this claim must be
stricken from the record inasmuch as applicant failed to
submit any evidence or testimony to this alleged fact during
its testimony period.
The Parties
Since its inception in 1973, opposer has continuously
used the service mark and trade name BABY LOVE in connection
with its retail store services featuring clothing,
furniture, accessories and toys that are directed to the
infant, toddler, children, and juvenile market. As noted
above, Opposer also claimed prior common law trademark and
Opposition No. 91166831
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service mark rights in the words BABY LOVE and the
logos from its continuous use in commerce in connection with
a plethora of goods and services directed to toddlers,
children and juveniles. For example, every day since
November 2000, opposer has been offering for sale through
its online e-commerce website most of the products it offers
at its retail store. www.babylove.com Even before the
launch of its website, opposer had consumers in and shipped
product to forty-eight states and Canada. Opposer continues
to have customers located nationwide, in Canada, and in
numerous other foreign countries. The record shows that
opposer offers at its physical and online retail store over
60,000 different infants’ and children’s products produced
by more than 650 different manufacturers, including a wide
variety of the same type of goods listed in applicant’s
application. A partial listing of the types of products
drawn from this record includes furniture, cribs, strollers,
clothing, car seats, diapers, DVD’s, games, CD’s, videos,
electronic toys, booties, books, printed materials,
sleepers, baby carriers, bottle bags, bouncers, car seat
accessories, car sun shades, diaper bags, exersaucers,
walkers, swings, bassinettes, sheets, liners, cradles,
blankets, changing tables, laundry hampers, rocking chairs,
gliders, ottoman, dressers, chests, monitors, thermometers,
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first aid safety kits, humidifiers, nasal aspirators,
vaporizers, thermoscans, bottle sterilizers, bottle warmers,
breast pumps, burp pads, high chairs, juice and water
bottles, feeding seats, nursing pillows, nursing pads, crib
bumpers, bibs, dust ruffles, mobiles, lamps, quilts,
comforters, receiving blankets, valances, learning products,
and playards.
Since its inception in 2001, applicant has been
producing audio and audio/video products for infants and
children. Many of these products are marketed under its
house mark, BRAINY BABY, as well as having separate trademarks
used in connection with other themed series or individual
product lines. Applicant has received recognition
nationally and internationally for the quality of its
products. Applicant has developed three trademarks for a
series of faith-based audio/video titles to be sold in
religious and faith-based bookstores and similar outlets,
entitled “Baby Hope,” “Baby Joy” and “Baby Love.”
Standing
Opposer must prove at trial its alleged standing to
file this complaint. Accordingly, opposer has alleged and
then proved at trial a real commercial interest, as well as
a reasonable basis for the belief that opposer would be
Opposition No. 91166831
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damaged by the registration of applicant’s mark. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999). Opposer has presented evidence of the ownership and
validity of its pleaded registrations for the mark BABY LOVE
and the logos.
Priority
Opposer has established its ownership of valid and
subsisting registrations for the mark BABY LOVE and the
logos for “retail store services featuring infant and child
clothing, furniture, accessories and toys.” Therefore, we
find that priority is not at issue in view of opposer’s
ownership of its pleaded registrations. See King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974); and Carl Karcher Enterprises Inc. v.
Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995). In any
event, opposer’s demonstration of continuous use of the BABY
LOVE service mark establishes actual prior use vis-à-vis
applicant’s application filing date, which is the earliest
date upon which applicant can rely for priority purposes.
Either way, opposer’s showing is clearly sufficient to
defeat the contingent constructive use date of applicant’s
recently-filed intent-to-use application.
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Analysis: Likelihood of Confusion
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods and/or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Marks

Applicant argues that the trade dress of the marks is
different, and that applicant’s applied-for mark will be
used with its BRAINY BABY house mark. Suffice it to say, the
marks that we must compare do not involve the use of trade
dress, and applicant’s applied-for mark does not include its
so-called house mark. Thus, applicant’s arguments are to no
avail.
The actual marks involved herein are identical.
Although applicant has adopted opposer’s word mark in its
entirety, it argues that this is a case where a contextual,
secondary connotation should change the result of our
registrability decision. For example, an identical term may
Opposition No. 91166831
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take on very different meanings as applied to related goods,
overcoming a likelihood of confusion. See In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) [the Board held that
the mark PLAYERS on men’s underwear and men’s shoes would not
result in consumer confusion as to the source of the goods
inasmuch as “‘PLAYERS’ for shoes implies a fit, style, color
and durability adapted to outdoor activities. ‘PLAYERS’ for
men’s underwear implies something else, primarily indoors in
nature.”]. However, while applicant argues that it has
developed “Baby Hope,” “Baby Joy” and “Baby Love” for a
series of faith-based audio/video titles to be sold in
religious and faith-based bookstores, the principles of the
British Bulldog case would only be applicable herein if
applicant’s goods were so restricted, which they are not.
Applicant alludes to a second analogous pattern under
the Lanham Act, namely, when a newly-coined combination of
descriptive components creates a readily-understood,
alternative meaning. Such a mark is known to comprise a
“double entendre.” A double entendre will not be refused
registration as merely descriptive if one of its meanings is
not merely descriptive in relation to the involved goods or
services. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB
1983) [the Board found inappropriate a requirement for a
disclaimer of the word LIGHT apart from the mark LIGHT N’ LIVELY
Opposition No. 91166831
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for reduced calorie mayonnaise: “The mark LIGHT N’ LIVELY as a
whole has a suggestive significance which is distinctly
different from the merely descriptive significance of the
term LIGHT per se. That is, the merely descriptive
significance of the term LIGHT is lost in the mark as a
whole. Moreover, the expression as a whole has an
alliterative lilting cadence which encourages persons
encountering it to perceive it as a whole.”]. See also In
re Symbra'ette, Inc., 189 USPQ 448 (TTAB 1975) [SHEER ELEGANCE
for panty hose held to be a registrable unitary expression;
thus, no disclaimer of SHEER considered necessary]; In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
[SUGAR & SPICE for bakery products]; and In re National Tea
Co., 144 USPQ 286 (TTAB 1965) [NO BONES ABOUT IT for fresh
pre-cooked ham]. In each of these cases, the secondary
interpretations that make each expression a double entendre
consist of an association that members of the public would
make quite readily. However, applicant has not proffered an
explanation for exactly how the term BABY LOVE in the context
of its goods creates such a unique commercial impression
that it is able to distinguish the marks among potential
customers with knowledge of opposer’s mark.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Opposition No. 91166831
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Strength of opposer’s mark

Opposer argues that the strength of its mark is
determined by the nature of the mark, by the commercial
success of the mark, and by the number and nature of use of
similar third party marks for related goods or services.
Palm Bay Imports. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1372-75, 73 USPQ2d 1689 (Fed.
Cir. 2005). Under this standard, opposer argues that its
mark and trade name are strong.
Certainly, it would appear from these incontestable
registrations that the mark is inherently distinctive as
applied to these goods, opposer has been using the mark
continuously for over thirty years and has demonstrated a
degree of success in the marketplace.
Although applicant points to what it claims are third-
party uses that it located on the Internet, opposer notes
that inasmuch as these companies are located in Australia,
Malaysia and Canada, we must presume on this record that
opposer’s marks are strong and entitled to a relatively
broad scope of protection.
Accordingly, this du Pont factor too favors a finding
of likelihood of confusion.
Opposition No. 91166831
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Renown of opposer’s marks

Opposer argues that because it has demonstrated that
its BABY LOVE marks and trade name have developed substantial
goodwill for well over thirty years, this du Pont factor
weighs heavily in favor of Opposer. We disagree.
Clearly, our primary reviewing court has determined
that the fame of an opposer’s mark plays a “dominant role in
the process of balancing the du Pont factors.” Recot, Inc.
v. M.C. Becton, 54 USPQ2d 1894, 1897-98 (Fed. Cir. 2000), on
remand, 56 USPQ2d 1859 (TTAB 2000) [likelihood of confusion
between FIDO LAY and FRITO-LAY]; and Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992) [likelihood of confusion between FUNDOUGH
and PLAY-DOH - “[F]ame of the prior mark plays a dominant
role in cases featuring a famous or strong mark.”] Our
primary reviewing Court, employing compelling imagery, held
that “[a] strong mark … casts a long shadow which
competitors must avoid,” and “[t]here is no excuse for even
approaching the well-known trademark of a competitor … and …
all doubt as to whether confusion, mistake, or deception is
likely is to be resolved against the newcomer, especially
where the established mark is one which is famous.” Kenner
Parker Toys, supra.
Opposition No. 91166831
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However, based upon this record, we find that opposer
has not demonstrated the fame of its mark as that concept is
used in this context. While we do know the length of time
that the mark has been in use, it seems as if during much of
this time, opposer was a retailer with a single brick-and-
mortar location. Certainly, we have no evidence as to
opposer’s volume of sales, market share or advertising
expenditures. Accordingly, this is a neutral factor,
neither helping nor hurting opposer’s position herein.
The goods and services

We turn then to the relationship of the goods and
services as described in the application and in opposer’s
registrations. As noted above, the marks are identical in
every respect. With both opposer and applicant using the
identical designation, “the relationship between the goods
on which the parties use their marks need not be as great or
as close as in the situation where the marks are not
identical or strikingly similar.” Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). See also In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993) [“[E]ven when goods or services are not
competitive or intrinsically related, the use of identical
Opposition No. 91166831
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marks can lead to an assumption that there is a common
source.”].
In order to support a holding of likelihood of
confusion, it is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant argues that opposer’s registrations are
limited to service marks while its application is for a
trademark for goods. However, it is well recognized that
confusion is likely to occur from the use of the same or
similar marks for goods, on the one hand, and for services
involving those goods, on the other. Applicant admits that
applicant’s goods and opposer’s services are closely-related
and both directed to the infant, toddler and children
industry. Opposer’s retail store services include the sale
of “clothing, furniture, accessories and toys.” Opposer’s
catalogues show that its toys include educational toys and
games. Opposer has introduced by witness testimony, third-
party advertisements and multiple copies of its competitors’
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third party registrations [e.g., BabiesRUs, Baby Superstore,
Lil’Things] demonstrating that consumers are accustomed to
seeing the same mark being used for retail store services as
are being used as a trademark for products sold within the
retail establishment. According to marketing materials,
orders and invoices, opposer has actually purchased a
variety of children and infant products from applicant (such
as flash cards, electronic toys and books) for sale in its
retail operations. Accordingly, on this record, we find a
close relationship between applicant’s goods and opposer’s
services.
Moreover, opposer is not limited to the services
recited in its registrations. Rather, through testimony and
exhibits, opposer has demonstrated common law rights in its
online retail store services featuring infant and child
clothing, furniture, accessories and toys. One of the
categories of products on the opposer’s website is entitled
“Books, Tapes and Videos,” reflecting a wide variety of
vendors. Another menu choice is “Baby Einstein,” a product
line very much like that of applicant.
Channels of Trade and Conditions of Sale

As to two related du Pont factors, we find that in the
absence of any restrictions on either party’s channels of
Opposition No. 91166831
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trade, we must presume that the goods and services will move
through all the normal channels of trade for such goods and
services and will be marketed to the same classes of
ordinary consumers.4 In any case, in applicant’s responses
to opposer’s requests for admission, applicant has
essentially admitted that the respective channels of trade
are identical.
Moreover, the products identified in applicant’s
application are not high priced items and will not be
purchased with an undue amount of deliberation.
Accordingly, these du Pont factors also weighs in favor
of a finding of likelihood of confusion.
Conclusion on Likelihood of Confusion

In weighing the relevant du Pont factors, we find that
the marks are identical, the goods and services are closely
related, and that they will move through the same channels
of trade to the same classes of ordinary purchasers. While
opposer’s mark is clearly entitled to the scope of
protection accorded an inherently distinctive mark that
appears to have been used exclusively and continuously for

4 As noted earlier, applicant argues throughout its trial
brief that it intends to sell these products to the faith-based
industry at faith-based stores. Of course, opposer’s services do
not exclude faith-based shoppers. More importantly, however,
applicant’s identification of goods contains no such
restrictions, so this alleged distinction is irrelevant.
Opposition No. 91166831
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more than thirty years, we cannot find on this record that
it is has the renown of a well-known mark.
Dilution
Finally, we note that opposer also charges that given
the demonstrated fame of opposer’s BABY LOVE mark,
applicant’s use of its BABY LOVE mark is likely to cause
dilution of opposer’s mark under the Federal Trademark
Dilution Act of 1995. Given our determination that opposer
has priority of use and that there is a likelihood of
confusion herein, we find it unnecessary to reach a
determination on the question of dilution in this
proceeding.5
Decision: The opposition is sustained on the basis of
opposer’s priority and a likelihood of confusion with
opposer’s marks, and registration to applicant is hereby
refused.

5 We note, in passing, that this ground would have to fail as
to pleading and proof. In its pleading, opposer never explicitly
claimed that its mark was distinctive and became famous before
applicant filed the instant application. Moreover, given our
finding above that applicant has failed to demonstrate the
requisite level of renown to qualify as a well-known mark for
purposes of the likelihood of confusion determination, then ipso
facto it would not have proven fame for purposes of dilution.