H2O to Go, LLCv.Todd Kenton Cook

Trademark Trial and Appeal Board

Sep 30, 2008

No. 92044068 (T.T.A.B. Sep. 30, 2008)

Mailed: September 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

H20 TO GO, LLC
v.
Todd Kenton Cook
_____

Cancellation No. 92044068
_____

Shawn K. Look of Look Law Firm LLC for H20 TO GO, LLC

Gerard T. Gallagher of Baker & Daniels LLP for Todd Kenton Cook.
______

Before Hohein, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Petitioner, H20 TO GO, LLC, has filed a petition to cancel a
registration on the Principal Register owned by Todd Kenton Cook
(respondent) for the mark H20 TO GO (in typed form) for "water
treatment equipment, namely, filters, pumps, conditioners, water
coolers and water softeners" in Class 11; and "retail water
stores providing water and environmental treatment equipment,
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Cancellation No. 92044068
2
systems and supplies; water dispensers and coolers" in Class 35.1
The term H20 is disclaimed.
As its ground for cancellation, petitioner alleges priority
and likelihood of confusion under Section 2(d) of the Trademark
Act. In particular, petitioner alleges that respondent's mark,
when applied to respondent's goods and services, so resembles
petitioner's previously used and registered marks PURIFIED WATER
TO GO and WATER TO GO as to be likely to cause confusion.
Petitioner identifies these registrations as Registration No.
2720719 for the mark PURIFIED WATER TO GO and Registration No.
1949803 for the mark WATER TO GO for retail stores featuring
bottled water, juices, water coolers, crocks and crock stands;
franchising services, namely, offering technical assistance in
the establishment of such retail stores.
Respondent has filed an answer denying the salient
allegations in the petition.
The record includes the pleadings and the file of the
involved registration. In addition, petitioner has submitted the
testimony, with exhibits, of Ronald Quinn, petitioner's
predecessor; and Joseph Ventresca, managing member of petitioner.
Petitioner has also submitted notices of reliance on evidence

1 Registration No. 2310252, issued January 25, 2000; Section 8
affidavit accepted.

Cancellation No. 92044068
3
which includes certified copies showing that the following
pleaded registrations are subsisting and owned by petitioner:
Registration No. 1949803, on the Supplemental
Register, for the mark WATER TO GO (typed form) for
"retail stores featuring bottled drinking water,
juices, ice, water coolers, crocks and crock stands;
wholesale distributorships featuring bottled drinking
water, juices, ice water coolers [sic] crocks and
crock stands" in Class 42; WATER is disclaimed;2 and

Registration No. 2720719, on the Principal Register
under Section 2(f), for the mark PURIFIED WATER TO GO
(typed form) for "ice" in Class 30; "bottled drinking
water, juices" in Class 32; and "retail stores
featuring bottled drinking water, juices, ice, water
coolers, crocks and crock stands; wholesale
distributorships featuring bottled drinking water,
juices, ice, water coolers, crocks and crock stands;
franchising services, namely, offering technical
assistance in the establishment of retail stores
featuring water, ice, juice and related accessories"
in Class 35.3

Respondent's record consists of the testimony, with
exhibits, of Todd Kenton Cook; and several notices of reliance.
Both parties have filed briefs.
Standing
Petitioner's standing is established by its proof of
ownership of subsisting Registration Nos. 1949803 and 2720719.
For purposes of our analysis on the merits of this case we
will focus on the registration of petitioner which is closest to
the involved registration, namely Registration No. 1949803 for
the mark WATER TO GO on the Supplemental Register for "retail

2 Issued January 16, 1996; renewed.
3 Issued June 3, 2003.
Cancellation No. 92044068
4
stores featuring bottled drinking water, juices, ice, water
coolers, crocks and crock stands; wholesale distributorships
featuring bottled drinking water, juices, ice water coolers [sic]
crocks and crock stands" in Class 42.
Priority
In a cancellation proceeding, where both parties own
registrations, petitioner must prove priority of use. See
Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281 (TTAB
1998) and cases cited therein. In the case of a registration on
the Principal Register, petitioner may rely on its registration
as proof that the mark was in use as of the filing date of the
underlying application. See J. C. Hall Company v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965) ("The
presumption of use emanating from the fact of registration
relates back to the filing date of the application on which the
registration is predicated").
However, in the case of a registration on the Supplemental
Register, a plaintiff is not entitled to rely on the underlying
filing date as proof of priority. A registration issued on the
Supplemental Register cannot be afforded any statutory
presumptions under Section 7(b) of the Trademark Act and is
therefore incompetent as evidence to establish priority of use.
See Aloe Creme Laboratories, Inc. v. Johnson Products Co., Inc.,
183 USPQ 447, 447 (TTAB 1974); and In re Federated Department
Stores Inc., 3 USPQ2d 1541 (TTAB 1987) (a Supplemental Register
Cancellation No. 92044068
5
registration is evidence of nothing more than the fact that the
registration issued on the date printed thereon). On the other
hand, where a Supplemental Registration is concerned, a plaintiff
need not also establish distinctiveness of its mark prior to the
defendant's first use. It is clear, under Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA
1981), that a plaintiff relying on an unregistered mark, cannot
prevail on a likelihood of confusion claim unless it shows that
its term is distinctive of its goods or services, "whether
inherently or through the acquisition of secondary meaning or
through whatever other type of use may have developed a trade
identity."
Here, however, petitioner is not relying on an unregistered
mark. Moreover, we note that the Court in Towers v. Advent
Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed. Cir.
1990), cited an exception to the general rule set forth in Otto
Roth. That exception involves the situation where a plaintiff
alleging likelihood of confusion owns a Supplemental Register
registration. The Court stated that: "[L]ikelihood of confusion
can be found even if a term is merely descriptive and does not
identify source: Registration on the Supplemental Register is
sufficient, and a showing of trade identity rights in the form of
secondary meaning is unnecessary." Towers, id., citing In re
Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) and In re
Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir.
Cancellation No. 92044068
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1986). See also Perma Ceram Enterprises Inc. v. Preco Industries
Ltd., 23 USPQ2d 1134, 1138 n.12 (TTAB 1992)
Under the circumstances, we find that petitioner is not
required to prove, in addition to priority, that its mark WATER
TO GO was distinctive of its services prior to respondent's first
use of its mark. Moreover, we find that although petitioner's
mark as a whole, while perhaps inherently weak, is not entirely
without distinctiveness.
We turn then to the question of priority of use. Mr. Quinn,
petitioner's predecessor, testified that the first retail store
opened under the name PURIFIED WATER TO GO in Las Vegas, Nevada
in 1993. Mr. Quinn introduced a yellow pages advertisement for
the store dated 1996, showing the mark and the sale of such goods
as crocks, coolers, water and water bottles, and also showing
that there were three store locations in Las Vegas at that time,
which Mr. Quinn confirmed. It can be seen from this
advertisement, as well as most all of petitioner's other records
of use, that the term WATER TO GO consistently appears in large,
bold letters, in contrast to the word "Purified" which appears in
tiny cursive writing either above or to the left of WATER TO GO.
It is clear that WATER TO GO is used in a manner that creates a
commercial impression separate and apart from its use in the
phrase PURIFIED WATER TO GO.
Petitioner's testimony and supporting documentation are
sufficient to demonstrate petitioner's prior and continuous use
Cancellation No. 92044068
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of the mark WATER TO GO in connection with retail stores
featuring water and water-related products since at least 1996,
which is prior to the August 11, 1997 filing date of respondent's
underlying application and the April 1997 date of first use
established by respondent.
Likelihood of confusion
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 and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Services/Trade channels/Purchasers
In our evaluation of these du Pont factors, we are bound by
the goods and services as identified in the involved
registration. In the absence of any restrictions or limitations
in the registration, we must assume the goods and services are
sold through all the normal and usual trade channels for such
goods and services to all the usual purchasers of such goods and
services. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems
Cancellation No. 92044068
8
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987).
Respondent's goods and services are identified as "water
treatment equipment, namely, filters, pumps, conditioners, water
coolers and water softeners"; and "retail water stores providing
water and environmental treatment equipment, systems and
supplies; water dispensers and coolers." Petitioner operates the
same type of retail stores featuring same the types of products,
i.e., water, water bottles, water coolers and other water-related
products.4 Thus, the parties' respective services are
essentially the same.
Furthermore, petitioner's retail water stores are closely
related to respondent's goods, which include water, bottled
water, crocks and coolers. It is well settled that the
likelihood of confusion may result from the use by different
parties of the same or similar marks in connection with goods, on
the one hand, and services which deal with or are related to
those goods, on the other. See In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988); and Steelcase Inc. v. Steelcare
Inc., 219 USPQ 433 (TTAB 1983). Furthermore, the record shows
that petitioner itself applies its WATER TO GO mark on goods such

4 We construe the term "water" in the phrase "providing water and
environmental treatment equipment" as referring to drinking water
rather than "water treatment equipment" and respondent's testimony and
evidence clearly supports this view, showing that respondent in fact
sells bottled and/or filtered water. See, e.g., Cook Dep., p. 21; and
Exhs. 1 and 2; Int. Resp. Nos. 2, 4.
Cancellation No. 92044068
9
as water bottles, crocks and coolers, some of the products for
which respondent's mark is registered.
Because there are no restrictions in the registration, we
must presume, based on the nature of the identified goods and
services, that respondent's retail stores and at least some of
the products sold in the store, e.g., water, which is broad
enough to encompass bottled water, and water coolers, would be
directed to and purchased by ordinary consumers. See Hard Rock
Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998). In
fact, the evidence shows that both parties advertise and promote
their products and services to the general public in the same
types of print media, such as Yellow Pages directories, handouts
and fliers which contain discount coupons for water fills or
refills; and both parties' stores are selling products that may
be purchased by ordinary consumers. For example, Mr. Cook
testified that he sells countertop water filters which hook to
the kitchen sink for home use. (Dep., p. 33.)
Strength of petitioner's mark
Petitioner has used the mark WATER TO GO in connection with
its retail water stores and water-related products for more than
10 years. Petitioner currently has 60 stores in 20 states, and
Mr. Ventresca states that approximately 20 more stores are in the
process of opening. Petitioner has promoted the mark primarily
through print advertising such as newspapers, fliers and phone
books, and through the Internet. More recently, the mark has
Cancellation No. 92044068
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been displayed on a water bottle-shaped hot air balloon which has
been flown at large public events attended by hundreds of
thousands of people. The mark is also prominently displayed on
petitioner's storefronts and on its product labels and on all of
its promotional materials. The evidence of record also shows
that petitioner has successfully franchised its stores, having
been consistently recognized by the trade publication
Entrepreneur Magazine as one of its "Franchise 500" for all but
one year since 1997.
In addition, petitioner has submitted evidence of its sales
and advertising expenditures for the 21/2-year period from 2004 to
the first half of 2006. Although the specific amounts are
confidential, we can say they are substantial.
Petitioner has also successfully policed its mark. In
particular, petitioner's predecessor received a preliminary
injunction against a potential competitor's use of a similar
mark.5
The evidence of record is sufficient to persuade us that
petitioner's mark WATER TO GO, although perhaps initially weak,
has achieved some degree of strength and recognition in the

5 As respondent points out, this evidence is not probative of the
question of likelihood of confusion. However, contrary to respondent's
contention, the decision granting the preliminary injunction is
admissible by notice of reliance as either a public record or as an
official record of the court from which it issued (United States
District Court for the District of Colorado (Civil Action No. 97-S-
1966)); and moreover this evidence is probative of petitioner's efforts
to police its mark.
Cancellation No. 92044068
11
marketplace, and that it functions as a significant indicator of
source. Accordingly, we find that the mark is entitled to a
broader, rather than a narrower, scope of protection.
We also note that there is no evidence of any third-party
use or registration of the same or similar marks in the record or
any other evidence which might tend to suggest that purchasers
would be accustomed to making distinctions between the WATER TO
GO mark and others based on more subtle differences in the marks.
The marks
We turn then to a comparison of respondent's mark H20 TO GO
with petitioner's mark WATER TO GO, keeping in mind that when
marks would appear in connection with services that are
identical, the degree of similarity between the marks necessary
to support a finding of likelihood of confusion declines.
Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Furthermore, it is well established that, in proceedings
before the Board, the question of likelihood of confusion must be
decided on the basis of the mark "exactly as shown" in the
registration regardless of how the mark is actually used. Jim
Beam Brands Co. v. Beamish & Crawford, Ltd., 937 F.2d 729, 19
USPQ2d 1352, 1356 (2d Cir. 1991) (distinguishing infringement
proceedings from Board proceedings). See also Kimberly-Clark
Corp. v. H. Douglas Enterprises, 774 F.2d 1144, 227 USPQ 541
(Fed. Cir. 1985). Consequently, respondent's arguments regarding
Cancellation No. 92044068
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the trade dress used in association with its mark are irrelevant.
Moreover, and in any event, the wording WATER TO GO in
petitioner's mark creates a commercial impression apart from any
trade dress.
We also point out that the standard for evaluating
descriptive marks or marks on the Supplemental Register is not
whether the marks are "substantially identical" as respondent
claims. See In re Southern Bell Frozen Foods, Inc., 48 USPQ2d
1849 (TTAB 1998) (clarifying In re Hunke & Jocheim, 185 USPQ 188
(TTAB 1975), on which respondent has relied). The same standard
applies regardless of the nature of the mark or the register on
which it appears. We note that the Court addressed and rejected
a similar argument in In re The Clorox Co., 578 F.2d 305, 198
USPQ 337, 341 (CCPA 1978):
Appellant next posits a requirement that citation of
marks on the Supplemental Register under §2(d) be
limited to marks identical to that sought to be
registered. No reason exists, however, for the
application of different standards to registrations
cited under §2(d). The level of descriptiveness of a
cited mark may influence the conclusion that
confusion is likely or unlikely,...but that fact does
not preclude citation under §2(d) of marks on the
Supplemental Register.

With the above principles in mind, when we compare
respondent's mark H20 TO GO with petitioner's mark WATER TO GO,
in their entireties, as used on identical retail water stores and
closely related products, we find that the marks are similar in
sound, appearance, meaning and in their overall commercial
Cancellation No. 92044068
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impression. While there are some differences between the marks,
the similarities outweigh those differences.
The shared phrase TO GO is aurally and visually a
significant part of both marks. While the marks begin with
different words, WATER and H20, when those words are combined
with TO GO the marks as a whole are still visually similar and
they have a similar sound and cadence due primarily to the two
word phrase TO GO.
The marks H20 TO GO and WATER TO GO as a whole are highly
similar, if not identical, in meaning and commercial impression.
The term "water" is defined as "A clear, colorless, odorless, and
tasteless liquid, H20, essential for most plant and animal life
and the most widely used of all solvents." The American Heritage
Dictionary (Fourth Edition) (Pet's. Third Not. of Rel., Exh. 10.)
H20 is a commonly known symbol for water, and consumers would
recognize WATER and H20 as equivalent terms. Respondent argues
that merely because a dictionary mentions the chemical formula of
water is not persuasive that consumers will understand that
meaning. However, the dictionary does not even refer to H20 as a
chemical formula, which suggests that H20 would be recognized by
consumers as another term for "water." Even Mr. Cook testified
that he had to disclaim the term H20 "because it was a common
everyday thing." (Dep., p. 16.)
Viewed in their entireties, we find that the marks are
similar. The high degree of similarity between the marks in
Cancellation No. 92044068
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terms of connotation and commercial impression significantly
outweighs any dissimilarities between the marks in terms of
appearance and sound.
As we have found, petitioner's mark is a relatively strong
one and as such is entitled to more than a narrow scope of
protection. However, even assuming the mark is weak, it is well
settled that even weak marks are entitled to protection against
registration of similar marks for identical and/or closely
related goods and services. See King Candy Co. v. Eunice King's
Kitchen, Inc., 182 USPQ 108, 109 (CCPA 1974) (likelihood of
confusion "is to be avoided, as much between 'weak' marks as
between 'strong' marks, or as between a 'weak' and a 'strong'
mark"); and The Clorox Co., supra at 341 (ERASE for a laundry
soil and stain remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain remover).
Contrary to respondent's apparent contention, it is not
dispositive or even relevant that the examining attorney did not
cite petitioner's registered mark WATER TO GO against
respondent's pending application for H20 TO GO.6 See Miss
Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562 (TTAB
2007). This would defeat the purpose of the cancellation

6 Petitioner's objections to respondent's reliance on petitioner's
pending application Serial No. 78868826 and the file for the
application, as well as the file for petitioner's pleaded Registration
No. 2720719 (PURIFIED WATER TO GO) are well taken. That evidence was
never made of record during respondent's testimony period. This
untimely evidence has not been considered.
Cancellation No. 92044068
15
proceeding. We must base our conclusions on the entire record
and arguments presented in this inter partes proceeding. Cf. In
re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Furthermore, as petitioner points out, it can be seen
from the registration file for the involved registration that the
examining attorney's search strategy was not calculated to find
any marks that used the word "water" instead of "H20."
Actual confusion
Respondent argues that despite the fact that the marks have
been in contemporaneous use for nearly 10 years there is no
evidence of any actual confusion during that time. However, the
parties' stores are located in different geographic regions.
Apparently, petitioner's closest stores are located in Michigan,
approximately 120 miles from respondent's two stores which are
located in Hicksville and Antwerp, Ohio. Thus, it is unclear
whether a meaningful opportunity for actual confusion has ever
existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768
(TTAB 1992). There must be evidence showing that there has been
an opportunity for instances of actual confusion to occur, and
here the record is devoid of any such proof, so this factor is
neutral. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
Conclusion
We find that purchasers who are familiar with petitioner's
retail water stores, and its relatively strong and distinctive
Cancellation No. 92044068
16
mark WATER TO GO would be likely to believe, upon encountering
respondent's highly similar mark H20 TO GO also used on retail
water stores and on products that are closely related thereto,
that such services and goods originated with or are in some way
associated with or sponsored by petitioner.
Decision: The petition to cancel is granted, and
Registration No. 2310252 will be cancelled in due course.