JJI Inter-national, Inc.

Trademark Trial and Appeal Board

Sep 13, 2007

No. 78679228 (T.T.A.B. Sep. 13, 2007)

Mailed: September 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

JJI International, Inc.
________

Serial No. 78679228
_______

Mark E. Teteault of Barlow, Josephs & Holmes, Ltd. for JJI
International, Inc.

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Zervas, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

JJI International, Inc. has filed an application to
register the mark SPLASHES & SPARKLES (in standard
character form) for “[w]holesale distributorships featuring
collectibles, novelties, totes, jewelry and gift items.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the

1 Application Serial No. 78679228, filed July 27, 2005, based on
use of the mark in commerce, and alleging first use anywhere and
in commerce as of September 20, 2004.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 78679228
2
identified services, so resembles the mark SPLASH N SPARKLE
(in typed form), previously registered for “paint kits
comprised of umbrellas with preprinted line art panels,
screen printed ponchos, waterproof glitter paints and
brushes,”2 as to be likely to cause confusion, mistake, or
deception.
Applicant has appealed. Applicant and the examining
attorney filed briefs. We affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. DuPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

2 Registration No. 2777256 issued October 28, 2003.
Ser No. 78679228
3
Similarity of the Marks
We consider first whether applicant’s mark SPLASHES &
SPARKLES and registrant’s mark SPLASH N SPARKLE are similar
or dissimilar when compared in their entireties in terms of
sound, appearance, connotation and commercial impression.
The test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impressions that confusion as to the
source of the goods and/or services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant contends that the parties’ respective marks
have a different sound and commercial impression.
By contrast, the examining attorney contends that the
parties’ marks are highly similar in appearance, sound and
connotation because applicant’s mark is merely a variation of
the wording “splash and sparkle.”
We agree with the examining attorney. The parties’
respective marks are substantially similar in appearance and
sound and any differences between the two are of little or no
Ser No. 78679228
4
consequence. Specifically, the fact that the registered mark
contains the letter “N” and applicant’s mark contains an
ampersand constitutes a very minor difference, as they are
pronounced in nearly the same way. Likewise, the addition of
the letters “es” to the word “splash” and the letter “s” to
the word sparkle” in registrant’s mark does not significantly
distinguish the appearance or pronunciation of the marks.
While admittedly, the difference between the singular and
plural forms creates a slight dissimilarity in appearance and
sound, this difference is not significant enough that
consumers, with their fallible memories, would be expected to
remember these distinctions. See Wilson v. Delauney, 243
F.2d 877, 114 USPQ 339, 341; In re Belgrade Shoe, 411 F.2d
1352, 162 USPQ 227, 227 (CCPA 1969); and In re Pix of
America, Inc. 225 USPQ 691, 695 (TTAB 1985).
We are also not persuaded by applicant’s contention that
registrant’s “active” wording evokes a different commercial
impression than its “descriptive” wording. Specifically,
applicant contends that “[t]he wording SPLASH N SPARKLE in
Registrant’s mark are active words that imply that a user
will have something that sparkles when they are splashing”
(ostensibly, when the purchaser is “splashing” paint from the
paint kit or “splashing” in the rain with the painted
umbrella); whereas applicant’s mark SPLASHES & SPARKLES
Ser No. 78679228
5
“appears to be two distinctive and separate descriptive
words,” and “appears to imply that the various items will
make a splash (ie [sic] be a big hit or draw attention) or
the items will sparkle.” Applicant’s brief at 2. It is
unlikely that potential consumers will make such a
distinction. While some consumers may perceive slight
differences in meaning, there is nothing in the record to
suggest that consumers upon seeing the registered mark would
think “something that sparkles when they are splashing,” as
opposed to something that sparkles, draws attention or is a
big hit. Indeed, the advertising copy associated with
registrant’s paint kits suggests all of these meanings. The
copy states, in relevant part, that “[k]ids can make a splash
outside with this colorful kid-sized umbrella.” Office
Action No. 1, Attachment 8 (reproduced at page 8 of this
decision).
Thus, the factor of the similarity of the marks favors
a finding of likelihood of confusion.
Similarity of Goods and Services

We now consider the services identified in the
application and the goods identified in the cited
registration. It is well settled that the question of
likelihood of confusion must be determined based on an
analysis of the services recited in applicant’s application
Ser No. 78679228
6
vis-à-vis the goods recited in the registration. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that the goods or services are related in some manner or
that some circumstances surrounding their marketing are
such that they would be likely to be seen by the same
persons under circumstances which would give rise, because
of the marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases
cited therein.
The examining attorney contends that the goods are
related because
“applicant’s ‘wholesale distributorships’ which
feature ‘collectibles, novelties, totes,
jewelry and gift items’ could feature the goods
such as the registrant’s ‘paint kits comprised
of umbrellas with preprinted line art panels,
screen printed ponchos, waterproof glitter
paints and brushes.’ This is because goods
such as the registrant’s could fit within the
Ser No. 78679228
7
definition of ‘collectibles, novelties or gift
items’ and sold by applicant.

Examining attorney’s brief at (unnumbered) p. 7.
In support of his position that “paint kits” are
commonly considered “collectibles,” “novelties” and “gift
items,” the examining attorney has submitted the following
definition, in relevant part of “collectible”;
… an item that some people want to collect as a
hobby;3

the following definitions, in relevant parts, of “novelty”:
3. an article of trade whose value is
chiefly decorative, comic, or the like and
whose appeal is often transitory4

3. [a] small mass-produced article, such as
a toy or trinket5;

and the following definition, in relevant part, of “gift”:
[s]omething that it given, esp. to show your
affection; a present ….6

The examining attorney also submitted printouts from
Internet websites to show that retailers consider paint
kits as gifts. Relevant portions of wording on these
websites are as follows:
Marine Life Gifts
We have an extensive selection of gifts for
the whole family. Items include plush
marine life animals, paint kits, Pewter, Sea

3 Cambridge Dictionaries Online.
4 Random House Unabridged Dictionary (Random House, Inc., 2006).
5 American Heritage Dictionary (4th ed).
6 Cambridge Dictionaries Online.
Ser No. 78679228
8
life displays, night lights, magnets and
much more.

(www.oceantreasures.com);

Umbrella Painting Kit
by Alex

***

I bought 2 more! One for my 6 year old[’]s
birthday and her friend.

(www.amazon.com);

Decorate Your Own Umbrella

Splash n Sparkle
Umbrella Painting Kit

***

Please complete the information below if this is a gift:
What should the Gift Card Say?
Should the Gift Card be signed?

(www.MailJust4me.com);7 and
Cameo Fabric/Craft Paint
KITS/SETS

These make awesome gifts!
(www.cameopaints.com).
Applicant, on the other hand, disputes the examining
attorney’s assertion that applicant’s services are related
to registrant’s paint kits based on evidence consisting of
a few web pages where umbrellas were considered gift items

7 The copy describes registrant’s goods.
Ser No. 78679228
9
because “there are literally thousands of websites where
widely diverging goods are offered for sale side by side.”
Applicant’s brief at p. 3. Even if many websites offer a
myriad of goods for sale “side by side,” the evidence of
record sufficiently shows that retailers offer paint kits,
such as registrant’s, as gift items. Indeed, as shown on the
website featuring registrant’s goods, www.MailJust4me.com,
registrant’s paint kits clearly are offered as gift items.
Moreover, in the absence of any exclusions in
applicant’s application, we must presume that applicant’s
wholesale distributorship services featuring, among other
things, gift items, could feature registrant’s paint kits
comprising umbrellas with preprinted line art panels,
screen printed ponchos, waterproof glitter paints and
brushes. Therefore, at the very least, applicant’s
wholesale distributorship services featuring, in
particular, gift items, are related to registrant’s paint
kits. See e.g., In re United Service Distributors, Inc.,
229 USPQ 237 (TTAB 1986)[design for distributorship
services in the field of health and beauty aids held likely
to be confused with design for skin cream].
Thus, the factor of similarity of the goods and
services favors a finding of likelihood of confusion.
Ser No. 78679228
10
Similarity of Trade Channels and Sophistication of
Purchasers

Applicant argues that the examining attorney’s
“comparison” of the goods and services is problematic
because registrant’s goods and applicant’s services do not
travel in the same trade channels. Specifically, applicant
asserts that registrant’s paint kits “clearly would be sold
in retail channels that provide craft items as they are
clearly intended as a craft activity for children.”
Applicant’s brief at p. 3. Applicant further argues that
“… a likely consumer of the Registrant’s paint kits would
never encounter the Applicant’s wholesale merchandise
catalog. Similarly, a chain store buyer who was browsing
the available wholesale merchandise catalogs would not be
confronted with Applicant’s retail paint kits.”
Applicant’s brief at p. 4.
We find these arguments unavailing. Although
applicant’s identification of services is restricted to the
wholesale market, registrant’s identification contains no
restrictions. We therefore must assume that registrant
sells its goods in all of the usual trade channels for such
goods and to all normal classes of customers therefor.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
supra; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
Ser No. 78679228
11
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002); and Toys R Us
v. Lamps R Us, 219 USPQ 340 (TTAB 1983). Registrant’s
trade channels therefore include the same wholesale trade
channels as applicant's trade channels and registrant’s
goods are sold to the same retailers as applicant's
services are provided to. That is, the same retailers
purchasing gift items from applicant’s wholesale
distributorships for resale would purchase applicant’s
paint kits for resale.
All of such overlapping purchasers, particularly those
who purchase for “Mom and Pop” operations, are not careful
or sophisticated purchasers. However, even if they are
sophisticated in their purchasing decisions, they may still
be confused because their care or sophistication “does not
necessarily preclude their mistaking one trademark for
another” and they are not entirely immune from confusion as
to source or sponsorship. Wincharger Corp. v. Rinco, Inc.
297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See also In
re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Because of the overlapping purchasers for similar
goods and services, i.e., retailers purchasing gift items,
the factor of similarity of trade channels favors a finding
Ser No. 78679228
12
of likelihood of confusion. However, the factor of the
sophistication of purchasers is neutral.
Last, to the extent that we have any doubt on the
issue of likelihood of confusion, we resolve such doubt in
favor of the prior registrant. See TBC Corp. v. Holsa
Inc., 126 F.3d 1470, 44USPQ2d 1315 (Fed. Cir. 1997); and In
re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
In view of the foregoing, we conclude that purchasers
familiar with registrant’s paint kits comprised of
umbrellas with preprinted line art panels, screen printed
ponchos, waterproof glitter paints and brushes offered
under the mark SPLASH N SPARKLE could reasonably assume,
upon encountering applicant’s substantially similar mark
SPLASHES & SPARKLES for related wholesale distributorship
services featuring, in particular, gift items, that such
services emanate from, or are sponsored by or affiliated
with the same source.

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