KidVid, Inc.

Trademark Trial and Appeal Board

Sep 5, 2003

No. 78032155 (T.T.A.B. Sep. 5, 2003)

Mailed: September 5,2003
Paper No.9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re KidVid, Inc.
________
Serial No. 78/032,155
_______
Lee B. Beitchman, of Beitchman & Hudson for KidVid, Inc.
Michael Webster, Trademark Examining Attorney, Law Office 102
(Tom Shaw, Managing Attorney).
_______
Before Simms, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
KidVid, Inc. has filed an application to register the
mark "BABY BLOOPERS" on the Principal Register for "prerecorded
videotapes, audio cassettes, compact discs, and digital video
discs all featuring educational materials for the purpose of
improving the creative and intellectual faculties of infants and
children."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
1 Ser. No. 78/032,155, filed on October 24, 2000, which alleges a bona
fide intention to use such mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78/032,155
2
ground that, when used in connection with applicant's goods, the
mark "BABY BLOOPERS" is merely descriptive of them. Registration
also has been finally refused under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that, when used in
connection with its goods, applicant's mark so resembles the mark
"BLOOPERS," which is registered on the Supplemental Register for
"entertainment [services] in the nature of on-going television
programs in the field of comedy, variety, short out-takes and
skits,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals to
register.
Turning first to the refusal to register on the ground
of mere descriptiveness, since the disposition thereof, and thus
a determination of the strength or weakness of applicant's mark,
obviously has a bearing on whether it is confusingly similar to
the cited mark, applicant contends that its "BABY BLOOPERS" mark
is suggestive of its goods, which it stresses are identified as
"featuring educational materials for the purpose of improving the
creative and intellectual faculties of infants and children." In
particular, applicant "asserts ... that consumers coming upon the
mark would not perceive the goods to be a videotape intended to
enhance their child's intellectual and creative skills and[,]
therefore, the mark can only be classified as suggestive."
2 Reg. No. 2,466,773, issued on July 3, 2001, which sets forth a date
of first use anywhere and in commerce of January 31, 1998.
Ser. No. 78/032,155
3
The Examining Attorney, citing the definitions of
record from The American Heritage Dictionary of the English
Language (3d ed. 1992), which in relevant part list "baby" as
"[a] very young child; an infant" and define "blooper" as "[a]
clumsy mistake, especially one made in public; a faux pas,"
argues that applicant's "BABY BLOOPERS" mark immediately
signifies "a clumsy mistake performed by a child or infant." In
view thereof, the Examining Attorney maintains that "the
applicant's mark immediately identifies to the prospective
consumer the subject matter of the [applicant's] goods." As
further support therefor, the Examining Attorney insists that the
U.S. Patent & Trademark Office "has consistently held the term[s]
'BABY' and 'BLOOPERS' descriptive of goods or services where the
terms identify the subject matter" thereof, as shown by the
copies of record of third-party registrations in which either the
term "BABY" has been disclaimed when part of a mark registered on
the Principal Register or the term "BLOOPERS" constitutes or is
part of a mark registered on the Supplemental Register.
In addition, we note that the record contains various
printouts of Internet webpages, listings of Internet websites and
excerpts from the "NEXIS" database, all of which were submitted
(even though many instances are duplicates of the same stories)
as evidence to demonstrate the mere descriptiveness of the term
"baby bloopers." The two most pertinent examples thereof are set
forth below (emphasis added):
"8 p.m. ET/PT Premiere of Uh Oh! Baby
Bloopers Watch real parents' home videos of
their kids' laughable antics .... Hosted by
Ser. No. 78/032,155
4
pediatrician Andrea Pennington, M.D.,
Discovery Health's medical director and
spokesperson. Between the chuckles she'll
provide helpful tips on good parenting and
child development." -- discoveryhealth.com,
July 22, 2002; and
"The debut edition of [VH1's music video
series] 'Radical Recut' presents Foo
Fighters' 'Learn to Fly' spliced with
aviation mishaps footage, Britney Spears'
'Baby One More Time' laced with home video
baby bloopers ...." -- entertainmentnews-
daily.com, November 13, 1999.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
Ser. No. 78/032,155
5
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985). However, it is also well established that the
determination of mere descriptiveness must be decided on the
basis of the identification of goods or services as set forth in
the application. See, e.g., In re Allen Electric & Equipment
Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972).
In the present case, applicant's goods are identified
as "prerecorded videotapes, audio cassettes, compact discs, and
digital video discs all featuring educational materials for the
purpose of improving the creative and intellectual faculties of
infants and children." Applicant, in response to a request for
information by the originally assigned Examining Attorney which
required that it "specifically indicate if the applicant's goods
feature bloopers made by babies and/or feature instruction on how
to correct infant errors" (italics in original), stated that:
The applicant has not yet completed
development of the products for which this
application has been made and therefore does
not have either finished product or product
literature to furnish to the examiner. The
product will be VHS video tapes, audio
cassettes (sound only) and digital video
discs featuring infants and children
performing various playful activities in a
playground environment. They will contain
the sounds of the children and added music
performances as well as scenes featuring
animals and other animate and inanimate
objects. The products are designed to be
sold to the parents of children for the
purpose of increasing their child's
educational capacities. .... The mark is
not descriptive of the product[s] insofar as
... the definition of "blooper" appearing in
Ser. No. 78/032,155
6
the Office Action does not comport with the
content of the product[s]. ....
Finding that applicant had "failed to submit sufficient
additional information to permit a determination as to whether
all or part of the mark is descriptive" as required by the
original Examining Attorney, such requirement was maintained by a
second Examining Attorney who was subsequently assigned to review
the application. Applicant, in response thereto, advised that:
Applicant now has the ability to comply
with the ... request for additional
information and hereby submits a videotape
featuring several scenes intended for
inclusion in the final goods. As can be seen
from the enclosed videotape, these scenes can
hardly be classified as "bloopers" inasmuch
as they are not out-takes or mistakes from
previous filmed programs as is the common
interpretation of this coined word. Rather,
they are scenes designed to impart
educational experiences for infants and
children, for which applicant's educational
advisors have generally indicated to
applicant may be of some beneficial effect to
the intellectual and cognitive functions of
the infant and child viewers.
However, the second Examining Attorney, after watching such
scenes, was of a contrary view, stating with respect to the
ground of mere descriptiveness in the final refusal that "[t]he
video tape submitted by the applicant features a montage of short
out-takes of different infants or young children performing cute
and funny tasks."
Unfortunately, we are not able to view applicant's
sample videotape ourselves because, as the third and currently
assigned Examining Attorney confesses in his brief, "applicant's
tape ... was not transferred to the new examining attorney."
Nonetheless, he repeated and relies upon the above-noted
Ser. No. 78/032,155
7
statement by the immediately preceding Examining Attorney and
applicant, we observe, failed to file a reply brief challenging
such statement, just as it did not take issue therewith in its
initial brief. Accordingly, we take it as established by the
record that applicant's goods, although "featuring educational
materials for the purpose of improving the creative and
intellectual faculties of infants and children," nevertheless
include as a significant feature thereof "a montage of short out-
takes of different infants or young children performing cute and
funny tasks." Furthermore, we note that it is reasonable to
regard such out-takes as including amateur home videos or other
not previously broadcast scenes of clumsy mistakes or bloopers by
infants and young children inasmuch as applicant, as indicated
above, argued only that the sample scenes for its goods were not
"bloopers" in the sense of their being "out-takes or mistakes
from previous filmed programs as is the common interpretation of
this coined word" (italics added).
Based upon the arguments and evidence presented, it is
plainly the case that the mark "BABY BLOOPERS" merely describes,
as contended by the Examining Attorney, the principal subject
matter featured in applicant's goods. Nothing in such mark is
ambiguous or incongruous when considered in relation to
applicant's "prerecorded videotapes, audio cassettes, compact
discs, and digital video discs." Consequently, no imagination,
cogitation or gathering of further information would be necessary
in order for customers to perceive precisely the merely
descriptive significance of the mark "BABY BLOOPERS." Such mark
Ser. No. 78/032,155
8
immediately describes, without the need for conjecture or
speculation, that a significant characteristic or feature of
applicant's goods is that they feature short, cute and funny out-
takes of infants or very young children performing clumsy
mistakes, which subject matter is more commonly referred to
simply as "baby bloopers." The fact that applicant's goods also
feature educational materials for the purpose of improving the
creative and intellectual faculties of infants and children, in
that the scenes of baby bloopers are designed to impart
educational experiences for infants and children viewing the
content of applicant's goods, does not detract or otherwise
diminish the merely descriptive significance which the mark "BABY
BLOOPERS" forthwith conveys as to the subject matter of
applicant's goods.
With respect to the remaining issue in this appeal, our
determination under Section 2(d) is based on an analysis of all
of the facts in evidence which are relevant to the factors
bearing on the issue of whether there is a likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and/or services and the similarity of the marks.3
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks."
Ser. No. 78/032,155
9
Turning first to consideration of the respective goods
and services, it is well settled that the issue of likelihood of
confusion must be determined on the basis of the goods and
services as they are set forth in the involved application and
the cited registration, and not in light of what such goods and
services are shown or asserted to actually be. See, e.g.,
Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus, where applicant's
goods and registrant's services are broadly described as to their
nature and type, it is presumed in each instance that in scope
the application and registration encompass not only all goods and
services of the nature and type described therein, but that the
identified goods and services move in all channels of trade which
would be normal for those goods and services, and that they would
be purchased by all potential buyers thereof. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Moreover, it is well established that applicant's goods
need not be identical or even competitive in nature with
registrant's services in order to support a finding of likelihood
of confusion. Instead, it is sufficient that the goods and
services are related in some manner and/or that the circumstances
Ser. No. 78/032,155
10
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
Applicant contends that the goods and services involved
in this appeal are so different that there could be no likelihood
of confusion. In particular, applicant asserts that "there is
little likelihood" that registrant's television programs in the
field of comedy, variety, short out-takes and skits, even "if
turned into product[s], will be available at your local baby
goods or toy store such as is the case with [the goods of]
applicant." According to applicant, each of its products "is
sold to parents and grandparents and appears with, or in close
physical proximity to[,] baby products."
The Examining Attorney, on the other hand, maintains
that applicant's goods and registrant's services are sufficiently
related in a commercial sense that, if offered under the same or
sufficiently similar mark, confusion as to the source or
sponsorship thereof is likely to occur. Here, we observe, it is
plain that applicant's "prerecorded videotapes, audio cassettes,
compact discs, and digital video discs," even though specifically
identified in its application as "featuring educational materials
for the purpose of improving the creative and intellectual
Ser. No. 78/032,155
11
faculties of infants and children," are nonetheless not limited
to any particular channels of trade or classes of purchasers.
Thus, they must be considered as suitable for sale in such
customary channels of trade as retail video stores, record shops
and mass merchandisers where, it is common knowledge, prerecorded
videotapes, audio cassettes, compact discs and digital video
discs of a wide variety of broadcast television programs are also
sold. It is also the case that applicant's goods, like
registrant's entertainment services in the nature of on-going
television programs, must be considered as directed at a wide
ranging audience of ordinary consumers, including parents and
grandparents of infants and young children.
Moreover, as the Examining Attorney points out in his
brief, "[c]onsumers are ... accustomed to a single source for
videotapes and television programs of the same subject matter."
In support of such proposition, the Examining Attorney notes that
the record contains copies of "15 U.S. Registrations from a total
of 290 on the Register in which the same mark is used relative to
television programs and videotapes featuring the same program."
It is settled, in this regard, that while use-based third-party
registrations are not evidence that the different marks shown
therein are in use or that the public is familiar with them, such
registrations may nevertheless have some probative value to the
extent that they serve to suggest that the goods and services
listed therein are of the kinds which may emanate from a single
source. See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc.,
Ser. No. 78/032,155
12
6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Here, the copies of the
registrations referred to by the Examining Attorney show not only
that they are based on use, but in each instance they include,
respectively, such goods as "prerecorded audio and video tapes
featuring interviews conducted and news stories reported by
youths ages 8-18" or "prerecorded video tapes featuring
educational information on children," on the one hand, and
services such as "ongoing television ... programs in the fields
of youth journalism and social issues affecting youths ages 8-18"
or "on-going television programs ... in the field of child
raising," on the other.
In view thereof, and since, as the Examining Attorney
observes, the goods and services at issue herein both (i) feature
as their subject matter "clips of funny real-life situations"
involving clumsy mistakes or bloopers, including those by babies,
and (ii) are directed at the same classes of ordinary consumers,
such as parents and grandparents of infants, we agree with the
Examining Attorney that applicant's goods and registrant's
services are sufficiently related that, if provided under the
same or similar marks, consumers thereof would be likely to
attribute a common origin or affiliation to the respective goods
and services. This brings us, therefore, to consideration of the
marks at issue.
Applicant chiefly argues that "[t]here is no per se
rule that for certain goods or services that are related that
there must be a likelihood of confusion from the use of similar
Ser. No. 78/032,155
13
or identical marks" in connection therewith.4 This appeal,
however, differs from the cases cited by applicant as support for
its argument inasmuch the latter involved marks which were found
to have different connotations because of the respective goods
with which the marks were associated.5 Here, by contrast, the
presence of the term "BABY" in applicant's "BABY BLOOPERS" mark
does not give such mark a sufficiently different connotation from
registrant's "BLOOPERS" mark. Instead, as pointed out by the
Examining Attorney, "[t]he term 'BABY' is a highly descriptive
term clearly identifying the subject matter or purpose of the
goods, namely, infants." Thus, when considered in their
entireties, it is readily apparent that the word "BABY" is
insufficient to distinguish applicant's "BABY BLOOPERS" mark from
registrant's "BLOOPERS" mark, given that such marks are
4 Applicant, in its brief, sets forth a list of various third-party
registrations which, it maintains, "evidence ... the issuance of ...
identical or nearly identical marks for registration, even where the
categories of goods and services are arguably related." While
applicant asserts that such evidence "justifies applicant's position
that ... [it is] entitled to registration," it is pointed out that,
not only is a mere listing of information concerning third-party
registrations insufficient to make them of record, see, e.g., In re
Duofold Inc., 184 USPQ 638, 640 (TTAB 1974), but in any event the
evidence applicant seeks to rely on is untimely under Trademark Rule
2.142(d) since it was furnished for the first time with applicant's
brief. Irrespective thereof, suffice it to say that each case must be
determined on its own merits. See, e.g., In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ["Even if some prior
registrations had some characteristics similar to [applicant's]
application, the ... allowance of such prior registrations does not
bind the Board or this court"].
5 See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314-15 (TTAB
1987) [mark "CROSS-OVER for bras held not likely to cause confusion
with mark "CROSSOVER" for ladies' sportswear]; In re British Bulldog,
Ltd., 224 USPQ 854, 856 (TTAB 1984) [mark "PLAYERS" for men's
underwear found not likely to cause confusion with mark "PLAYERS" for
shoes]; and In re Sydel Lingerie Co., Inc., 197 USPQ 629, 630 (TTAB
1997) [mark "BOTTOMS UP for ladies' and children's underwear held not
likely to cause confusion with mark "BOTTOMS UP" for men's suits,
coats and trousers].
Ser. No. 78/032,155
14
substantially similar in sound, appearance, connotation and
commercial impression.
Nonetheless, applicant insists that "the term 'baby' is
a very important part of applicant's mark, and goes a long way to
differentiating the marks as perceived by consumers" because,
according to applicant, its "BABY BLOOPERS" mark is part of a
"family of marks by applicant featuring 'baby' as a critical
identifier of applicant's goods." Such a family, applicant
asserts, includes its registered marks "BABY'S FIRST
IMPRESSIONS," "BRILLANT BABY," "BILINGUAL BABY," "BIBLE BABIES,"
"BABY GRAND" and "BRIGHTER BABY." However, as stated in J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1891-92 (Fed. Cir. 1991), a case cited by both applicant
and the Examining Attorney:
A family of marks is a group of marks
having a recognizable common characteristic,
wherein the marks are composed and used in
such a way that the public associates not
only the individual marks, but the common
characteristic of the family, with the
trademark owner. Simply using a series of
similar marks does not of itself establish
the existence of a family. There must be a
recognition among the purchasing public that
the common characteristic is indicative of a
common origin of the goods. ....
Recognition of the family is achieved
when the pattern of usage of the common
element is sufficient to be indicative of the
origin of the family. It is thus necessary
to consider the use, advertisement, and
distinctiveness of the marks, including
assessment of the contribution of the common
feature to the recognition of the marks as of
common origin.
The Examining Attorney, in view thereof, properly
points out that "[a]pplicant's claim that it has developed a
Ser. No. 78/032,155
15
family of marks containing the term 'BABY' identifying
applicant's baby products is contrary to the definition of a
'family of marks' and virtually impossible" given the
descriptiveness of the such term with respect to products for or
otherwise pertaining to babies. Specifically, as explained in
Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983), in
order to establish the existence of a family of marks:
[I]t must be shown by competent
evidence, first, that ... the marks
containing the claimed "family" feature, or
at least a substantial number of them, were
used and promoted together ... in such a
manner as to create public recognition
coupled with an association of common origin
predicated on the "family" feature; and
second, that the "family" feature is
distinctive (i.e., not descriptive or highly
suggestive or so commonly used in the trade
that it cannot function as a distinguishing
feature of any party's mark).
Here, applicant has not submitted any evidence that it
has promoted its marks together in such a way as to create a
family of marks. The mere fact that applicant claims ownership
of several registrations for marks which share the term "BABY" or
its plural is alone an insufficient basis on which to predicate
the existence of a family of marks. See, e.g., Hester
Industries, Inc. v. Tyson Foods, Inc., 2 USPQ2d 1646, 1647 (TTAB
1987); Consolidated Foods Corp. v. Sherwood Medical Industries
Inc., 177 USPQ 279, 282 (TTAB 1973); Polaroid Corp. v. American
Screen Process Equipment Co., 166 USPQ 151, 154 (TTAB 1970); and
Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419,
421 (CCPA 1965). Furthermore, the Examining Attorney is correct
in noting that the "[t]erm 'BABY' is obviously not distinctive
Ser. No. 78/032,155
16
for ... goods for infants and babies" and, thus, such term cannot
form the basis for application of the family of marks doctrine.
Finally, and in any event, it is pointed out that the
sole issue before us is whether the mark which applicant seeks to
register so resembles the registrant's mark that, when used in
connection with the respective goods and services, confusion is
likely. Consequently, even if applicant were to demonstrate that
it has established a family of marks characterized by the term
"BABY," such would not aid or otherwise entitle applicant to the
registration which it seeks. See, Baroid Drilling Fluids Inc. v.
Sun Drilling Products, 24 USPQ2d 1048, 1052 (TTAB 1992); and In
re Lar Mor Int'l, Inc., 221 USPQ 180, 183 (TTAB 1983).
Accordingly, we conclude that consumers, who are
familiar or acquainted with registrant's mark "BLOOPERS" for
"entertainment [services] in the nature of on-going television
programs in the field of comedy, variety, short out-takes and
skits," would be likely to believe, upon encountering applicant's
mark "BABY BLOOPERS" for "prerecorded videotapes, audio
cassettes, compact discs, and digital video discs all featuring
educational materials for the purpose of improving the creative
and intellectual faculties of infants and children," that such
closely related services and goods emanate from, or are sponsored
by or affiliated with, the same source. In particular, customers
encountering applicant's "BABY BLOOPERS" goods are likely to
regard such products as a compilation of portions from
registrant's "BLOOPERS" television programs in the field of
comedy, variety, short out-takes and skits which are devoted to
Ser. No. 78/032,155
17
the antics of babies as the principal topic or subject matter
thereof.
Decision: The refusals to register under Sections
2(e)(1) and 2(d) are affirmed.