Lauren Ashley Howell

Trademark Trial and Appeal Board

May 27, 2008

No. 78505128 (T.T.A.B. May. 27, 2008)

Mailed:
May 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Lauren Ashley Howell
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Serial No. 78505128
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Lauren Ashley Howell pro se.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Rogers, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Lauren Ashley Howell, a Canadian citizen, seeks
registration on the Principal Register of the mark THREE
BEARS PUBLISHING (in standard character form, “PUBLISHING”
disclaimed) for goods ultimately identified as “Decals,
Appliqués in the form of a decal, Art Pictures in
watercolor, acrylic paint, marker, pencil crayon, and
pencil, Art Prints, Printed Art Reproductions, Graphic Art
Reproductions, Printed Computer-generated Art, Printed
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78505128
2
Characters, Paper Window Shades, Paper Automobile
Windshield Sun Shades, Paper Placemats, Gift Wrapping
Paper, Stickers, Photo Albums, temporary Tattoos, Dry-
Transfer Characters” in International Class 16.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with her identified goods, so
resembles the registered mark THREE BEARS BOOKS (in typed
form, “BOOKS” disclaimed) for “publication of
developmentally appropriate products, namely educational
teaching textbooks, workbooks, and worksheets for children
and their caregivers” in International Class 412 and
“educational and teaching materials, namely workbooks,
worksheets, and textbooks on a variety of subjects for
grades pre-kindergarten through 12”3 in International Class
16 as to be likely to cause confusion, mistake or
deception. The registrations are owned by the same entity,
Three Bears Books, Inc.

1 Application Serial No. 78505128, filed October 25, 2004,
alleging first use of the mark on May 1, 2003 and first use in
commerce on October 22, 2004 under Trademark Act Section 1(a), 15
U.S.C. §1051(a). The application is also based upon a foreign
registration under Trademark Act Section 44, 15 U.S.C. §1126.

2 Registration No. 1997628, issued on August 27, 1996, renewed.

3 Registration No. 2003662, issued on September 24, 1996,
renewed.
Serial No. 78505128
3
The appeal is fully briefed.4 We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., 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 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).
We first consider whether applicant’s mark, THREE
BEARS PUBLISHING and the mark in the cited registrations,
THREE BEARS BOOKS, are similar or dissimilar when compared

4 Applicant attached several exhibits to her reply brief. The
record in the application should be complete prior to the filing
of an appeal. Trademark Rule 2.142(d). Therefore, these
exhibits are untimely and have not been considered. We have only
considered matter that was properly entered into the record
during the prosecution of the application, i.e., no later than
the denial of the final request for reconsideration. TBMP §1204
(2d ed. rev. 2004).

Serial No. 78505128
4
in their entireties in terms of appearance, sound,
connotation and commercial impression.
Examining the marks in terms of their appearance,
sound, meaning, and commercial impression, we find the
marks to be similar. The test of likelihood of confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The question is
whether the marks create the same overall impression.
Visual Information Inst., Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980). We must determine whether the marks
are sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Clearly, the phrase THREE BEARS is the dominant
element in applicant’s and registrant’s marks given the
highly descriptive nature of the other two disclaimed
words, PUBLISHING and BOOKS. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (more or
less weight may be given to a particular feature of a mark
provided the ultimate conclusion on likelihood of confusion
rests on consideration of the marks in their entireties.)
Serial No. 78505128
5
There is no question that THREE BEARS is the source-
identifying element in applicant’s and registrant’s marks.
Moreover, the dominant part of registrant’s mark - THREE
BEARS - is arbitrary and there is no evidence in the record
to support a finding that it is weak in this field of use.5
While the term BEAR per se may be widely registered and/or
used in the bookseller/publishing field, as shown by the
third-party registrations and listings of booksellers and
publishers in the record (e.g., Honey Bear Books, Brown
Bear Books, Purple Bear Books, Mama Bear Books, see May 21,
2006 Request for Reconsideration) the only examples of use
or registration of marks that include the phrase THREE
BEARS are the marks in the involved application and cited
registrations. Therefore, because of the dominance of the
identical arbitrary phrase THREE BEARS in the marks, we
find that the marks in their entireties are similar in

5 Applicant argues in its reply brief that the phrase THREE BEARS
in its mark is not arbitrary but rather has “great descriptive
significance” in that it is used to convey the image “that the 3
bears from the goldilocks story, or any 3 live bears, have come
to life and begun publishing books.” Reply Br. pp. 5-6.
Further, she states that it was an oversight “that the wording
‘Three Bears’ was not disclaimed as being descriptive by the
Applicant in this Application.” Id. However, applicant’s use of
the mark to evoke a particular image does not make it descriptive
of a significant feature of the identified goods. Moreover, it
is not possible to disclaim an entire mark; in the event the
entire the mark was descriptive, it would be refused in its
entirety as merely descriptive.
Serial No. 78505128
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sound, appearance and connotation, and have the same
overall commercial impression.
In making our determination we have considered
applicant’s argument that the additional elements
PUBLISHING and BOOKS distinguish the marks. Specifically,
applicant argues that:
Because the registrations cited against this
application contain the word ‘Books’ rather than
the word ‘Publishing’, (and ours conversely
contains only the word ‘Publishing’, not the word
‘Books’) the cited registrations have the sound,
appearance, meaning and connotation of being a
BOOK STORE rather than a Book Publisher. Our
Application, on the other hand, is for a
trademark that has the sound, appearance,
meaning, and connotation of being a PUBLISHER
rather than a book store.

Br. p. 2.

As noted by the examining attorney, we must consider
the connotation in the context of the goods and services
and “it is more likely that the use of the term BOOKS with
Registrant’s services connotes book publishing because the
Registrant provides publication services.” Br. p. 5. More
importantly, as discussed above, in considering the marks
in their entireties, these differences consisting of
descriptive or generic terms are not sufficient to overcome
the identical nature of the dominant elements in the marks.
Serial No. 78505128
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In view of the above, the du Pont factor of the
similarity of the marks favors a finding of likelihood of
confusion.
We now consider the factor of the relatedness of the
goods and services. In making this determination we
recognize that where the marks are virtually identical,
“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 marks can lead to an
assumption that there is a common source”).
As noted above, registrant’s goods in Reg. No. 2003662
comprise “educational and teaching materials, namely
workbooks, worksheets, and textbooks on a variety of
subjects for grades pre-kindergarten through 12” and the
services in Reg. No. 1997628 comprise “publication of
developmentally appropriate products, namely educational
teaching textbooks, workbooks, and worksheets for children
and their caregivers.” Applicant’s goods comprise “Decals,
Appliqués in the form of a decal, Art Pictures in
Serial No. 78505128
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watercolor, acrylic paint, marker, pencil crayon, and
pencil, Art Prints, Printed Art Reproductions, Graphic Art
Reproductions, Printed Computer-generated Art, Printed
Characters, Paper Window Shades, Paper Automobile
Windshield Sun Shades, Paper Placemats, Gift Wrapping
Paper, Stickers, Photo Albums, temporary Tattoos, Dry-
Transfer Characters.”
In support of his contention that applicant’s goods
are related to registrant’s goods and services, the
examining attorney submitted several third-party use-based
registrations to show that numerous entities have adopted a
single mark for both applicant’s and registrant’s types of
goods and/or services. See, e.g., Reg. No. 1909982 (SHAMU
for, inter alia, educational books on marine subjects,
coloring books, decals and crayons); Reg. No. 2369755
(ACTION PUBLISHING for, inter alia, children’s books and
magazines featuring the natural sciences, and pencils);
Reg. No. 2594814 (DESERT SKY PUBLISHING COMPANY for, inter
alia, personal and family self-help books, and art prints);
Reg. No. 2707520 (TEXTS AND TECHNOLOGY for, inter alia,
nonfiction books and newsletters all in the field of
integration of written words and oral, audio and visual
images, decals, appliqués in the form of decals, art
prints, pencils, and publication services, namely,
Serial No. 78505128
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electronic publication of text and graphic works of
others); Reg. No. 2738021 (THE YACHTS OF SEABOURN INTIMATE
SHIPS. UNCOMPROMISING LUXURY for, inter alia, books, and
photo albums); Reg. No. 2661126 (JEI for, inter alia,
coloring books, children’s picture books, pencils, stickers
and publication of textbooks and workbooks); Reg. No.
2874321 (NINE STORIES HIGH for, inter alia, books in the
field of children’s stories, pencils, gift wrapping paper,
decals, transferable temporary tattoos, stickers and
posters, and publication of books brochures, bookmarks, and
coloring books); and Reg. No. 3056171 (THE PICTURES DO THE
TALKING for, inter alia, booklets, posters, illustrations,
paper illustration boards, and publication of cards,
pamphlets, booklets, posters, handbooks and printed
instructional, educational, and teaching materials). See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993).
In addition, the examining attorney submitted excerpts
from a publisher’s website showing that the publisher sells
a variety of goods under its name. See, e.g., Scholastic
webpage offering books and photo albums. We further note
that applicant’s original identification included books.
Further, inasmuch as there are no limitations in the
identification of goods and services, we must presume that
Serial No. 78505128
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the goods and services will be offered in some of the same
channels of trade, and will be used by some of the same
purchasers. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). While
registrant’s identifications are restricted to the
educational field, the application contains no field of use
restriction and, as such, includes the educational field.
Moreover, as shown below, excerpts from applicant’s website
attached to the December 12, 2006 Denial of Request for
Reconsideration show that applicant markets a wide variety
of products, including books in the educational field.

In view of the above, the du Pont factors of the
similarity of the goods and services and the channels of
Serial No. 78505128
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trade favor a finding of likelihood of confusion as to the
cited registrations.
Finally, to the extent applicant is arguing that
despite a period of concurrent use there have been no known
instances of actual confusion, there is nothing in the
record to show that there has been a meaningful opportunity
for such confusion to have occurred.6 More importantly, in
the context of an ex parte proceeding, “the lack of
evidence of actual confusion carries little weight.”
Majestic Distilling, supra, 65 USPQ2d at 1205.
In conclusion, we find that because of the highly
similar marks, the relatedness of the goods and services,
and the overlap in the trade channels, confusion is likely
between applicant’s mark and the mark in the cited
registrations. To the extent there are any doubts, we
resolve them, as we must, in registrant’s favor. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.

6 Applicant’s argument in its reply brief that no likelihood of
confusion exists because registrant is not using its mark, is
unavailing. As applicant itself stated, “the examiner is bound
to support marks on the register whether in use or not.” Reply
Br. p. 8. We must make our determination of likelihood of
confusion based on the registration itself and accord it the
presumptions provided by Section 7(b) of the Trademark Act.