Melissa & Doug, LLC

Trademark Trial and Appeal Board

Jan 8, 2021

87915069 (T.T.A.B. Jan. 8, 2021)

This Opinion is Not a
Precedent of the TTAB

Hearing: November 12, 2020 Mailed: January 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Melissa & Doug, LLC
_____

Serial No. 87915069
_____

Wendy E. Miller of Wissing Miller LLP,
for Melissa & Doug, LLC
Katherine M. DuBray, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____

Before Kuhlke, Lynch and English,
Administrative Trademark Judges.

Opinion by English, Administrative Trademark Judge:
Melissa & Doug, LLC (“Applicant”) seeks registration on the Principal Register of
the background design (“Proposed
Serial No. 87915069
- 2 -
Mark”) for the following goods and services based on a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f):1
 “Children’s books, calendars, maps, chalk boards for school and home use, dry
erase writing boards, printed responsibility charts, weather display boards,
pens, pencils, modeling clay, chalk, erasers, glue for stationery or household
use, arts and craft paint kits, paint brushes, stencils, rubber stamps, paper,
children’s activity books; magnetic learning display boards consisting of
calendars, maps, chalk boards for school and home use, dry erase writing
boards, printed responsibility charts and weather display boards; stickers;
markers; crayons; coloring books; writing pads of paper; writing pads of paper
containing pre-printed illustrations to decorate; educational material in the
nature of laminated paper placemats for developing educational skills;
children’s coloring sets consisting of paper, coloring books, crayons, markers
and pencils; writing implements containing invisible ink; hobby craft kits
comprising stickers and paper substrates with pre-printed illustrations to
decorate; hobby craft kits containing paper, cardstock and paper-backed foam
pieces for decorating; temporary tattoo transfers; arts and crafts paper kits;
arts and craft clay kits; arts and crafts kits containing paper, fabric, pre-cut
and pre-printed cardstock-backed and paper-backed foam pieces, crayons,
markers, pencils, rubber stamps, stickers, stencils, coloring books, toy beads,
glue for household use, and temporary tattoo transfers; arts and crafts
decoupage paper kits; children’s activity books featuring hidden images which
are revealed with the application of water; hobby craft kits containing a paper
substrate displaying a pattern or image with a scratchable opaque layer for
scraping off in a desired design to reveal portions of the pattern or image; hobby
craft kits containing paint, paint brushes and sponges, paper, fabric, felt, tape,
clay molds for clay, glue, stickers, stencils, beads, hook and loop fasteners,
paper-backed foam pieces, paper and cardstock preprinted with images for
decorating, adhesive paper substrates, substrates with transferrable foil
layers, string and toy looms; hobby craft kits containing stickers, beads, glue,
paper, paperbacked foam pieces, and adhesive paper substrates with a film
surface having a glitter effect; hobby craft kits containing adhesive paper
substrates and decorative foil sheets” in International Class 16; and

 “Jigsaw puzzles; toy vehicles; dominos; marbles; bowling pins and balls; toy
building blocks; toy construction blocks; toy pattern blocks; toy alphabet and

1 Application Serial No. 87915069; filed May 10, 2018, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use and first use in commerce on
September 30, 2003 for the goods in International Classes 16 and 28, and first use and first
use in commerce on May 6, 2008 for the services in International Class 35. Applicant asserted
a claim of acquired distinctiveness in its March 27, 2019 Office Action Response, TSDR 4.
Serial No. 87915069
- 3 -
number blocks; toy beads; puppets; toy musical instruments; jump ropes; yo-
yos; spinning tops; construction toys; toy model vehicles and related accessories
sold as a unit; children’s multiple activity toys; chess sets; checker sets; action-
type target games; magic tricks; pull toys; magnetic toy figures in the shape of
letters and numbers; memory and brain teaser board games; manipulative
puzzle and construction games containing latches, locks and laces; hobby craft
sets for making wooden toy vehicles; toy animals; role-playing kits for play
consisting of toy kitchens, toy tool benches, toy barns, toy castles, toy parking
garages and toy horse stables; toy food items and toy utensils for preparing
food, sold as a unit; toy abacuses; toy pounding benches; toy cobbler benches;
shape sorting toys; toy boats; inset puzzles; floor puzzles; children’s
educational games for developing fine motor, cognitive and counting skills;
children’s educational games for developing memory and dexterity; dice games;
memory games; manipulative games; parlor games; building games; card
games; wooden toys in the shape of animals, flowers and buildings; toy
accessories, namely, toy mobile phones, toy handbags, toy sunglasses and toy
key chains; balls in the nature of children’s toys, namely, kickballs, toy sports
balls and plush balls; toy figures; butterfly nets; play tunnels; play tents; play
houses and toy accessories therefor; toy food items; toy cooking utensils; toy
kitchen appliances; toy shopping carts; sand toys; toy tools; dolls; doll
furniture; doll accessories; doll houses and furnishings; plush toys; toy looms;
hobby craft kits for making toy clothing, dolls, doll clothing, toy figures, toy
vehicles, toy jewelry, toy hair accessories, toy picture frames, toy decorative
and Christmas tree ornaments, toy stained glass sculptures, toy jewelry and
trinket boxes, keepsake boxes, toy mirrors, toy magic wands, toy tiaras, toy
clothing, toy wallets, toy key rings, and decorative toy landscapes and scenery
in the nature of animal habitats, fairy tale scenes, dinosaur habitats and
undersea habitats; toy scale model hobby craft kits; toy 3-d eyeglasses; hobby
craft kits containing a transparent or translucent substrate with a scratchable
opaque layer for modification by the user to create simulated toy stained glass
sculptures; toy garden tools; toy binoculars; toy magnifying glasses; toy
flashlights” in International Class 28; and

 “Online retail store services featuring books, arts and crafts materials, arts
and crafts kits, hobby craft kits, stationery, toys, games, puzzles, dolls,
costumes, juvenile furniture and rugs” in International Class 35.

The application includes the following description of the mark:
The mark consists of a red oval with a white border. The broken lines
inside the oval are not part of the mark, but serve only to show the
location of a logo, without regard for the color or the characters which
comprise the logo. The broken lines around the periphery of the oval are
Serial No. 87915069
- 4 -
not part of the mark, but serve only to identify the perimeter of the white
border.

The colors red and white are claimed as features of the mark.
The Trademark Examining Attorney refused registration under Sections 1, 2, and
45 of the Trademark Act,2 U.S.C. §§ 1051-52 and 1127, on the ground that the
Proposed Mark fails to function as a trademark because the Proposed Mark is
nondistinctive for Applicant’s goods and services and has not acquired
distinctiveness.3 When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied Applicant’s request for
reconsideration,4 and the appeal resumed. The case is fully briefed. An oral hearing
was held on November 12, 2020.
We affirm the refusal to register.
I. Evidence
A. Applicant’s Evidence
In support of its claim of acquired distinctiveness, Applicant submitted:

2 The Office also should have cited Section 3 of the Trademark Act, 15 U.S.C. § 1053, as a
basis for refusal because Section 3 concerns services, which also are covered by the involved
application.
3 The Office initially refused registration under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), and required amendments to the description of the mark and color claim.
September 9, 2018 Office Action, TSDR 2-5. The Section 2(d) refusal was withdrawn, October
1, 2018 Office Action, TSDR 1, and Applicant satisfactorily amended the description of the
mark and color claim. October 24, 2019 Final Office Action, TSDR 1.
4 After Applicant requested reconsideration, the application was reassigned to Examining
Attorney Katherine DuBray who handled the appeal.
Serial No. 87915069
- 5 -
 A declaration from Christopher G. Myers, Director, Supply Chain for
Applicant, and exhibits thereto consisting of:5
 Printouts from Applicant’s website displaying the Proposed Mark,
with the wording “Melissa and Doug” within the oval, in the top left-
hand-corner of each page and on the featured products;
 Excerpts from Applicant’s product pages on Amazon.com displaying
the Proposed Mark, with the wording “Melissa and Doug” within the
oval;
 Printouts from third-party retail websites featuring Applicant’s
goods bearing the Proposed Mark, with the wording “Melissa and
Doug” within the oval, including pages from the websites of Walmart,
Target, and Bed Bath & Beyond;
 Photographs from brick-and-mortar retail store aisles showing the
Proposed Mark, with the wording “Melissa and Doug” within the
oval, on Applicant’s products and point-of-sale-displays; and
 Printouts from Applicant’s Instagram, Twitter and Facebook social
media accounts showing the Proposed Mark, with the wording

5 March 27, 2019 Office Action Response, TSDR 8-36.
Applicant attached to its appeal brief a supplemental declaration from Mr. Myers “to clarify
the record” regarding the number of units Applicant has sold in the United States.
Applicant’s Brief, 8 TTABVUE 8, n.4. Applicant has explained that Mr. Myers’ original
declaration cited the number of units Applicant has sold worldwide.
We have not considered Mr. Myers’ supplemental declaration. The record should be complete
before an appeal is filed. Trademark Rule 2.142(d), 37 C.F.R. § 2.142. If Applicant wished to
“clarify” the record, it should have filed a request for remand.
Serial No. 87915069
- 6 -
“Melissa and Doug” within the oval, displayed as Applicant’s profile
picture.
 31 consumer declarations;6 and
 The declaration of Wendy E. Miller, Applicant’s counsel,7 accompanied by
copies of certificates of registration issued to Applicant for the mark
(“Composite Mark”)8 and the mark
.9
B. The Examining Attorneys’ Evidence
The Examining Attorneys submitted:
 printouts from third-party websites for oval packaging labels;10
 the Merriam-Webster online dictionary definition for the word “logo”;11
 a printout from a third-party website selling “Coca-Cola parody” products;12

6 August 21, 2019 Office Action Response, TSDR 11-41.
7 January 13, 2020 Request for Reconsideration, TSDR 19-21.
8 Registration No. 5736859 for goods in International Class 16 substantially identical to the
goods identified in the involved application. The mark is described as “the words ‘Melissa &
Doug’ in white text on a red oval background with a white border.” January 13, 2020 Request
for Reconsideration, TSDR 22-23.
9 Registration Nos. 3203307 and 5736832 for, among other things, goods and services in
International Classes 16, 28 and 35 that overlap with the goods and services identified in the
involved application. The mark is described as “the words ‘Melissa & Doug’ inside an oval.”
Id. at 24-26.
10 April 24, 2019 Office Action, TSDR 5-14; October 24, 2019 Office Action, TSDR 15-16.
11 October 24, 2019 Office Action, TSDR 7-11.
12 Id. at TSDR 12-14.
Serial No. 87915069
- 7 -
 Printouts from a website showing the following sign:
;13 and
 Third-party registrations for marks incorporating oval designs.14
II. Applicable Law
Where, as here, an applicant seeks to register a background design that is used in
connection with a word mark, that background design may be registered as a
trademark only if it creates a commercial impression separate and apart from the
word mark in conjunction with which it is used. In re Anton/Bauer Inc., 1381 (TTAB
1988); see also In re Benetton Group S.p.A., 48 USPQ2d 1214, 1215 (TTAB 1998). “If
the background design is inherently distinctive, it may be registered without evidence
that it is recognized as a trademark (i.e., without proof of secondary meaning); if it is
not inherently distinctive, such proof is essential.” In re Anton/Bauer Inc., 7 USPQ2d
at 1381 (citing In re E.J. Brach & Sons, 256 F.2d 325, 118 USPQ 308, 310 (CCPA
1958)); see also In re Benetton Grp. S.p.A., 48 USPQ2d at 1215. Generally, “common
geometric shapes such as circles, squares, rectangles, triangles and ovals, when used
as backgrounds for the display of word marks, are not regarded as trademarks for the
goods to which they are applied absent evidence of distinctiveness of the background

13 Id. at 17-43.
14 February 26, 2020 Denial of Request for Reconsideration, TSDR 5-55.
Serial No. 87915069
- 8 -
design alone.” In re Benetton Grp. S.p.A., 48 USPQ2d at 1215-16; see also In re Am.
Academy of Facial Plastic and Reconstructive Surgery, 64 USPQ2d 1748, 1753 (TTAB
2002).
Applicant claims that the Proposed Mark has acquired distinctiveness under
Section 2(f) of the Trademark Act so we need not consider whether the mark is
inherently distinctive. See, e.g., Yamaha Int’l v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks a
registration based on acquired distinctiveness under Section 2(f), the statute accepts
a lack of inherent distinctiveness as an established fact.”). Matter that is not
inherently distinctive may be registered on the Principal Register if it “has become
distinctive of applicant’s goods [or services] in commerce.” 15 U.S.C. § 1052(f).
To establish secondary meaning, or acquired distinctiveness, in a background
design such as the Proposed Mark, Applicant must show that the Proposed Mark has
come to serve as an indication of origin separate and apart from the wording with
which it appears. See In re Raytheon Co., 202 USPQ 317, 319-20 (TTAB 1979).
“Distinctiveness means that the primary significance of the design[] in this field of
products [and services] is as [a] designation[] of source rather than as [a] mere
background[] to the presentation of applicant’s word mark.” Anton/Bauer Inc., 7
USPQ2d at 1383. Applicant bears the burden of establishing a prima facie case of
acquired distinctiveness. Yamaha Int’l, 6 USPQ2d at 1004 (“When registration is
sought under Section 2(f), the board publishes the mark for opposition when it is
satisfied that the applicant has presented a prima facie case of acquired
Serial No. 87915069
- 9 -
distinctiveness.”); see also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d
1262, 1265 (Fed. Cir. 2015) (burden on applicant to show acquired distinctiveness);
In re Virtual Independent Paralegals, LLC, 2019 USPQ2d 111512, *10 (TTAB 2019)
(same). The amount and character of the evidence required to establish acquired
distinctiveness depends on the facts of each case and the degree of non-distinctiveness
of the proposed mark. In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018
(TTAB 2017); see also Yamaha Int’l, 6 USPQ2d at 1008; In re Chevron Intellectual
Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010) (“The kind and amount of
evidence necessary to establish that a mark has acquired distinctiveness in relation
to goods or services depends on the nature of the mark and the circumstances
surrounding the use of the mark in each case.”). Here, Applicant has a heavy burden
to show acquired distinctiveness because the Proposed Mark, consisting of a common
geometric shape in the colors red and white and serving as a background carrier for
the word mark MELISSA & DOUG, is not the type of mark likely to be perceived as
a source identifier. See, e.g., Yamaha Int’l, 6 USPQ2d at 1008; In re Serial Podcast,
LLC, 126 USPQ2d 1061, 1073 (TTAB 2018); In re Lorillard Licensing Co., 99 USPQ2d
1312, 1316-17 (TTAB 2011).
In determining whether Applicant’s mark has acquired distinctiveness, we
consider the following factors: (1) association of the proposed mark with a particular
source by actual purchasers (typically measured by customer surveys); (2) length,
degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of
sales and number of customers; (5) intentional copying; and (6) unsolicited media
Serial No. 87915069
- 10 -
coverage of the product embodying the mark. Converse, Inc. v. Int’l Trade Comm’n,
909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018); see also In re SnoWizard,
Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (acknowledging the six factors the Federal
Circuit has identified “to be considered in assessing whether a mark has acquired
distinctiveness”). We consider all of the Section 2(f) evidence of record as a whole; no
single fact is determinative. Converse, 128 USPQ2d at 1546 (“All six factors are to be
weighed together in determining the existence of secondary meaning.”) In re
SnoWizard, 129 USPQ2d at 1005.
III. Analysis
A. Applicant’s Goods
We first assess whether Applicant has proven acquired distinctiveness in the
Proposed Mark for Applicant’s goods. There is evidence regarding each of the acquired
distinctiveness factors set forth above, except the sixth factor regarding unsolicited
media coverage.
1. Factor One: Association of the Proposed Mark with a Particular Source by
Actual Purchasers

Applicant did not submit survey evidence15 but did submit 31 consumer
declarations obtained on July 19, 2019 from visitors to “the FAO Schwartz toy store
located in Rockefeller Center, in New York City.”16 Applicant’s attorney, Wendy
Miller, averred that she and her assistant “engaged visitors in a brief conversation to

15 The Examining Attorney’s criticisms of the declarations on the basis that they are survey
evidence is misplaced.
16 August 21, 2019 Office Action Response, TSDR 11-41.
Serial No. 87915069
- 11 -
determine whether they [were] purchasers of applicant’s goods, and if so, whether
they purchase[d] applicant’s goods primarily online or at retail stores”; that “qualified
witnesses were handed” either a declaration “for consumers who usually purchase
applicant’s goods online” or a declaration for “consumers who usually purchase
applicant’s goods at retail stores”; that the declarations “contained blanks for the
witness to fill [in] by hand”; and that the declarants were “directed to read and
indicate an understanding of each statement” in the declaration. The declarations
were completed by persons from 17 states17 and the District of Columbia, reflecting
some geographic diversity among declarants. Cf. In re Lorillard Licensing, 99
USPQ2d at 1319 (criticizing consumer declarations because there was no indication
whether the declarants were all from the same city or whether they were
geographically diverse).
Each declarant averred as follows:
 I purchase toys, books, and crafts for children.

 I am familiar with Melissa & Doug and I have purchased their
products.

 I have been asked to react to the Logo shown below:

 I recognize this Logo. I see it on Melissa & Doug’s products and signs.

17 The states are Alabama, California, Colorado, Florida, Georgia, Hawaii, Illinois, Iowa,
Kansas, Maryland, Massachusetts, Mississippi, New Jersey, New York, Ohio, Pennsylvania,
and Tennessee.
Serial No. 87915069
- 12 -
 I usually see the words ‘Melissa & Doug’ inside the logo. However, I
don’t need to see those words to recognize the Logo.

 Whenever I see the Logo on a product, I know that I’m purchasing a
product from Melissa & Doug.

Each declarant also completed blank spaces in the form regarding: (i) the capacity in
which he/she purchases Applicant’s products: 24 declarants identified themselves as
parents, 2 as grandparents, 1 as a parent and teacher, 1 as a parent and great aunt,
1 as an aunt and teacher, 1 as a teacher, and 1 as an aunt; and (ii) the retail outlets
through which he/she “usually purchases” Applicant’s goods, e.g., Target, Amazon,
independent toy stores.
The declarations would have been more probative if the declarants had identified
how often they purchase Applicant’s goods, but we can infer from the information
that the declarants did provide and the fact that Applicant obtained the declarations
from visitors to a toy store that the declarants have a certain level of familiarity with
Applicant and its products. Cf. In re Benetton Grp. S.p.A., 48 USPQ2d at 1217
(“finding it difficult to gauge the probative value” of the statements of 23 declarants
because the record lacked “some basic background information about the individuals
and their experience with applicant”); In re EBSCO Indus. Inc., 41 USPQ2d 1913,
1916 (TTAB 1996) (applicant seeking to register a fishing lure configuration
submitted consumer declarations, but the declarants did not specify why or how they
were familiar with fishing lures). We further agree with Applicant’s assertion that
requiring the declarants to write in information about themselves and the stores
through which they have purchased Applicant’s goods “individualize[d] their
Serial No. 87915069
- 13 -
testimony and engage[d] them to read the statements contained in the declaration”18
making the declarations more reliable. Indeed, a few declarants added comments
emphasizing their agreement with the form statements in the declaration as shown
in the examples below:19

and
The circumstances under which the declarations were obtained and each
declarant’s active participation in completing the form support that the declarants

18 January 13, 2020 Request for Reconsideration, TSDR 19-20, Miller Declaration, ¶ 3.
19 August 21, 2019 Office Action Response, TSDR 17 and 24.
Serial No. 87915069
- 14 -
engaged in some deliberation and understood the statements in the declaration before
signing. Accordingly, while 31 declarants is a small number of relevant consumers,
we find the declarations clear, reliable and probative of consumer perception, albeit
on a limited basis.
2. Factor Two: Length, Degree, and Exclusivity of Applicant’s Use
Applicant submitted the declaration of Christopher G. Myers, Applicant’s
Director, Supply Chain, who avers that: (i) Applicant “is one of the leading
manufacturers and sellers of toys and creative play sets in the United States and
worldwide … well known … for its innovative and high quality products”;20 (ii)
Applicant “sells a wide range of toys and creative play sets,” both online and through
brick-and-mortar retail outlets;21 (iii) “on each product [Applicant] prominently
displays the [Proposed] Mark as the background part of a composite which includes
the term ‘Melissa & Doug’ in white script”;22 (iv) Applicant also displays the Proposed
Mark on point of sale displays;23 (v) Applicant “started selling goods which display
the [Proposed] Mark in the United States on September 30, 2003, and has been using
the [Proposed] Mark on those good continuously and substantially exclusively in U.S.
commerce through the present date;”24 and (vi) “[i]n each year from 2014-2018,

20 March 27, 2019 Office Action Response, TSDR 8, Myers Declaration, ¶ 2.
21 Id. at 8-9, ¶¶ 2, 4 and 5.
22 Id. at 8, ¶ 2.
23 Id. at 9, ¶ 4. The Proposed Mark is not used alone on Applicant’s point-of-sale displays, but
rather appears as part of the Composite Mark just as it is displayed on Applicant’s products.
24 Id. at 10-11, ¶ 9.
Serial No. 87915069
- 15 -
[Applicant] sold more than 100 million units which display the trademark, with
annual sales averaging more than $300 million.”25
For more than sixteen years Applicant has prominently and consistently
displayed the Proposed Mark as part of its Composite Mark
on each of its products as well as at points of
purchase as shown in the examples below.
Printout from Amazon.com:26

25 Id. The cited number of units sold is worldwide, Appeal Brief, 8 TTABVUE 8, n.4, but we
keep in mind that Applicant is a U.S. company based in Wilton, Connecticut.
26 March 27, 2020 Office Action Response, TSDR 19, Myers Declaration, Exhibit B.
Serial No. 87915069
- 16 -
Photograph of an “[e]xemplary brick-and-mortar store aisle”:27

27 Id. at TSDR 29, Exhibit D. We have cropped extraneous matter from the photo.
Serial No. 87915069
- 17 -
Applicant’s consistent, prominent and extensive use of the Composite Mark
for more than sixteen years provides some support
that consumers may recognize Applicant’s red and white oval background design as
a source identifier for Applicant’s goods separate and apart from the MELISSA &
DOUG word mark. See In re Raytheon Co., 202 USPQ at 319-20 (finding oval
background design had acquired distinctiveness as a mark for applicant’s “electron
tubes” separate and apart from the word mark RAYTHEON, superimposed in the
center of the oval design based, in part, on “more than 45 million electron tubes
bearing the composite mark ‘Raytheon’ and design” sold between 1967 and 1976). It
is important to note, however, that Applicant has shown no use of the Proposed Mark
separate and apart from the Composite Mark. In re Hillerich & Bradsby Co., 304 F.2d
287, 97 USPQ 451, 452-53 (CCPA 1953) (fact that oval design “enjoyed long and
extensive usage in connection with other registered word trade marks” did not
support finding of acquired distinctiveness; “on the contrary [such evidence] would
appear to make the applicant’s task more difficult”).
Turning to whether Applicant’s use of the Proposed Mark has been substantially
exclusive, Mr. Myers averred that Applicant has been making substantially exclusive
use of the Proposed Mark in the U.S. for Applicant’s goods since 2003 and that
Applicant has “not encountered any other seller of toys and creative play sets who
Serial No. 87915069
- 18 -
uses a configuration which [is] similar to the Mark.”28 The Examining Attorney cites
17 third-party registrations29 as “weigh[ing] against Applicant’s claim of
‘substantially exclusive use’” and “demonstrat[ing] that third parties claim ownership
of marks containing the applied-for red oval, used as a similar background carrier.”30
But there is no evidence that any of the third-party registered marks are in use. The
registrations themselves are not proof that consumers are familiar with the
registered marks or that the marks have been “so used as to affect the mind of the
purchasing public[.]” In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 342-43 (CCPA
1978) (“A registration does not inherently evidence” whether the public actually has
been exposed to a mark); see also TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097,
1117 (TTAB 2018) (“Third-party registrations are not evidence that the marks shown
therein are in use, or that the public is familiar with them”). Without evidence of
actual use, we cannot ascertain whether the registered marks are inconsequential or
infringing or whether they are being used in a way that contradicts Applicant’s
assertion that it is making substantially exclusive use of the Proposed Mark.31 L.D.

28 March 27, 2019 Office Action Response, TSDR 10-11, Myers Declaration, ¶¶ 8-9.
29 The Examining Attorney also submitted a less than five year old registration that issued
based on a foreign registration (Registration No. 5757721) and one intent-to-use application
(Serial No. 88502500). February 26, 2020 Request for Reconsideration Denial, TSDR 33-38.
This evidence has limited probative value. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
1270 n.8 (TTAB 2009) (registrations issued based on foreign registrations and intent-to-use
applications “are not even necessarily evidence of a serious intent to use the marks shown
therein in the United States”).
30 11 TTABVUE 8.
31 The oval labels, “danger” sign, and Coca-Cola “parodies” the Examining Attorney
submitted are not related to the goods and services for which Applicant seeks registration,
and therefore, have little, if any, probative value. Cf. In re K-T Zoe Furniture, Inc., 16 F.3d
390, 29 USPQ2d 1787, 1789 (Fed. Cir. 1994) (evidence of acquired distinctiveness must
Serial No. 87915069
- 19 -
Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999)
(inconsequential or infringing third-party use “does not necessarily invalidate the
applicant’s claim” of substantially exclusive use).
Moreover, not all of the cited marks are pertinent. Only marks that are identical
or “substantially similar” to the mark sought to be registered are relevant. Converse,
128 USPQ2d at 1547 (“Although we agree with the ITC that evidence of the use of
similar but not identical trade dress may inform the secondary-meaning analysis, we
think such uses must be substantially similar to the asserted mark”). The following
three marks are substantially similar to Applicant’s mark because they consist of red
and white ovals with word marks confined to inside the ovals and they cover some of
the same goods as the involved application:32
33

The following marks also are worth noting:34

“relate to the specific [goods or] services set forth in the application, and the specific mark for
which registration is sought”).
32 February 26, 2020 Denial of Request for Reconsideration, TSDR 27-29 and 39-43.
During the hearing, Applicant acknowledged that the mark for which it seeks registration
is not broad enough to encompass lettering that would extend outside the interior red oval
portion of the Proposed Mark.
33 The application for this mark matured to registration after the commencement of this
appeal.
34 Id. at 30-32 and 50-52.
Serial No. 87915069
- 20 -
35
The remaining registered marks contain additional matter or colors or cover
distinguishable goods such that we do not find them “substantially similar” to the
Proposed Mark.
The cited third-party marks are relevant to the conceptual strength of the
Proposed Mark and reinforce our conclusion that the Proposed Mark is not the type
of mark likely to be perceived as a source indicator, and therefore, Applicant’s burden
to establish acquired distinctiveness is quite high. Cf. In re Pacer Tech., 333 F.3d
1348, 67 USPQ2d 1629, 1630-32 (Fed. Cir. 2003) (finding 11 design patents, some of
which were owned by applicant’s competitor, prima facie evidence that applicant’s
adhesive container cap design was not inherently distinctive; Patent and Trademark
Office did not have “to show that the patented designs were actually used in the
relevant marketplace as part of its prima facie case”). But the registered marks do
not demonstrate that the Proposed Mark is not in substantially exclusive use.
In sum, Applicant’s length, degree, and substantial exclusivity of use36 provides
some support for Applicant’s claim of acquired distinctiveness, but the fact that the

35 The drawing of the mark is lined for the color red. The registration issued based on a foreign
registration, but it has been renewed. February 26, 2020 Denial of Request for
Reconsideration, TSDR 5-7.
36 The record includes some allegedly infringing third-party uses discussed below, but we do
not have enough information about such uses to find that they invalidate Applicant’s claim
of substantially exclusive use.
Serial No. 87915069
- 21 -
Proposed Mark is always displayed as part of the Composite Mark
and never as a standalone mark, lessens the probative
value of this evidence. In re Hillerich & Bradsby Co., 97 USPQ at 452-53.
3. Factor 3: Amount and Manner of Advertising
Applicant goods “are promoted and sold by major national retailers” such as
Walmart, Target, Bed Bath & Beyond, and Amazon,37 as well as independent toy
stores. As shown in the examples on pages 15 and 16 above, the Composite Mark
appears prominently on Applicant’s goods and
point-of-sale displays. Indeed, in the brick-and-mortar example, consumers are
bombarded with images of the Composite Mark as it is prominently displayed on all
of Applicant’s goods and point-of-sale materials. As discussed, such extensive and
prominent use may suggest that consumers recognize the Proposed Mark as a source
indicator separate and apart from the MELISSA & DOUG word mark. Cf. In re
Lorillard Licensing, 99 USPQ2d at 1317-18 (sample advertisements did not show
“consistent use of orange text on a green background that would show that this color
combination is functioning as a trademark”).
We are not persuaded, however, by Applicant’s argument that consumers must
rely on the Proposed Mark as a source identifier because the MELISSA & DOUG

37 March 27, 2019 Office Action Response, TSDR 9, Myers Declaration, ¶¶ 4-5.
Serial No. 87915069
- 22 -
word mark is not always visible in the Composite Mark . In
the brick-and-mortar example of record, the point-of-sale signage is so large that the
MELISSA & DOUG word mark would be easily discernable even from a distance.
Moreover, while the record includes a few examples from the Internet where the
MELISSA & DOUG word mark is not visible in the Composite Mark, the MELISSA
& DOUG word mark is otherwise prominently displayed as shown in the example
from Target.com below:38

38 Id. at TSDR 31, Myers Declaration, Exhibit E-1.
Serial No. 87915069
- 23 -
Applicant further claims that it has engaged in “robust social media promotion.”39
Applicant uses the Composite Mark as its profile picture on
Instagram where Applicant has 146,000 followers, on Twitter where it has 35,000
followers, and on Facebook where it has 320,000 followers.40 Applicant, however, has
failed to supply important information such as when Applicant started promoting on
social media with the Proposed Mark, how many posts it has made, and how
frequently it posts content. In addition, the number of Applicant’s social media
followers is disproportionately small compared to Applicant’s sales volume. That is,
when we consider Applicant’s high volume of sales, Applicant’s number of social
media followers is not that impressive. In addition, the social media promotion always
includes the wording “Melissa & Doug” as part of the logo presented.

39 Appeal Brief, 8 TTABVUE 8.
40 March 27, 2019 Office Action Response, TSDR 10, Myers Declaration, ¶ 6 (“Each day,
thousands of people see the icon when visiting [Applicant’s] social media pages.”); see also id.
at TSDR 34-36, Exhibit F.
We have not considered the modified social media statistics (8 TTABVUE 9), including the
number of posts to Instagram and Facebook “likes,” that Applicant included in its appeal
brief because this evidence is not of record.
Serial No. 87915069
- 24 -
We also are not persuaded by Applicant’s assertion that it “has specifically alerted
consumers to the logo Mark as an indicator of source, separately from the Composite,
in the following point-of-sale statement”:41
With their recognizable red-oval logo, Melissa and Doug put their names
on every product they make – a symbol of their commitment to quality,
attention to detail, and dedication to improving playtime for families
around the world.

The statement begins by pointing out the red oval design subject to the involved
application, but makes clear that its “red-oval logo” includes “Melissa and Doug
put[ting] their names on every product.” Thus, the red oval is not the focus of the
statement. Rather, the statement highlights the Composite Mark and the importance
of the names Melissa & Doug as “a symbol” of Applicant’s high quality products. See
In re Hillerich & Bradsby Co., 97 USPQ at 453 (applicant’s “principal emphasis” in
advertising was not in the standalone oval design sought to be registered, but in “the
oval in connection with the ‘Louisville Slugger’ bat, i.e., the ‘Louisville Slugger oval’”);
see also Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 95 USPQ2d 1333,
1349 (5th Cir. 2010) (“advertising attempted to attract customers using marks other
than the Star Symbol” sought to be protected). In addition, Applicant has not
indicated when it started using this statement, and consumers may not even notice
it because, as shown in the record, the statement appears as part of a larger text.
Below is the most conspicuous example:42

41 Appeal Brief, 8 TTABVUE 8; see also March 27, 2019 Office Action Response, TSDR 9 and
16-28, Myers Declaration, ¶ 3 and Exhibits B and C.
42 March 27, 2019 Office Action Response, TSDR 28; see also id. at 16-22, 25-26.
Serial No. 87915069
- 25 -

Serial No. 87915069
- 26 -
Finally, Applicant did not submit any advertising figures, instead explaining that
it “does not advertise its goods through traditional television or print media.”43 Even
though Applicant does not advertise through traditional means, we expect that it
would have some expenditures related to marketing on social media and in the “major
national retailers” through which it sells its goods. Advertising expenditures,
particularly related to any “look-for” advertising, would be important where, as here,
Applicant seeks to register a mark that is so inherently non-distinctive. In re Benetton
Grp. S.p.A., 48 USPQ2d at 1216 (noting Applicant’s failure to provide advertising
expenses in support of its claim of acquired distinctiveness in a green rectangle
background design for clothing).
In sum, Applicant has shown extensive and prominent use of the Proposed Mark,
but always as part of its Composite Mark
conspicuously featuring “Melissa & Doug”, rather than as a standalone mark, and
Applicant’s advertising and marketing evidence is otherwise lacking.
4. Amount of Sales and Number of Customers
Applicant’s annual sales worldwide are substantial. Given that Applicant is a U.S.
company based in Wilton, Connecticut and the record reflects that Applicant sells its
products through national retail outlets and U.S. websites, we infer that Applicant’s
U.S. sales are also impressive. But because the Proposed Mark is always displayed

43 Appeal Brief, 8 TTABVUE 9.
Serial No. 87915069
- 27 -
on Applicant’s products as part of the Composite Mark, the probative value of
Applicant’s sales figures is limited to some degree. In re Hillerich & Bradsby Co., 97
USPQ at 452, 454 (finding oval design for baseball and softballs had not acquired
distinctiveness despite the commercial success of applicant’s products where the oval
design was consistently used in connection with word marks).
5. Intentional Copying
Applicant asserts that foreign third-parties are intentionally copying the Proposed
Mark to trade off of its goodwill. Applicant’s attorney averred:
Overseas factories are advertising and importing toys which bear a
confusingly similar mark, and selling those toys directly to consumers
through unregulated marketplaces such as Amazon.com. The imported
goods display applicant’s background Mark with the words ‘Colouring &
Drawing’ in place of the words ‘Melissa & Doug’ in applicant’s composite
mark, using the same white script.44

The table below shows Applicant’s products and the alleged infringing uses:45

44 January 13, 2020 Request for Reconsideration, TSDR at 20-21, Miller Declaration, ¶ 6.
45 Id. at TSDR 21.
Serial No. 87915069
- 28 -
Applicant’s Products Alleged Infringing Products

Applicant explains that it “is seeking to register the Mark for reasons including
that similar goods are being imported into the United States and sold on open
Serial No. 87915069
- 29 -
marketplaces such as Amazon.com. Many of the imports are sold to consumers
directly from an overseas factory, or through aliased foreign sellers.”46 While
Applicant’s interest in enforcement efforts is understandable, we do not find the
alleged third-party copying supports that the Proposed Mark has acquired
distinctiveness. As shown in the examples in the top row,47 the foreign product
replicates additional elements of Applicant’s overall trade dress such as the yellow
color scheme, similar font styles, the spiral notebook design, and the train,48 tractor,
car, road, construction site, and grass designs. Accordingly, we cannot conclude that
the alleged copier believed consumers would perceive the Proposed Mark as a source
identifier on its own. In re Fantasia Distrib., Inc., 120 USPQ2d 1137, 1145-46 (TTAB
2016) (“Because the copying in this instance is not limited to the diamond pattern
alone, it does not show that the copier perceived the diamond pattern by itself as a
source indicator or believed that consumers would rely on the diamond pattern as an
indicator of the source of the goods.”). Indeed, the fact that the alleged infringing
product has a similar overall look and feel to Applicant’s product suggests the
opposite. Meanwhile, the products in the second row appear to be specifically

46 Appeal Brief, 8 TTAVUE 6.
47 There appear to be differences in the product examples in the bottom row that account for
the differences in the products’ overall trade dress. The foreign product is a color-by-water
book with a farm animal theme while Applicant’s product is a color-by-water alphabet
flashcard book featuring animals generally.
48 The train designs are nearly identical.
Serial No. 87915069
- 30 -
different, which would explain why the overall look and feel is not similar as in the
examples in the first row.49
For these reasons, we do not find the alleged infringing uses persuasive on the
issue of acquired distinctiveness.
6. Considering the Factors as a Whole
Considering all of the Section 2(f) evidence as a whole, we find that Applicant has
failed to meet its burden of establishing that the Proposed Mark has acquired
distinctiveness as a source identifier for Applicant’s goods. The consumer
declarations are probative, but 31 declarants is a small number, and not necessarily
representative of the relevant consuming public. Further, while the record supports
that Applicant has made long, extensive and substantially exclusive use of the
Composite Mark and also has realized impressive
sales, the probative value of this evidence is limited by the fact that Applicant always
uses the Proposed Mark as part of the Composite Mark. See In re Hillerich & Bradsby
Co., 97 USPQ at 453 (advertising focused on “the oval in connection with the
‘Louisville Slugger’ bat, i.e., the ‘Louisville Slugger oval’”); see also Amazing Spaces,
95 USPQ2d at 1349 (no secondary meaning where star symbol “was almost invariably
used not as a stand-alone mark” but rather as an “integral part of several marks”).
Indeed, the “look for” advertising Applicant points to calls consumer attention to the

49 Both products are water pens and paper, but Applicant’s product consists of animal and
letter flash cards while the foreign products is a farm-animals themed board.
Serial No. 87915069
- 31 -
MELISSA & DOUG portion of the Composite Mark as opposed to the background
design comprising the Proposed Mark. Where, as here, the Proposed Mark is so
inherently non-distinctive, Applicant’s failure to use or promote the Proposed Mark
separate and apart from the Composite Mark is significant. The record also lacks
important information regarding Applicant’s promotional activities, and the third-
party “infringing” uses are not particularly probative because the allegedly infringing
products contain more similarities than just the Proposed Mark. On this record, we
cannot find that consumers would view the Proposed Mark as an indication of origin
separate and apart from the wording with which it appears.
In sum, given the Proposed Mark is comprised of a common oval shape and the
colors red and white, and Applicant uses the Proposed Mark exclusively as a carrier
for the word mark MELISSA & DOUG, we find that more is needed to establish
acquired distinctiveness. Cf. In re Haggar Co., 217 USPQ 81, 84 (TTAB 1982) (finding
black swatch design “something more than a common geometric shape” that had
acquired distinctiveness).
B. Online Retail Stores Services
The record includes very little evidence regarding Applicant’s use of the Proposed
Mark for online retail store services. Applicant submitted printouts from its online
retail store showing the Proposed Mark prominently displayed as part of Applicant’s
Composite Mark in the upper left-hand corner of each page and on the featured
Serial No. 87915069
- 32 -
products.50 However, there is no evidence regarding how long Applicant has used the
Proposed Mark for online retail store services, the extent of promotion of the Proposed
Mark in connection with online retail store services, or associated advertising
expenses. Nor has Applicant broken down sales made through its online store. The
declarations Applicant submitted address consumer recognition of the Proposed
Mark for Applicant’s goods. Only one consumer indicated that she purchased
Applicant’s goods through Applicant’s online store.51
Based on this record, we simply cannot find that the Proposed Mark has acquired
distinctiveness as a source identifier for Applicant’s online retail store services.
IV. Conclusion
Applicant has not established a prima facie case that the Proposed Mark has
acquired distinctiveness for Applicant’s goods or services.
Decision: The refusal to register the Proposed Mark under Sections 1, 2, 3 and
45 of the Trademark Act, U.S.C. §§ 1051-53 and 1127, is affirmed.

50 March 27, 2019 Office Action Response, TSDR 8 and 12-15, Myers Declaration, ¶ 2 and
Exhibit A.
51 August 21, 2019 Office Action Response, TSDR 14.