Plasticos y Tecnologia, S.A. de C.V.

Trademark Trial and Appeal Board

Sep 16, 2008

No. 78897006 (T.T.A.B. Sep. 16, 2008)

Mailed: September 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Plasticos y Tecnologia, S.A. de C.V.
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Serial No. 78897006
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Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
for Plasticos y Tecnologia, S.A. de C.V.

Caroline Wood, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
____________

Before Walters, Kuhlke and Ritchie de Larena Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Plasticos y Tecnologia, S.A. de C.V. has filed an
application to register the standard character mark BUBBLE
FUN BRUSH on the Principal Register for “tooth brushes,” in
International Class 21.1 The application includes a
disclaimer of BRUSH apart from the mark as a whole.

1 Serial No. 78897006, filed May 31, 2006, based on an allegation of a
bona fide intention to use the mark in commerce, asserting a claim of
priority under Section 44(d), and based on a Mexican registration under
Section 44(e).

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78897006

2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark FUNBRUSH, previously registered for
“toothbrushes,”2 that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in

2 Registration No. 2462540 issued June 19, 2001, to Marc Warsowe.
[Sections 8 and 15 affidavits accepted and acknowledged, respectively.]

Serial No. 78897006

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the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Turning to consider the goods or services involved in
this case, we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). In this case, the goods as identified are
identical, i.e., “toothbrushes.” Thus, this factor weighs
against applicant.
Additionally, inasmuch as the identifications of goods
in both the involved application and the cited registrations
are not limited to any specific channels of trade, we
presume that the goods would be offered in all ordinary
trade channels for these goods and to all normal classes of
purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
Serial No. 78897006

4
1992). In other words, in view of the identity in the
identified goods, we presume that the trade channels and
classes of purchasers are also identical. These factors
also weigh against applicant.
As we turn to consider the marks, we note the well
established principle that “when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
The question before us is whether applicant’s mark and
the registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, 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 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). Furthermore, although the marks at
issue must be considered in their entireties, it is well
Serial No. 78897006

5
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant contends that the marks are not similar
because the term BRUSH is descriptive of the goods and FUN
is highly suggestive of the nature of the goods and, thus,
the registered mark is “not particularly distinctive,” while
its mark is distinctive (brief, p. 2).3 Applicant also
argues that its mark has a different commercial impression
because the term BUBBLE is dominant and applicant has
disclaimed the term BRUSH.
The registered mark consists of the compound word
FUNBRUSH. Applicant’s mark consists of the registered mark
in its entirety preceded by the word BUBBLE. The fact that
applicant has not merged the individual terms FUN and BRUSH
to form a compound word is immaterial, as is applicant’s
disclaimer of the term BRUSH. This portion of applicant’s
mark is essentially identical to the registered mark. The
word BUBBLE modifies the phrase FUN BRUSH and suggests the
type of FUN BRUSH, i.e., a fun brush that produces bubbles.

3 While the registered mark may be suggestive, it is entitled to
protection. Applicant cannot attack the validity of the registered mark
in the absence of a petition to cancel that registration. In re Calgon
Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971); In re Peebles, Inc.,
23 USPQ2d 1795 (TTAB 1992).

Serial No. 78897006

6
As such, the overall commercial impressions of the marks,
considered in their entireties, are more similar than
dissimilar. When the marks are used in connection with
toothbrushes, consumers are likely to believe that
applicant’s BUBBLE FUN BRUSH is a specific type of
registrant’s FUN BRUSH. Therefore, we find that the
similarities in the marks also weigh against applicant.
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the similarity
in the commercial impressions of applicant’s mark, BUBBLE
FUN BRUSH, and registrant’s mark, FUNBRUSH, their
contemporaneous use on the identical goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.