RIC Investments, LLC

Trademark Trial and Appeal Board

Oct 6, 2008

No. 78651809 (T.T.A.B. Oct. 6, 2008)

Hearing: Mailed:
July 23, 2008 October 6, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re RIC Investments, LLC
________

Serial No. 78651809
_______

Frederick H. Colen of Reed Smith LLP for RIC Investments,
LLC.
Theodore McBride, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Walters and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

RIC Investments, LLC has appealed from the final
refusal of the Trademark Examining Attorney to register
SOOTHIE in standard character form for “baby bottles, baby
bottle nipples and teething rings” in Class 10 and “baby
bottle brushes” in Class 21.1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 78651809, filed June 16, 2005, based on
Section 1(b) of the Trademark Act (intent-to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78651809
2
§1052(d), on the ground that applicant’s mark, if used in
connection with its identified goods, so resembles the mark
SOOTHIES, registered for “glycerin pad to ease nipple pain
during breast feeding,”2 that it is likely to cause
confusion or mistake or to deceive.
The appeal has been fully briefed, and an oral hearing
was held before the Board.
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/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Here, the marks are virtually identical. SOOTHIE and
SOOTHIES differ only in that the registered mark is in

2 Registration No. 2561103, issued April 16, 2002; Section 8
affidavit accepted; Section 15 affidavit received.
Ser No. 78651809
3
plural form, with an additional letter “s.” This single
letter is not significant in distinguishing the marks. On
the contrary, the marks are virtually identical in
appearance and pronunciation. Applicant itself
acknowledges that “its mark and registrant’s mark are
similar in sound and appearance.” Response filed
February 2, 2007. As for connotation, although the
registered mark SOOTHIES would be understood as referencing
the physical effect of the glycerin pads on a nursing
mother’s nipples, while SOOTHIE for applicant’s baby
bottles and other goods would be viewed as the emotional
effect on a baby of drinking milk from a bottle, both marks
convey the same connotation that the goods are soothing.
This case thus differs from In re British Bulldog, Ltd.,
224 USPQ 854, 856 (TTAB 1984), upon which applicant relies,
because in the latter case the mark PLAYERS was found to
have different connotations because of the respective goods
on which the mark was used. (“PLAYERS” for shoes implies a
fit, style, color, and durability adapted to outdoor
activities. “PLAYERS” for men's underwear implies
something else, primarily indoors in nature.) Because the
connotation, appearance and pronunciation of the marks are
virtually the same, they also convey the same commercial
impression.
Ser No. 78651809
4
This du Pont factor of the similarity of the marks
strongly favors a finding of likelihood of confusion.
We turn next to the du Pont factor of the similarity
or dissimilarity of the goods. As has long been
recognized, it is not necessary that the goods or services
of an applicant and registrant be similar or competitive,
or even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient that the respective goods or services are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Further, “the greater the degree of similarity in the
marks, the lesser the degree of similarity that is required
of the products or services on which they are being used in
order to support a holding of likelihood of confusion.” In
re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983).
Here, both applicant’s and the registrant’s goods are
items that can be used by nursing mothers. Applicant has
argued that the customers for its goods and those of the
registrant are different, asserting that its goods would
Ser No. 78651809
5
typically not be used by non-nursing mothers. However,
applicant’s argument ignores the fact that nursing mothers
may use bottles when they express their breast milk, or may
use bottles for formula to supplement their breast milk.
See, for example, the webpages from La Leche League
International, www.lalacheleague.org, made of record with
the second Office action, discussing supplementing breast
milk with formula, and expressing breast milk. Further, an
advertisement for the Avent breast pump, at the website
www.aventamerica.com, also made of record with the second
Office action, states that “you can pump, feed and store
using any bottle or cup.” As a result, applicant’s goods
and the registrant’s goods are complementary items because
nursing mothers who use glycerin pads to ease nipple pain
during breast feeding may also use baby bottles, baby
bottle nipples and baby bottle brushes. Moreover, these
consumers will regard the goods as being used in the same
process, namely, feeding their babies.
The Examining Attorney has also submitted evidence
showing that breast pads and baby bottles are sold by the
same companies under the same marks. For example, the
Avent website features both baby bottles and breast pads
that “ease[] minor discomforts you might encounter while
breastfeeding.” In addition, the Examining Attorney has
Ser No. 78651809
6
submitted three third-party registrations that show
companies have registered a single mark for both goods of
the type identified in applicant’s application and those of
the registrant.3 Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). See Registration No.
2277870 for EVENFLO for, inter alia, disposable baby
bottles, nipples for baby bottles, teething rings, manual
breast pumps and breast pads for nursing; Registration No.
3086003 for TIGEX for, inter alia, breast pads, baby
bottles, baby bottle nipples of latex and silicone, and
teething rings; Registration No. 1834153 for PUR for, inter
alia, teething rings, musical baby bottles, breast shields
and breast pads to prevent leakage or soreness. Although
three third-party registrations is a rather insignificant
number, and might not be sufficient in and of themselves to
demonstrate the relatedness of the goods, the registrations

3 The Examining Attorney submitted a large number of third-party
registrations and applications that list both breast pads and
baby bottles, etc. However, most of these submissions have no
probative value because the registrations were not based on use
in commerce, while third-party applications are probative only of
the fact that they were filed.

Ser No. 78651809
7
and the other evidence showing third-party use, as well as
the complementary nature of the goods, are sufficient to
demonstrate the relatedness of the goods.4
The Examining Attorney also submitted evidence that
nursing mothers will encounter baby bottles, nipples and
bottle brushes in the same channels of trade in which they
may purchase breastfeeding supplies. The website for
BabyCatalog.com, http://infant-feeding.babycatalog.com,
states that it carries baby bottles, nipples, bottle
brushes, breast pumps and breastfeeding accessories. The
website for The Baby Bungalow, www.babybungalow.com,
features on the same page breast pumps, reusable bottles,
and bottle brushes. The Babies “R” Us website,
www.toysrus.com, features, under the category
“breastfeeding accessories,” breast pads and a Breastflow
“starter set” containing baby bottles, nipples and a bottle
brush. Accordingly, we conclude that the goods identified
in applicant’s application and the cited registration are

4 The present situation differs from In re Mars, Incorporated,
741 F.2d 395, 222 USPQ 938 (Fed. Cir. 1984), on which applicant
relies, in which the Court found no likelihood of confusion
between CANYON for candy bars and CANYON for fresh citrus fruit,
despite the Court’s finding that the marks were “legally
identical word marks.” The Court reversed the Board because
there was no evidence in the record of the relatedness of the
goods, and therefore the Board’s conclusion of relatedness was
merely “a matter of opinion.” Here, on the other hand, the
Examining Attorney has submitted substantial evidence
demonstrating that the goods are related.
Ser No. 78651809
8
sold in the same channels of trade, and that this du Pont
factor favors a finding of likelihood of confusion.
Applicant argues that the consumers of both
applicant’s goods and the registrant’s goods would be
careful, as the products they are purchasing will be used
in connection with feeding their children, and that they
are sophisticated purchasers. We are not persuaded on
either of these points. Generally purchasers are
considered to be sophisticated because they have
specialized knowledge or training. However, anyone who has
or raises a child is a mother, and we think it more
appropriate to consider mothers part of the general public.
We agree that mothers are likely to be careful about many
of the products that they use for their babies. Certainly
they would be careful about the food they give them.
However, products such as baby bottles and bottle brushes,
although used in the feeding process, are not critical
items for which one would expect the consumer to exercise
great care in the purchasing process. The same is true for
glycerin pads for easing nipple pain. Neither the pads nor
the product in the pads will in be ingested by the babies.
Moreover, even if we were to accept that the purchasers of
applicant’s and the registrant’s goods are careful, the
marks themselves are so similar that even careful
Ser No. 78651809
9
purchasers are not likely to differentiate them on the
basis of the pluralization of the registrant’s mark. Even
if consumers were to note the difference, they are likely
to assume that the marks are variations of each other, with
the plural being a logical form when used in connection
with a package that contains several glycerin pads.
Accordingly, we find that this du Pont factor is
neutral.
One of applicant’s major arguments is that it already
owns registrations for SOOTHIE and WEE SOOTHIE for
pacifiers; that it has used these marks coextensively with
the registrant’s mark for more than seven years without any
evidence of confusion; and that the U.S. Patent and
Trademark Office did not view these marks as being
confusingly similar when it allowed applicant’s prior
applications despite the earlier filing date of
registrant’s application. Applicant argues that it should
therefore be allowed to extend its mark to baby bottles,
nipples, bottle brushes and teething rings because this is
a natural extension from applicant’s previous goods,
pacifiers.
We are not persuaded by these arguments. Baby
bottles, nipples, bottle brushes and teething rings are not
pacifiers. Therefore, we cannot extrapolate from
Ser No. 78651809
10
applicant’s assertion that there has been no evidence of
actual confusion between the use of applicant’s mark for
pacifiers and the registrant’s mark for glycerin pads that
there is no likelihood of confusion between the goods for
which applicant currently seeks registration and
registrant’s mark.5 Compare, In re 1st USA Realty
Professionals Inc., 84 USPQ2d 1581 (TTAB 2007), in which
the applicant made an analogous argument, although in that
case the applicant relied on its use of a variation of its
currently applied-for mark, asserting that its prior mark
and the registrant’s mark had co-existed for over eleven
years without any known instances of confusion. As the
Board said in rejecting that argument, 84 USPQ2d at 1588,
“we consider the present mark and the prior mark
sufficiently different that we can draw no conclusions as
to lack of instances of actual confusion with the present
mark based on applicant's experiences with its prior mark.”
For the same reason, the fact that an Examining
Attorney found no likelihood of confusion between
applicant’s SOOTHIE and WEE SOOTHIE marks for pacifiers and
the registrant’s mark has no effect on whether applicant’s

5 We also point out that lack of evidence of actual confusion,
even if the mark were used with the goods in the current
application, is entitled to little weight in an ex parte
proceeding. See In re Majestic Distilling Co., supra, 65 USPQ2d
at 1205.
Ser No. 78651809
11
mark for its currently applied-for goods is likely to cause
confusion with the registered mark.
As for applicant’s argument that it is entitled to
register its mark for goods that are related to those in
its earlier registration, applicant has submitted no case
law in support of this argument, and we are aware of none
that would allow it. On the contrary, the statute clearly
prohibits registration of a mark that is likely to cause
confusion with a previously registered mark. If
applicant’s mark for its currently-identified goods is
likely to cause confusion with registrant’s mark, it cannot
be registered, despite the fact that applicant owns a
previous registration for the same mark but for goods that
are not the same.
Decision: The refusal of registration is affirmed.