Stayhealthy, Inc.

Trademark Trial and Appeal Board

Sep 30, 2020

88242849 (T.T.A.B. Sep. 30, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Stayhealthy, Inc.
_____

Serial No. 88242849
_____

Timothy J. Zarley,
for Stayhealthy, Inc.
Ahsen Khan, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Taylor, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Stayhealthy (“Applicant”) seeks registration on the Principal Register of the mark
MAGIC COLOR (in standard characters) for “Downloadable computer software for
digital coloring books including a wellness education element embedded in the
coloring activity” in International Class 9.1 At the request of the Examining Attorney,
Applicant disclaimed the word COLOR.

1 Application Serial No. 88242849 was filed on December 27, 2018, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 88242849
- 2 -
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground that it is likely to cause confusion, mistake, or deception under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with the mark on the Principal
Register in Registration No. 4841982, MAGICOLOR, for “Children’s coloring sets
consisting essentially of paper, coloring books and markers; arts and crafts paper kits;
children’s activity books; stickers; sticker books; art paper; coloring books; markers;
writing implements containing invisible ink” in International Class 16.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm.
I. Applicable Law
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We must consider each DuPont factor for which there
is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities

2 Issued October 27, 2015.
Serial No. 88242849
- 3 -
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other factors. See In re
Guild Mortg., 129 USPQ2d at 1162-63 (Board considers each DuPont factor for which
there is evidence and argument).
A. The Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s mark and the mark in the cited registration in their entireties, taking
into account their appearance, sound, connotation and commercial impression.
DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d at 1746. Accord
Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion.”) (citation omitted)). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). The emphasis of our analysis must be on the recollection of the
Serial No. 88242849
- 4 -
average purchaser who normally retains a general, rather than specific, impression
of trademarks.
Applicant’s mark is MAGIC COLOR in standard characters. Registrant’s mark is
MAGICOLOR, also in standard characters. The marks are virtually identical, the
only differences between them being that Applicant’s mark includes a space between
the words MAGIC and COLOR, whereas Registrant’s mark is a telescoped term. The
removal of the space between the terms and the sharing of the letter “C” in the cited
mark is essentially irrelevant because the marks still convey the same commercial
impression, of magical color. See, e.g., In re Omaha Nat’l, 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1989) (FIRSTIER found to be the telescoped equivalent of “first tier”).
Applicant’s adding a space and a second letter “C” barely change the appearance
or sound of the marks, and thus they are highly similar, indeed almost identical, in
appearance, sound, connotation and commercial impression. Notably, Applicant’s
brief is silent on this issue. This DuPont factor therefore not only weighs heavily in
favor of finding a likelihood of confusion, but also reduces the degree of similarity
between the goods required to support a finding of likelihood of confusion. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entm’t
Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001).
B. Relatedness of the Goods
We now turn to a comparison of the goods under the second DuPont factor. In
making our determination regarding the relatedness of the goods, we must look to
Serial No. 88242849
- 5 -
the goods as identified in Applicant’s application and the cited registration. See In re
Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); In re
Dixie Rest. Inc., 41 USPQ2d at 1534; see also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). “This factor considers whether
‘the consuming public may perceive [the respective goods of the parties] as related
enough to cause confusion about the source or origin of the goods and services.’” In re
St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014).
Evidence of relatedness may include news articles and/or evidence from computer
databases showing that the relevant goods are used together or used by the same
purchasers; advertisements showing that the relevant goods are advertised together
or sold by the same manufacturer or dealer; and/or copies of prior use-based
registrations of the same mark for both applicant’s goods and the goods listed in the
cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the products
at the same time and in the same stores). The issue is not whether purchasers would
confuse the goods, but rather whether there is a likelihood of confusion as to the
source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012);
In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
Applicant’s goods are identified as “downloadable computer software for digital
coloring books including a wellness education element embedded in the coloring
activity” and Registrant’s goods are identified as “Children’s coloring sets consisting
Serial No. 88242849
- 6 -
essentially of paper, coloring books and markers; arts and crafts paper kits; children’s
activity books; stickers; sticker books; art paper; coloring books; markers; writing
implements containing invisible ink.” We initially observe that, as identified, the
broadly worded “coloring books” in the cited registration and Applicant’s
“downloadable computer software for digital coloring books including a wellness
education element embedded in the coloring activity,” are related to the extent that
they may be used by the same purchaser for the same coloring activity. That they are
in different formats, i.e., print vs. digital, does not alter our finding. Moreover,
because Registrant’s identified “coloring books” are not limited by subject matter,
they would include all types of coloring books, including those featuring wellness
education.
We find unavailing Applicant’s arguments that, as identified, its goods are
“software which permits an individual to color in a digital format, and … not a digital
coloring book.” As stated, and acknowledged by Applicant, we are constrained to
consider the goods as they are identified in the application. See e.g., Detroit Athletic
Co., 128 USPQ2d 1047 at 1052. Here, the identification reads “downloadable
computer software for digital coloring books, and not “software that permits an
individual to color in digital format.” An applicant may not restrict the scope of its
goods or the scope of the goods covered in the cited registration by extrinsic argument
or evidence. See, e.g., In re Midwest Gaming & Entertainment LLC, 106 USPQ2d
1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB
2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986).
Serial No. 88242849
- 7 -
Moreover, “where the goods in an application or registration are broadly
described, they are deemed to encompass ‘all the goods of the nature and type
described therein . . . .’” See e.g., In re Solid State Design Inc., 125 USPQ2d 1409,
1412-15 (TTAB 2018) and Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007,
1025 (TTAB 2015). Applicant inappropriately seeks to limit the findings in Solid
State and Sw. Mgmt. v. Ocinomled to the specific category of goods at issue in those
cases. These cases, however, stand for the general proposition that “where the goods
in an application or registration are broadly described, they are deemed to encompass
‘all the goods of the nature and type described therein . . . .’” Solid State, 125 USPQ
at 1413 (citing In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); Sw.
Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d at 1025 (same)).
The Examining Attorney also made of record third-party website excerpts showing
use of one or more of the goods identified in Applicant’s application and use of goods
similar to those in the cited registration emanating from the same source, under the
same mark. For example:
 Crayola offers downloadable coloring books and as well as arts and crafts
kits under the Crayola mark on the same e-commerce website;3
 Doodle Art Alley offers both digital and print coloring books under the
Doodle Art Alley on the same e-commerce website;4

3 February 25, 2019 Office Action; TSDR 7-8 and 18-23 (https://www.crayola.com/digital and
https://shop.crayola.com/featured/craft-material-kits).
4 Id. at TSDR 9-10 (http://www.doodle-art-alley.com/doodle-art-alley-books.html).
Serial No. 88242849
- 8 -
 Art is Fun offers digital and print coloring books are offered under the
Design Originals brand on the same e-commerce website;5 and
 Disney offers both digital and print coloring books.6
The Examining Attorney also made of record webpages from Amazon.com and
Barnesandnobles.com showing that the same coloring books may be offered in both
digital and print format, e.g., “The Anatomy Coloring Book,”7 “Foodies Fancy Food”
coloring book8 and the “Activity Weather Books for Kids Ages 4-8,”9 and are available
for purchase on the Amazon website as both an e-Book through Kindle and in
Paperback format; and Barnes & Noble offers “Hillary: The Coloring Book” in eBook
(digital) format.10
As further support that the goods are related, the Examining Attorney made of
record eight use-based third party registrations showing parties offering both
coloring books and electronic books or software used to read books emanating from
the same source, under the same mark.11 The registrations are excerpted below:

5 Id. at TSDR 11-17 (https://www.art-is-fun.com/coloring-books).
6 April 9, 2020 Denial of Request for Reconsideration; TSDR 31-35 and 37
(http://omgfacts.com/disney-just-released-a-digital-coloring-book-for-adults/); and
(https://www.amazon.com/Disney-coloring-book/s?k=Disney+coloring+book).
7 September 12, 2019 Final Office Action; TSDR 31-40.
8 Id. at TSDR 41.
9 April 9, 2020 Denial of Request for Reconsideration; TSDR 38
(https://www.amazon.com/Inspiration-Creativity-Books-1-3-ebook).
10 Id. at TSDR 51-55.
11 Denial of Request for Reconsideration; TSDR 4-30. The registrations may include
additional goods and/or services.
Serial No. 88242849
- 9 -
Registration No. Mark

Relevant Goods
5450940 ROBOT RUNWAY Downloadable e-books in
the field of art, fashion,
musical, comedic and
theatrical entertainment
(Class 9) and coloring
books (Class 16)
5897622 PURPOSE THE PENGUIN e-books featuring
children’s educational
and entertainment
content (Class 9) and
coloring books (Class 16)
5766620 REWIRED Downloadable e-books in
the fields of addiction
treatment, health and
wellness, and self-
improvement (Class 09)
and coloring books (Class
16)
5760976 FIGURES IN MOTION Downloadable non-fiction
e-books on a variety of
topics (Class 09) and
Children’s activity books;
Children’s books;
Coloring books (Class 16)
5726370 ROUTE 27 PUBLISHING
(Publishing disclaimed)
Downloadable non-fiction
e-books on a variety of
topics (Class 09) and
Coloring books; Coloring
books for adults (Class
16)
5928419 TRUTH BECOMES HER downloadable e-books, all
featuring stories; digital
media, namely, video
recordings, CDs, DVDs,
downloadable multimedia
files, and downloadable e-
books, all featuring
stories for children about
the Bible; electronic
books featuring religion
and children’s stories
Serial No. 88242849
- 10 -
Registration No. Mark

Relevant Goods
recorded on computer
media (Class 09) and
children’s books; coloring
books (Class 16)
5980835 BROTHER FRANCIS Downloadable e-books in
the field of religious
stories, teachings and
principles for educating,
entertaining and learning
(Class 09) and Coloring
books; Coloring books for
adults (Class 16)
5948315 CALIVANIA Downloadable electronic
books, magazines,
periodicals, newsletters,
newspapers, journals and
articles, all in the fields of
music and entertainment
(Class 09) and Coloring
books (Class 16)

As a general proposition, although use-based third-party registrations alone are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The third-party use and registration evidence sufficiently demonstrates that the
broadly worded “coloring books” in the cited registration and Applicant’s
“downloadable computer software for digital coloring books including a wellness
Serial No. 88242849
- 11 -
education element embedded in the coloring activity” are commercially related in that
often emanate from the same source, under the same mark. The record also shows
the availability of the same coloring book and activity books in both downloadable
(digital) format and in print. Cf. On-line Careline Inc. v. America Online Inc., 229
F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (holding ON-LINE TODAY for Internet
connection services and ONLINE TODAY for an electronic publication likely to cause
confusion). Indeed, two articles confirm the trend toward optional downloadable
software (digital) book formats. An article from Scholastic Parents titled “E-Books vs.
Print: What Parents Need to Know” notes that “E-books are becoming a more popular
choice among kids, but is high-tech as good as print for the youngest readers?”12 and
an article from naeye® titled “Getting Smarter About E-Books for Children” states
“Children’s books captivate young children, and teachers love to see kids engrossed
in their pages. But what if that book is an e-book” Does that change the equation?”
and discusses the pros and cons of the different formats.13
We do not find, as Applicant suggests, the evidence to be insufficient. Pointing to
In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003), and
unsupported assertions as to the size of the publishing and software industries,14

12 September 12, 2019 Final Office Action; TSDR 6-12.
(https://www.scholastic.com/parents/books-and-reading/reading-resources/developing-
reading-skills/e-books-vs-print-what-parents-need-to-know.html).
13 Id. at 13-30 (https://www.naeyc.org/resources/pubs/yc/may2016/ebooks-for-children).
14 Applicant raised this argument for the first time in its brief and apparently sought to
support it with materials from various hyperlinks embedded in its brief. We decline to
consider the untimely evidence, and regardless, the Board has “made clear that providing
hyperlinks to Internet materials is insufficient to make such materials of record.” In re
Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013) (citing In re HSB Solomon Assocs. LLC,
Serial No. 88242849
- 12 -
Applicant particularly argues that there are only a “handful” of references showing
companies that offer both “coloring sets” and “provide downloadable software for
coloring.” Applicant’s br. p. 5-6.15
Applicant’s reliance on Coors is misplaced. Unlike in those cases where the
analysis under the second DuPont factor focused on the relationship between goods
(food and beverages) on the one hand and services (restaurant services) on the other,
here we are comparing goods to goods. “Something more” is only required in the
context of comparing goods versus services, not goods versus goods, and where the
relationship between the goods and services is obscure or less evident. See In re St.
Helena Hosp., 113 USPQ2d at 1087. Such is not the case here where we are comparing
two different products and not goods versus services.
In this case, for the reasons discussed above, we find the evidence of record
sufficient to show the goods sufficiently similar for purposes of our likelihood of
confusion analysis.
In view thereof, the second DuPont factor favors a finding of likelihood of
confusion.
C. Channels of Trade/Classes of Consumers
We now consider the established, likely-to-continue channels of trade and classes
of consumers, the third DuPont factor. We base our determination regarding the

102 USPQ2d 1269, 1274 (TTAB 2012) (“a reference to a website’s internet address is not
sufficient to make the content of that website or any pages from that website of record.”)).

15 7 TTABVUR 7-8.
Serial No. 88242849
- 13 -
channels of trade and classes of purchasers on the goods as they are identified in the
application and the cited registration. Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s application and
the cited registration contain no limitation as to channels of trade or classes of
purchasers, and we decline to read any such limitation into them. Squirtco v. Tomy
Corp., 697 F.2d 1030, 216 USPQ 937, 940 (Fed. Cir. 1983). Because there are no
restrictions in either the application or cited registration, we must assume that the
classes of consumers for would include, children, the parent buyer, as well as an adult
purchaser in search of a wellness tool.
In addition, the record evidence detailed earlier shows that both digital and print
coloring books are offered side-by-side to the same consumer via Amazon’s digital
(Kindle) and print offerings. As such, the respective goods, as identified, would be
provided in the same or at least overlapping channels of trade to the same or
overlapping classes of purchasers.
D. Purchasing Conditions
We now look to the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Serial No. 88242849
- 14 -
Because neither Applicant’s nor Registrant’s identification limits the goods to a
particular price-point, we must treat the goods as including both inexpensive as well
as high-end coloring books whether in traditional paper or electronic form. The record
corroborates this presumption, showing, for example, that the previously referenced
“Foodies Fancy Food” coloring book is free in the digital format and $8.99 in print.
Moreover, we need no evidence to know that purchasers of many less expensive
“coloring books,” whether as downloadable software (digital coloring books) or in print
format, require no more than ordinary care in their purchasing decisions. “When
products are relatively low-priced and subject to impulse buying, the risk of likelihood
of confusion is increased because purchasers of such products are held to a lesser
standard of purchasing care.” Recot Inc. v. M.C. Becton, 54 USPQ2d at 1899; Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282
(Fed. Cir. 1984).
Thus, the fourth DuPont factor concerning the conditions of sale also weighs in
favor of a finding of likelihood of confusion.
E. Conclusion
We conclude that confusion is likely between Applicant’s MAGIC COLOR mark
for the identified software and the cited MAGICOLOR mark for the coloring books.
We conclude so principally due to the nearly identical nature of the marks, the related
goods, and the presumed overlap in trade channels and classes of consumers as well
as the purchasing conditions.

Serial No. 88242849
- 15 -
Decision: The refusal to register Applicant’s mark MAGIC COLOR is affirmed.