Board of Trustees of the University of Arkansas

This Opinion is not a
Precedent of the TTAB

Mailed: July 3, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Board of Trustees of the University of Arkansas
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Serial No. 87427496
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Harold J. Evans of the University of Arkansas System
for the Board of Trustees of the University of Arkansas.

Giancarlo Castro, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Cataldo, Ritchie and Kuczma,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, the Board of Trustees of the University of Arkansas, seeks registration

on the Principal Register of the mark displayed below,
Serial No. 87427496

identifying “educational services, namely, providing meetings, seminars and

workshops for parents, teachers, childcare providers, and public schools in the area

of obesity prevention targeting young children in at-risk environments and the

distribution of training material in connection therewith” in International Class 41.1

The Trademark Examining Attorney refused registration under Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d), based upon a likelihood of confusion with three

registrations issued on the Principal Register to the same entity, including

Registration No. 4665725 for the mark WISE KIDS TWO (in standard characters,

“KIDS” disclaimed), identifying “printed educational materials in the fields of health,

wellness, nutrition, fitness, and physical activity,” in International Class 16; and

“educational services for youth, namely, developing activities that promote health,

wellness, nutrition, fitness, and physical activity,” in International Class 41,2 as to be

likely to cause confusion, to cause mistake, or to deceive.

After the Examining Attorney made the refusals final, Applicant appealed to this

Board. We affirm the refusal to register.

1 Application Serial No. 87427496 was filed on April 27, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to
use the mark in commerce. The application includes the following description of the mark
and color statements: “The mark consists of the drawing of the round face of an owl and the
word ‘WISE’ in large letters to the right of the face with the long part of the ‘I’ in WISE
replaced by a carrot and below ‘WISE’ are the words ‘we inspire smart eating’. “Color is not
claimed as a feature of the mark.”

2 Registration No. 4665725 issued on January 6, 2015.
The Examining Attorney also cited Reg. No. 4665726 for the mark WISE KIDS OUTDOORS
and Reg. No. 4669686 for the mark WISE KIDS OUTDOORS TWO (both issued on the
Principal Register in standard characters, “KIDS OUTDOORS” disclaimed) and both
identifying substantially identical goods and services to those listed above.

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Serial No. 87427496

Evidentiary Matter

Applicant submitted with its appeal brief evidence that is duplicative of the

evidence previously submitted with its January 12, 2018 Response to the Examining

Attorney’s August 1, 2017 First Office Action. We need not and do not give this

redundant evidence any consideration. To the extent any of the evidence submitted

with Applicant’s appeal brief was not previously submitted during prosecution, it is

untimely and will not be considered.3 See Trademark Rule 2.142(d), 37 C.F.R.

§ 2.142(d); TBMP § 1203.02(e) and § 1207.01 and authorities cited therein. See also,

e.g., In re I-Coat Co., 126 USPQ2d 1730, 1734-35 (TTAB 2018).

Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all probative facts

in evidence that are relevant to the factors bearing on the issue of likelihood of

confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key

considerations are the similarities between the marks and the similarities between

the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)

3The proper procedure for an applicant or examining attorney to introduce evidence after an
appeal has been filed is to submit a written request with the Board to suspend the appeal
and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TBMP § 1207.02 and authorities cited therein.

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Serial No. 87427496

goes to the cumulative effect of differences in the essential characteristics of the goods

and differences in the marks.”).

a. Focus on Cited Registration No. 4665725

For purposes of the du Pont factors that are relevant to this appeal we will

consider Applicant’s involved mark and identified services and the WISE KIDS TWO

mark that is the subject of cited Reg. No. 4665725 identifying, inter alia, “educational

services for youth, namely, developing activities that promote health, wellness,

nutrition, fitness, and physical activity.” If likelihood of confusion is found as to the

mark and services in this registration, it is unnecessary to consider the other cited

registrations. Conversely, if likelihood of confusion is not found as to the mark and

services in this registration, we would not find likelihood of confusion as to the mark

and services in the other cited registrations inasmuch as the marks in the other

registrations contain additional wording that is not present in the mark in the

involved application and the services recited in all three cited registrations are closely

related. See In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).

b. Relatedness of the Services and Channels of Trade

With regard to the services, channels of trade and classes of consumers, we must

make our determinations based on the services as they are identified in the

application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41

USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion

Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-

Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed.

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Serial No. 87427496

Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d

1783, 1787 (Fed. Cir. 1990). A proper comparison of the services considers whether

“the consuming public may perceive [the respective goods or services of the parties]

as related enough to cause confusion about the source or origin of the goods and

services.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to support a finding of

likelihood of confusion, it is not necessary that the services be identical or even

competitive. It is sufficient that the services are related in some manner, or that the

circumstances surrounding their marketing are such that they would be encountered

by the same persons in situations that would give rise, because of the marks, to a

mistaken belief that they originate from the same source or that there is an

association or connection between the sources of the services. In re Thor Tech Inc., 90

USPQ2d 1634, 1635 (TTAB 2009).

Applicant’s services are “educational services, namely, providing meetings,

seminars and workshops for parents, teachers, childcare providers, and public schools

in the area of obesity prevention targeting young children in at-risk environments

and the distribution of training material in connection therewith” and the services in

the cited registration are “educational services for youth, namely, developing

activities that promote health, wellness, nutrition, fitness, and physical activity.”

These services are related as identified inasmuch as both provide educational services

intended to increase health and wellness among children. Applicant’s services are

more narrowly identified as targeting young children in at-risk environments, which

is of course a subset of the more broadly identified youth in the cited registration.

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Serial No. 87427496

Applicant’s services are specifically directed toward preventing childhood obesity and

the services in the cited registration are directed toward promoting health, wellness,

nutrition, fitness and physical activity, all of which prevent obesity. We find that

Applicant’s more narrowly identified educational programs in the field of obesity

prevention among young children are essentially included among Registrant’s more

broadly identified educational services that promote health, wellness, fitness,

nutrition and physical activity among youth. See, e.g., Southwestern Mgmt., Inc. v.

Ocinomled, Ltd, 115 USPQ2d 1007, 1025 (TTAB 2015) (With a broad identification of

services, “we must presume that the services encompass all services of the type

identified”).

In support of its arguments in favor of registration, Applicant introduced into the

record a screenshot from the website of the owner of the cited registration, reproduced

as Figure 1 below.4

4 Applicant’s January 12, 2018 Response to Office Action at 17.

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Serial No. 87427496

Figure 1:

The screenshot includes the following language:

• “Establishing healthy habits today doesn’t have to be difficult. Trends such as

childhood obesity can be reversed if we all work together.”5

• “Wise Kids® – a science-based, out-of-school-time curriculum for children aged

6 to 11 – delivers wellness messaging and practical, hands-on activities that

get kids moving.”6

5 Id.
6 Id. Applicant further made of record a printout from the USPTO’s Trademark Status &
Document Retrieval (TSDR) database of Reg. No. 3419657, issued to the owner of the
registrations cited herein for the mark WISE KIDS (in standard characters, “KIDS”
disclaimed), identifying, inter alia, “educational consulting services for youth programming,
namely, helping organizations to develop activities that promote health, wellness, nutrition,
fitness and physical activity. Id. at 9-12.

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Serial No. 87427496

Applicant’s evidence further establishes that the owner of the cited registration

provides educational services for young children in the field of obesity prevention,

which are nearly identical to the services identified in the involved application.

Applicant argues that the Examining Attorney failed to introduce “any third party

evidence that the respective services emanate from a single source under a single

mark.”7 However, the plain language of the respective recitations of services,

combined with Applicant’s evidence regarding Registrant’s activities, clearly

establish that the services are closely related, if not overlapping. As we noted above,

our likelihood of confusion determination is based upon the services as they are

identified in the application and registration at issue. In re Elbaum, 211 USPQ 639,

640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976).

See also Octocom, 16 USPQ2d at 1787 (“The authority is legion that the question of

registrability of an applicant’s mark must be decided on the basis of the identification

of goods set forth in the application regardless of what the record may reveal as to

the particular nature of an applicant’s goods, the particular channels of trade or the

class of purchasers to which the sales of goods are directed”).

In addition, the identifications of services in the cited registration and involved

application do not recite any limitations as to the channels of trade in which

Applicant’s or Registrant’s services are or will be offered. In the absence of trade

channel limitations on the services under the marks, we must presume that the

services in the involved application and cited registration are offered in all customary

7 4 TTABVUE 9.

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Serial No. 87427496

trade channels. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98

USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370,

1374 (TTAB 2006); In re Elbaum, 211 USPQ at 640. In addition, the services as

recited appear to be offered to the same consumers, namely, educators, parents, child

care providers and children seeking to prevent childhood obesity and promote health,

wellness, fitness, physical activity and nutrition among children.

We find that the du Pont factors of the relatedness of the services, channels of

trade and consumers weigh in favor of likelihood of confusion.

c. Strength of the Cited Mark / Number and Nature of Similar Marks

WISE KIDS TWO appears to be somewhat suggestive in connection with

educational services directed toward smart approaches to services regarding

children’s health and fitness, as identified in the cited registration. Otherwise, there

is no evidence of record to suggest conceptual weakness of the term WISE KIDS TWO.

In the absence of any evidence to the contrary, we find that WISE KIDS TWO is

inherently strong and otherwise neutral with regard to commercial strength.

This du Pont factor is neutral.

d. Similarity or Dissimilarity of the Marks

We consider Applicant’s mark and the registered

mark WISE KIDS TWO and compare them “in their entireties as to appearance,

sound, connotation and commercial impression.” Stone Lion Capital Partners, LP v.

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Serial No. 87427496

Lion Capital LLP, 110 USPQ2d at 1160; Palm Bay Imps. Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.

2005) (quoting du Pont, 177 USPQ at 567). “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)

(internal quotation marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser

LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084,

1089 (TTAB 2016). Consumers may not necessarily encounter the marks in close

proximity and must rely upon their recollections thereof over time. In re Mucky Duck

Mustard Co., 6 USPQ2d 1467, 1468 (TTAB 1988).

Because the similarity or dissimilarity of the marks is determined based on the

marks in their entireties, our analysis cannot be predicated on dissecting the marks

into their various components; that is, the decision must be based on the entire

marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ

749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d

1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be

dissected and considered piecemeal; rather, it must be considered as a whole in

determining likelihood of confusion.”). On the other hand, there is nothing improper

in stating that, for rational reasons, more or less weight has been given to a particular

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Serial No. 87427496

feature of a mark, provided the ultimate conclusion rests on a consideration of the

marks in their entireties. Nat’l Data, 224 USPQ at 751.

Upon evaluating the mark and the registered mark

WISE KIDS TWO, we find that a prominent feature of the applied-for mark is the

term “WISE” and, similarly, “WISE” is a prominent feature of the registered mark.

Because this is the first term in each mark, it is most likely to be impressed upon

purchasers’ memories. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d

1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to

be impressed upon the mind of a purchaser and remembered”). Furthermore, the

term “WISE” in Applicant’s mark appears in much larger font than the comparatively

diminutive wording “we inspire smart eating” appearing below. In addition, the

wording “we inspire smart eating” is an acronym for “WISE,” further emphasizing

the prominence of that term in Applicant’s mark.

There is no evidence of record regarding the possible significance of “WISE” in

relation to the identified services in the cited registration aside from the obvious

suggestion that health, fitness and nutrition are wise choices for children. With

regard to Applicant’s mark, regardless of whether consumers view “WISE” as an

acronym for “we inspire smart eating,” the term remains a common English word and

retains its significance as connoting that reducing childhood obesity is a wise choice

for children, parents and teachers.

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Serial No. 87427496

Moreover, for source-identifying purposes, consumers will likely focus on the term

“WISE” in the registered mark than the highly descriptive and disclaimed term

“KIDS.” See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846

(Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the

descriptive component of a mark may be given little weight in reaching a conclusion

on the likelihood of confusion”) quoting In re Nat’l Data, 224 USPQ at 752; In re Dixie

Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699,

1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s

commercial impression”). The term “TWO” in the registered mark simply suggests

this is the second educational program created by Registrant to promote health,

fitness and nutrition among children and youth.

Applicant’s mark comprises both words and a design. The words are normally

accorded greater weight, in part because consumers are likely to remember and use

the word(s) to request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,

1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the

dominant portion”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987)

(holding that “if one of the marks comprises both a word and a design, then the word

is normally accorded greater weight because it would be used by purchasers to

request the goods or services” and “because applicant’s mark shares with registrant’s

mark that element responsible for creating its overall commercial impression, the

marks are confusingly similar”). In this case, the design of an owl, an animal often

viewed as a totem for wisdom, reinforces the prominence of the term “WISE” and the

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Serial No. 87427496

carrot forming the letter “I” in “WISE” reinforces the healthy aspects of nutrition.

Thus, while we do not discount the presence of the design elements in Applicant’s

mark, we also recognize that they serve to reinforce the commercial impression of the

wording thereof.

Consumers further are known to use shortened forms of names, and it is possible

that Applicant and its services will be referred to as “WISE.” Cf. In re Abcor Dev.

Corp., 200 USPQ at 219 (Rich, J., concurring) (“the users of language have a universal

habit of shortening full names – from haste or laziness or just economy of words”).

In sum, while we recognize the obvious differences between them, we find the

marks in their entireties to be more similar than dissimilar in appearance, sound and

meaning and, overall, to convey similar commercial impressions. This du Pont factor

weighs in favor of finding a likelihood of confusion.

e. Likelihood of Confusion Summary

Considering all the evidence of record, including any evidence not specifically

discussed herein, we find that the marks in their entireties are more similar than

dissimilar and that the identified services are closely related if not overlapping, and

will be encountered in common channels of trade by the same classes of consumers.

We find therefore that Applicant’s mark is likely to cause confusion with the mark in

the cited registration when used in association with the identified services.

Decision: The refusal to register based on likelihood of confusion under Section

2(d) of the Trademark Act is affirmed.

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