Roure & Roure, LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: December 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Roure & Roure, LLC
_____

Serial No. 87684091
_____

Gene Bolmarcich of Law Offices of Gene Bolmarcich,
for Roure & Roure, LLC.

Parker Howard, Trademark Examining Attorney, Law Office 117,
Travis Wheatley, Managing Attorney.

_____

Before Ritchie, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Roure & Roure, LLC (“Applicant”) seeks registration on the Principal Register of

the mark shown below

for “filters for drinking water; filters made of fiber for water filtration; water filtering

apparatus; water filters; apparatus for filtering drinking water,” in International

Class 11; and “drinking bottles for sports; insulating sleeve holder for bottles;
Serial No. 87684091

neoprene zippered bottle holders; plastic water bottle holders and attached carabiner

clip sold as a unit; portable beverage container holder; reusable stainless steel water

bottles sold empty; sports bottles sold empty; vacuum bottles; vacuum bottles; water

bottles sold empty,” in International Class 21.1

The Trademark Examining Attorney has refused registration of Applicant’s mark

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it

so resembles the registered mark GO FRESH BY KINETIC in standard characters

for “thermally insulated containers for food; lockable non-metal household containers

for food; household containers for foods; thermal insulated containers for food or

beverages; household storage containers for pet food,” in International Class 21,2 as

to be likely, when used on or in connection with the goods identified in the application,

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

After the Examining Attorney made the refusal final, Applicant appealed.

Applicant and the Examining Attorney have filed briefs. We affirm the refusal to

register as to the goods in Class 21 and reverse the refusal to register as to the goods

in Class 11.

I. Record on Appeal

The record on appeal consists of Internet webpages showing the sale, under the

same mark, of one or more of the goods identified in the application and one or more

1 Application Serial No. 87684091 was filed on November 14, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
2 Registration No. 5315827 issued on the Principal Register on October 24, 2017.

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Serial No. 87684091

of the goods identified in the cited registration, made of record by the Examining

Attorney,3 and the specimen of use submitted in connection with the cited

registration, made of record by Applicant.4

II. Likelihood of Confusion Analysis

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 § 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. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and

for which there is evidence or argument. See, e.g., M2 Software, Inc. v. M2 Commc’ns,

Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.

GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).

Two key factors in every § 2(d) case are the similarity or dissimilarity of the marks

and goods, because the “fundamental inquiry mandated by § 2(d) goes to the

cumulative effect of differences in 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). The Examining Attorney discusses both of these

3 March 2, 2018 Office Action at 5-16.
4March 8, 2018 Response to Office Action at 9. The record also includes what Applicant
described as a “summary of other TTAB cases where the differences in the connotation of the
marks alone was determinative in finding no likelihood of confusion.” Id. at 7, 10-17.

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Serial No. 87684091

factors, 6 TTABVUE 4-8,5 while Applicant focuses on the differences between the

marks. 4 TTABVUE 3-4.6

A. Similarity or Dissimilarity of the Marks

The first du Pont factor is “‘the similarity or dissimilarity of the marks in their

entireties as to appearance, sound, connotation and commercial impression.’” Palm

Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,

73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).

“Similarity in any one of these elements may be sufficient to find the marks

confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re

White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).7 “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)

(quotation omitted). “‘[S]imilarity is not a binary factor but is a matter of degree.’” In

re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting

In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)).

5The Examining Attorney also discusses the third du Pont factor regarding channels of trade
in the context of the similarity of the goods. 6 TTABVUE 8.
6 Applicant discusses the goods only to the extent that they bear on the claimed differences
in the marks. 4 TTABVUE 4.
7Applicant argues broadly that “the marks at issue look different, sound different and most
importantly have very different meanings and overall commercial impressions,” 4 TTABVUE
3, but Applicant focuses on the claimed differences in meaning and commercial impression.
Id. at 3-4.

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Serial No. 87684091

1. Appearance

Applicant describes its mark

as “the stylized wording ‘GOFRESH’ where the ‘G’ and ‘F’ feature arrow designs.”

The design elements of Applicant’s mark are modest, being both small and mere

features of the letters, and the words “GoFresh” are thus the portion of the mark

“‘most likely to indicate the origin of the goods to which it is affixed.’” In re Viterra,

Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting CBS Inc. v.

Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).

The cited mark GO FRESH BY KINETIC is a standard character mark, which

“may be used in ‘any particular font style, size, or color,’” In re Aquitaine Wine USA,

LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (quoting Trademark Rule 2.52(a), 37

C.F.R. § 2.52(a)), “including the same font style, size and color as the literal portions

of Applicant’s mark.” Id. We thus must assume that the words GO FRESH in the

cited mark could be displayed in the same style as their counterparts in Applicant’s

mark. Id.

Both marks are dominated by the identical words GO FRESH. We may consider

the actual use of the cited mark “in visualizing other forms in which the mark may

be used.” Citigroup Inc. v. Capital Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253,

1259 (Fed. Cir. 2011). The registrant’s specimen of use displays the words Go and

Fresh with initial capital letters that are larger than the lowercase letters that

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Serial No. 87684091

follow,8 in a manner reminiscent of the words GO and FRESH in Applicant’s mark,

and the words BY KINETIC appear beneath the words GO FRESH in different and

smaller type, in a manner that serves to deemphasize the words BY KINETIC. The

words GO FRESH are the literal portion of Applicant’s mark, and they appear first

in the four-word cited mark. “[I]t is often the first part of a mark which is most likely

to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc.

v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imps.,

73 USPQ2d at 1692.

Although the cited mark contains the additional wording BY KINETIC, “the

presence of an additional term in the mark does not necessarily eliminate the

likelihood of confusion if some terms are identical.” In re Mighty Tea Leaf, 601 F.3d

1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board’s conclusion that the

marks ML and ML MARK LEES (stylized) were confusingly similar). It is self-evident

from the structure of the cited mark that the word KINETIC is a house mark, and

the mere addition of a house mark has often been found to be insufficient to

differentiate otherwise identical marks. See, e.g., Stone Lion Capital Partners, LP v.

Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (affirming

Board’s finding that STONE LION CAPITAL was confusingly similar to LION and

LION CAPITAL); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986)

(affirming refusal to register stylized SPARKS BY SASSAFRAS mark due to

confusing similarity with registered stylized SPARKS mark). Taking into account

8 March 8, 2018 Response to Office Action at 9.

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Serial No. 87684091

“the fallibility of memory,” St. Helena Hosp., 113 USPQ2d at 1085, the possible

displays of the cited mark discussed above, and the fact that marks are not compared

side-by-side, In re i.am.symbolic, llc, 127 USPQ2d 1627, 1631 (TTAB 2018),

Applicant’s mark is likely to be viewed as a shortened variation on the cited mark.

Mighty Tea Leaf, 94 USPQ2d at 1260; In re SL&E Training Stable Inc., 88 USPQ2d

1216, 1219 (TTAB 2008) (holding that consumers viewing the registrant’s mark

EDELMAN may view it as an abbreviated form of the applicant’s mark SAM

EDELMAN). We find that Applicant’s stylized GOFRESH mark is similar in

appearance to the cited standard character mark GO FRESH BY KINETIC.

2. Sound

The dominant words GO FRESH in the marks are identical in sound when the

marks are verbalized. If the entire cited mark GO FRESH BY KINETIC is spoken

when consumers refer to the registrant’s goods, despite “the penchant of consumers

to shorten marks,” In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB

2016), there would be modest differences in sound between the two marks, but they

are outweighed by the identical sound of their dominant portions GO FRESH. In any

event, because KINETIC is an obvious house mark, the words BY KINETIC would

not be distinguishing even though they are absent from Applicant’s mark. We find

that the marks are similar in sound.

3. Connotation and Commercial Impression

With respect to the meaning of the two marks, Applicant argues that the “literal

portion of Applicant’s Mark, ‘GOFRESH’, when encountered by consumers on

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Serial No. 87684091

Applicant’s beverage bottles . . . and filters for the same . . . conveys the meaning

‘choose to have fresh (i.e. clean) water,”9 while “‘GO FRESH BY KINETIC’, when

encountered by consumers on the food storage products it is registered for, conveys

the meaning of ‘not stale’ (i.e. ‘fresh’) food, and is a ‘play’ on the term ‘GO STALE’ (i.e.

the opposite of what happens when food is stored in registrant’s goods).” 4 TTABVUE

4. Applicant further argues that “the term ‘GO FRESH’ is at most highly suggestive

of registrant’s and Applicant’s goods and, as such, it should not be given a broad scope

of protection” because to do so “effectively allows registrant to prevent others from

communicating the concept of ‘freshness’” in all of the ways ‘Go Fresh’ might have a

different meaning on the goods on which the mark is encountered by consumers.” Id.

The Examining Attorney responds that the cited mark could “give the commercial

impression of going about with containers that keep food fresh in terms of being cold

or hot when put in the container (like ice cream or soup) and/or not exposed to the

elements, germs or insects,” while Applicant’s mark “can give the commercial

impression of involving liquid containers (not just for water) and accessories therefor

for going about with fresh liquids (e.g., water, sports drinks, coffee, etc.) filtered (or

not),” which “prolong the freshness or state of the liquid in terms of prolonging cold

9 Applicant requests “that the Board take judicial notice of this use of ‘GO’ in general
discourse, as in the terms ‘Go Green’ and ‘Go Vegan.’” 4 TTABVUE 4 n.1. We deny this
request because the claimed uses of these terms “in general discourse” are not appropriate
matters for judicial notice under Rule 201(b) of the Federal Rules of Evidence. Cf. Boswell v.
Mavety Media Grp. Ltd., 52 USPQ2d 1600, 1608 (TTAB 1999) (declining to take judicial
notice, “based on ‘common experience,’ of ‘dirty talk’ that is used only when males are present”
to establish vulgar meaning of “tail” because “the experiences that opposers refer to . . . do
not constitute the kind of indisputable facts that are contemplated by Rule 201 of the Federal
Rules of Evidence” and holding that if “opposers had wanted to make evidence of this kind of
word usage of record, they could easily have done so through testimony.”).

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Serial No. 87684091

drinks being cold, hot drinks being hot, carbonated drinks being carbonated, and/or

liquids not being exposed to the elements, germs or insects.” 6 TTABVUE 9. He also

notes that the goods identified in the cited registration include “thermal insulated

containers for . . . beverages,” and thus registrant’s mark “can give the identical

commercial impression as posited by applicant for its liquid containers.” Id.

Applicant’s argument that the identical words GO FRESH have different

meanings in the two marks is not supported by the record and also assumes a level

of subtlety of consumer perception that is inconsistent with “the proper focus . . . on

the recollection of the average consumer, who retains a general rather than specific

impression of the marks.” Aquitaine Wine USA, 126 USPQ2d at 1184. The average

consumer of the identified goods is a member of the general public. The words “go”

and “fresh” are common English words, and when they are combined in the directive

GO FRESH in the marks, the average consumer of the identified goods, with a

general impression of the marks, would understand GO FRESH to have the same

general meaning in both marks of preserving or promoting the “fresh” or unspoiled

state of foods and beverages. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1247

(TTAB 2010) (the word MAX is a recognized slang abbreviation for the English word

“maximum” and would have the same meaning in both marks for insurance

services).10

10 Applicant cites three precedential cases in support of its argument that an identical mark
used by different parties may be perceived as having different meanings when used with
different goods. 4 TTABVUE 3-4. It is axiomatic that each case must be decided on its own
facts and “past decisions on confusing similarity are of little assistance in new fact situations
wherein entirely different marks and products are involved.” Medicated Prods. Co. v. Alice
Jewelry Co., 255 F.2d 408, 118 USPQ 90, 91 (CCPA 1958). The cited cases provide no aid to
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Serial No. 87684091

Applicant also argues that “the term “GO FRESH’ is at most highly suggestive of

registrant’s and Applicant’s goods and, as such, it should not be given a broad scope

of protection . . . .” 4 TTABVUE 4. There is no evidence of third-party use or

registration of GO FRESH-formative marks that might suggest that GO FRESH has

“‘a normally understood and well recognized descriptive or suggestive meaning,

leading to the conclusion that [it] is relatively weak.’” Juice Generation, Inc. v. GS

Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting 2

MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 11:90 (4th ed. 2015)). The cited

registration of GO FRESH BY KINETIC issued without a requirement of a showing

of acquired distinctiveness, or a disclaimer of the word FRESH,11 and the mark is

entitled to the normal scope of protection to which inherently distinctive marks are

entitled in the absence of other evidence of the strength or weakness of the mark.

Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1347 (TTAB 2017). But

us here because of the different marks and goods in those cases. See In re Sears, Roebuck &
Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (CROSS-OVER for bras and CROSSOVER for ladies’
sportswear differed in meaning because “CROSS-OVER” was suggestive of the construction
of bras, while “CROSSOVER” for sportswear was “likely to be perceived by purchasers either
as an entirely arbitrary designation, or as being suggestive of sportswear which ‘crosses over’
the line between informal and more formal wear . . . or the line between two seasons”); In re
British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) (PLAYERS for men’s underwear and
PLAYERS for shoes differed in meaning because PLAYERS implied a fit, style, color, and
durability suitable for outdoor activities when applied to shoes, but “implie[d] something else,
primarily indoors in nature” when applied to men’s underwear); In re Sydel Lingerie Co., 197
USPQ 629, 630 (TTAB 1977) (BOTTOMS UP for ladies’ and children’s underwear and
BOTTOMS UP for men’s clothing differed in meaning because the wording connoted the
drinking phrase “Drink Up” when applied to men’s clothing, but not when applied to ladies’
and children’s underwear). The inherent differences between foods and beverages have
nothing to do with the meaning of GO FRESH when used for containers for those goods; that
meaning is highly similar in both instances.
11 March 2, 2018 Office Action at 2.

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Serial No. 87684091

even assuming that GO FRESH is highly suggestive as applied to the goods, and that

the cited mark should be given slightly narrower protection as a result, we have found

above that the words have essentially the same meaning in both marks, and the

relative weakness of GO FRESH does not render the marks less similar in meaning.

We find that the marks are similar in connotation and commercial impression

when considered in their entireties. Because they are also similar in appearance and

sound, they are similar in all relevant means of comparison, and the first du Pont

factor supports a finding of a likelihood of confusion, particularly with respect to the

Class 21 goods in the application and registration, which we find below to be legally

identical in part. See, e.g., Century 21 Real Estate Corp. v. Century Life of Am., 970

F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (“[w]hen marks would appear on

virtually identical goods or services, the degree of similarity [between the marks]

necessary to support a conclusion of likely confusion declines.”).

B. Similarity or Dissimilarity of the Goods

The second du Pont factor concerns the “similarity or dissimilarity and nature of

the goods or services as described in an application or registration.” Stone Lion, 110

USPQ2d at 1159. The analysis under this factor is premised on the identifications of

goods in the application and in the cited registration. Id. at 1161-63; Octocom Sys.,

Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

1990); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). “[L]ikelihood of

confusion can be found ‘if the respective goods are related in some manner and/or if

the circumstances surrounding their marketing are such that they could give rise to

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Serial No. 87684091

the mistaken belief that they emanate from the same source.’” Coach Servs., 101

USPQ2d at 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,

1724 (TTAB 2007)). Like the similarity of the marks, the similarity of the goods is a

matter of degree. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.

1992).

The Class 11 goods identified in the application are:

Filters for drinking water; filters made of fiber for water
filtration; water filtering apparatus; water filters;
apparatus for filtering drinking water

The Class 21 goods identified in the application are:

Drinking bottles for sports; insulating sleeve holder for
bottles; neoprene zippered bottle holders; plastic water
bottle holders and attached carabiner clip sold as a unit;
portable beverage container holder; reusable stainless steel
water bottles sold empty; sports bottles sold empty;
vacuum bottles; vacuum bottles; water bottles sold empty.

The goods identified in the cited registration are:

Thermally insulated containers for food; lockable non-
metal household containers for food; household containers
for foods; thermal insulated containers for food or
beverages; household storage containers for pet food.

The refusal to register may be affirmed as to a particular class if there is a likelihood

of confusion with respect to any of the goods in that class. Tuxedo Monopoly, Inc. v.

Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); FabFitFun,

127 USPQ2d at 1672.

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Serial No. 87684091

Applicant acknowledged during prosecution that the goods in its application and

the goods in the cited registration are “somewhat related,” though not identical,12 and

Applicant “has not disputed in its appeal brief that the parties’ goods are related.” 6

TTABVUE 10.13 While Applicant’s admission of a degree of similarity is relevant,

given Applicant’s equivocation, the Examining Attorney still bears the burden of

establishing a relationship between the goods with evidence.

We turn first to the identifications of goods. The Class 21 goods identified in the

application include “drinking bottles for sports,” “reusable stainless steel water

bottles sold empty,” “sports bottles sold empty,” “vacuum bottles,” and “water bottles

sold empty.” These broad and unrestricted identifications are “deemed to encompass

‘all the goods of the nature and type described therein . . . .’” In re Solid State Design

Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump Designs LLC, 80

USPQ2d 1370, 1374 (TTAB 2006)). These various forms of bottles encompass thermal

insulated ones, and thus they encompass the goods identified in the cited registration

as “thermal insulated containers for . . . beverages.”14 These sets of goods from the

application and registration are thus legally identical.

12 March 8, 2018 Response to Office Action at 7.
13 As noted above, Applicant discusses the goods only to the extent that they bear on the
claimed different commercial impressions of the marks.
14 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed form or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial notice
that a “bottle” is “a glass or plastic container for liquids, usually with a narrow part at the
top that is called the neck” and a “container” is “something used for storing or holding things,
for example a box, bottle, or bowl.” MACMILLAN DICTIONARY (macmillandictionary.com, last
accessed on December 17, 2018).

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Serial No. 87684091

The Examining Attorney argues that the goods are related “because they are (1)

commonly manufactured and sold together under the same mark (e.g., Thermos,

Stanley, Hydro Flask), (2) commonly sold together by the same retail sources, and (3)

similar and complementary in purpose or function” because “the parties’ goods both

involve containers for preserving food and liquids (whether cold, hot or room

temperature) for later use.” Id.

With respect to the Examining Attorney’s first argument, the three cited examples

are all of the uses in the record. They show use of the THERMOS mark on an

insulated food jar, a replacement filter for portable filtered hydration bottles, a water

filtration bottle, and a steel hydration bottle;15 use of the STANLEY mark on a

vacuum insulated food jar, a replacement filter cartridge for a skimmer, and a steel

water bottle;16 and use of the HYDROFLASK mark on a vacuum water bottle, a water

bottle holder, and a food flask.17 Evidence that different goods are offered under the

same mark can be probative of the relatedness of the goods. In re Davey Prods. Pty

Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Here, there are three examples of use of

the same mark for both food containers and water bottles, but only one clear example

of use of the same mark for both food containers and one of the Class 11 water

filtration goods identified in the application.18

15 March 2, 2018 Office Action at 5-8.
16 Id. at 9-11.
17 Id. at 12-16.
18 The replacement filter cartridge sold under the STANLEY mark and the subsidiary mark
PoolTec appears to be intended for use in a swimming pool filter. March 2, 2018 Office Action
at 10. Three of Applicant’s Class 11 goods, “filters made of fiber for water filtration,” “water
filtering apparatus,” and “water filters,” are not specific to the filtration of drinking water,
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Serial No. 87684091

The Examining Attorney’s use evidence supports the relatedness of bottles and

food containers, but it does not support the relatedness of food containers and water

filtration goods, particularly because it is not augmented by other evidence, much

less the Examining Attorney’s claim that food containers and water filtration goods

are “commonly manufactured and sold together under the same mark.” 6 TTABVUE

10.

The Examining Attorney’s second argument for relatedness is that the “goods are

sold or provided through the same channels of trade and used by the same classes of

consumers . . . since consumers of water bottles, water filters and insulated food jars

can obtain these products and their accessories from the same retail sources (i.e.,

Amazon.com and REI.com).” 6 TTABVUE 8. The channels of trade for the goods

involves the third du Pont factor, not the second, and where, as here, the goods are

legally identical in part, they are “‘presumed to travel in the same channels of trade

to the same class of purchasers.’” Viterra, 101 USPQ2d at 1908 (quoting Hewlett-

Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.

2002)). We do not find the Examining Attorney’s argument persuasive in any event.

A very wide variety of goods is sold through amazon.com, as evidenced by the

website’s masthead on each webpage in the record:

and, as discussed above, these goods are deemed to encompass all the goods of the nature and
type described therein. Solid State Design, 125 USPQ2d at 1413. Even assuming, however,
that these filtration goods, as described, encompass pool filters, the STANLEY mark is not
used for a pool filter per se, but rather for a component.

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Serial No. 87684091

19

The masthead of the rei.com website, which is the channel of trade for one pair of

bottles and food containers, similarly suggests that a wide variety of goods is sold by

that company:

20

The Board has long recognized that “[n]ot everything that is sold by a large retail

establishment selling a plethora of otherwise unrelated goods is necessarily

connected, within the meaning of §2(d) of the Act, to every other product that happens

to be displayed or offered under the same roof,” Sheller-Globe Corp. v. Scott Paper

Co., 204 USPQ 329, 335 (TTAB 1979), and that principle applies with equal force to

online retailers. The mere fact that some of the goods identified in the application

and registration are available through common online channels of trade in which a

host of other goods are also sold does not show that the identified goods are related.

The Examining Attorney’s final argument for relatedness is that the Class 21

goods “are similar or complementary in terms of purpose or function since registrant’s

insulated food jars are meant to keep food cold or hot for later use and applicant’s

products include insulated and non-insulated bottles for keeping beverages for later

19 March 2, 2018 Office Action at 5-11.
20 Id. at 12-16.

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Serial No. 87684091

use.” 6 TTABVUE 8.21 According to the Examining Attorney, the “vacuum bottles”

identified in the application “are not limited to liquids and thus could encompass

registrant’s ‘thermally insulated containers for food’ and ‘thermal insulated

containers for food or beverages.’” Id. at 8. As discussed above, the several types of

bottles identified in the application and the “thermal insulated containers for . . .

beverages” identified in the registration are legally identical. In addition, the

inherent nature of bottles and food containers is such that they are functionally

similar in purpose, and could be used together to preserve food and beverages. We

agree with the Examining Attorney that the functional similarity of the food and

beverage containers identified in the application and registration supports a finding

that those goods are related.

Taken together, the legal identity of the Class 21 goods in part, the evidence of

several uses of the same mark for food containers and water bottles, and the

functional similarity and complementarity of those goods, are sufficient to show that

the Class 21 goods in the application and registration are “related in some manner.”

Coach Servs., 101 USPQ2d at 1722. Accordingly, the second du Pont factor supports

a finding of a likelihood of confusion as to Class 21 in the application. On the other

hand, a single instance of the sale of a drinking water filter and a food container

under the same mark, unaccompanied by other evidence and otherwise unsupported

by the identifications of goods themselves, is simply insufficient to show that any of

21The Examining Attorney makes no specific argument that water filtration goods and food
containers are similar in purpose or complementary in use.

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Serial No. 87684091

the Class 11 goods in the application are related to any of the goods in the

registration. The second duPont supports a finding of no likelihood of confusion as to

the Class 11 goods in the application.

C. Conclusion

The marks are similar in appearance, sound, connotation, and commercial

impression. Because the record shows that the Class 21 goods in the application and

registration have been sold under the same marks and are legally identical in part

and functionally similar in purpose and use, “the circumstances surrounding their

marketing are such that they could give rise to the mistaken belief that they emanate

from the same source” when sold under the similar marks here. Coach Servs., 101

USPQ2d at 1722. Because the record and the identifications of goods do not show that

any of the Class 11 goods in the application are related to any of the goods in the cited

registration, the dissimilarity of those goods makes confusion unlikely

notwithstanding the similarity of the marks.

Decision: The refusal to register as to the goods in Class 21 is affirmed. The

refusal to register as to the goods in Class 11 is reversed.

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