8016/87193
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`,
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`IN TTIF/IE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`is being
`this paper
`I hereby certify that
`deposited with the United States Postal Service
`as first class mail in an envelope addressed to:
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 223 13— 1451
`
`USA Baby, Inc.,
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`Opposer,
`
`v,
`
`Robert Gejshekel-7
`
`Applicant
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`Marks: MY BABY’S ROOM (78/483,760)
`THE CHILDREN’S ROOM (78/484,188)
`MY CHILD’S ROOM (78/484,530)
`MY CHILD’S ROOM and Design (78/531,507)
`
`\J\&\2\J\2\)\)\J&\J%€\J\&%/
`
`on this date.
`
`10 30 06
`Date
`
`
`
`OPPOSITION NO. 91,167,999
`
`OPPOSER’S MOTION FOR SUMMARYJUDGMENT
`
` -jx
`
`11-01-2006 A
`US. Patent & TMOfc/TM Mail Rcpt Dt. #2
`
`

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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION............................................................................................................................................................3
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`A.
`
`B.
`
`STATEMENT OF UNDISPUTED FACTS ..........................................................................................3
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`BACKGROUND OF THE PARTIES ......................................................................................................6
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`II.
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`ISSUES ....................................................................................................................................................................................8
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`III. ARGUMENT...........................................................................................................................................................................9
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`A. Standard for Summaryjudgment in Opposition Proceedings..................................................................9
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`B. Standard for Likelihood of Confusion ................................................................................................................ ..ll
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`C. The Uncontroverted Facts Compel a Finding of Likelihood of Confusion As
`A Matter of Law............................................................................................................................................................ ..I2
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`1.
`
`2.
`
`3.
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`4.
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`5.
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`6.
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`7.
`
`8.
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`The Parties Services Are Identical...................................................................................................... ..l2
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`The Marks at Issue Are Confusingly Similar..................................................................................13
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`The USA Baby Marks are Strong and Entitled to a Broad Scope of Protection ...........l4
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`The Similarity of the Parties’ Respective Trade Channels Increase the Likelihood
`of Confusion.................................................................................................................................................. ..l5
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`Applicant’s Predatory Intent..................................................................................................................16
`
`USA Baby Has Clear Priority and Any Doubts Regarding Likelihood of
`Confusion Must Be Resolved Against the Applicant...............................................................l7
`
`Public Protection Against Confusion Requires Refusal Of
`The Subject Applications........................................................................................................................18
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`Applicant’s Marks Will Lessen the Capacity of the USA Baby
`Marks to Identify Its Services..............................................................................................................l8
`
`IV.
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`CONCLUSION.............................................................................................................................................................20
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`DECLARATION OF RONALD A. ERIKSEN
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`EXHIBITS A—]
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`

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`I.
`
`INTRODUCTION
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`Opposer, USA Baby, Inc. (“USA Baby"), hereby moves the Trademark Trial and Appeal Board
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`(the Board) for entry of Summary Judgment pursuant to Fed. R. Civ. P. 56 on its Opposition filed against
`
`Application Serial No. 78/483,760 for the mark MY BABY’S ROOM; Application Serial No. 78/484,188 for
`
`the mark THE CHILDREN’S ROOM; Application Serial No. 78/484,530 for the mark MY CHILD'S
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`ROOM; and Application Serial No. 78/531,507 for the mark MY CHILD’S ROOM and Design (hereinafter
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`“Applicant’s Marks”). USA Baby, respectfully submits that it is entitled to Summary judgment because
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`there is no issue of material fact and the undisputed evidence establishes that there is a likelihood of
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`confusion between the Opposer’s use of its marks THE BABY‘S ROOM (Registration Nos. 1,634,474 and
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`3,031,990); THE BABY’S ROOM and Design (Registration No. 2,443,615); CHILD SPACE and Design
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`(Registration No. 2,472,684) and CHILD SPACE (Registration No. 2,474,811) (hereinafter the “USA Baby
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`Marks”) and AppIicant‘s Marks.
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`In addition, the undisputed evidence shows that Applicant’s Marks
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`have and continue to dilute the USA Baby Marks. Therefore, USA Baby respectfully requests the entry of
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`Summary judgment sustaining its Opposition on the basis of Sections 2(d) and 43(c) of the Lanham Act.
`
`A.
`
`1.
`
`STATEMENT OF UNDISPUTED FACTS
`
`Robert Geisheker, (hereinafter “the Applicant"), filed Application Serial No. 78/483,760
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`for the mark MY BABY’S ROOM on September 15, 2004 on an intent to use basis for use in connection
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`with “retail furniture store services featuring furniture and accessories for infants and children” in
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`International Class 35. The application was published on September 27, 2005.
`
`2.
`
`Application No. 78/484,188 for the mark THE CH1LDREN’S ROOM was also filed by the
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`Applicant on September 15, 2004, on an intent to use basis for “retail furniture store services featuring
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`furniture and accessories for infants and children" in International Class 35. The application was
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`published for opposition on September 6, 2005.
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`

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`3.
`
`In addition, Applicant filed application Nos. 78/484,530 and 78/531,507 for the marks MY
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`CHILD’S ROOM and MY CHILD’S ROOM and Design respectively on September 16, 2004 and
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`December 13, 2004 for use in connection with “retail furniture store services featuring furniture and
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`accessories for infants and children.” Both applications specify a date of first use in commerce of
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`December 16, 2004, and were published for opposition on August 9, 2005 and August 30, 2005,
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`respectively.
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`4.
`
`USA Baby filed timely oppositions against each of the foregoing applications on the
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`grounds that Applicant’s Marks are confusingly similar to the USA Baby Marks, and that registration of
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`Applicant’s Marks has and will continue to lessen the capacity of the USA Baby Marks to identify and
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`distinguish its services. The Applicant filed an Answer generally denying the allegations.
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`5.
`
`6.
`
`The Testimony Period has not opened prior to the filing of this Motion.
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`Applicant, Robert Geisheker, is a citizen of the United States having an address at 817 N.
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`Industrial Drive, Elmhurst, IL 60126 and is the President of TBR, LLC also doing business as My Child’s
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`Room, an Illinois Limited Liability Company having an address at 817 N. Industrial Drive, Elmhurst, IL
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`60126.
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`7.
`
`USA Baby, Inc. is an Illinois Corporation located and doing business at 793 Springer
`
`Drive, Lombard, Illinois.
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`8.
`
`On February 5, 1991, USA Baby was granted U.S. Registration No. 1,634,474 for THE
`
`BABY’S ROOM mark in connection with “retail store services featuring furniture, mattresses, toys and
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`related merchandise for infants and children.” This Registration is still valid and subsisting and is now
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`incontestable.
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`(See Certified Copy of this Registration showing title and status attached as Exhibit A).
`
`The foregoing Registration claims a first use date in commerce of THE BABY’S ROOM mark of
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`September 23, 1975.
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`9.
`
`USA Baby is the owner of Registration No. 2,443,615 for the mark THE BABY’S ROOM
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`and Design in connection with “retail store services featuring furniture, mattresses, toys and related
`
`

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`merchandise for infants and children”. The foregoing registration indicates that USA Baby has used THE
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`BABY’S ROOM and Design mark in connection with these services in interstate commerce since at least
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`as early as November 1, 1995 and was issued the aforementioned registration on April 17, 2001. (See
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`Certified Copy of this Registration showing title and status attached as Exhibit B).
`
`10.
`
`USA Baby is the owner of the marks CHILD SPACE and Design (Registration No.
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`2,472,684) and CHILD SPACE (Registration No. 2,474,811) for use in connection with “retail stores
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`services featuring furniture for infants, children and teenagers, namely, cribs, mattresses, bunk beds,
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`captains beds, loft beds, twin beds, desks, hutches, bookcases, entertainment units, storage units,
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`rockers, armoires, dressers and chairs.” The CHILD SPACE and Design mark and the CHILD SPACE
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`mark were granted Registration on the Principal Register respectively on July 31, 2001, and August 21,
`
`2001. (See Certified Copy of these Registrations showing title and status attached as Exhibits C and D).
`
`(Eriksen Decl. at ‘I 5).
`
`11.
`
`Last, Application Serial No. 78/504,526 for the mark THE BABY’S ROOM has resulted in
`
`the recent issuance1 of Registration No. 3,031,990 for “retail store services featuring furniture for infants,
`
`children and teenagers, namely, cribs, mattresses, bunk beds, captains beds, loft beds, twin beds, desks,
`
`hutches, bookcases, entertainment units, storage units, rockers, armoires, dressers, chairs and toys and
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`related merchandise". The Registration indicates that the mark has been used in interstate commerce
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`since at least as early as September 23, 1975 throughout the United States.
`
`(See Certified Copy of this
`
`Registration showing title and status attached as Exhibit E). (Eriksen Decl. at ‘.11 6).
`
`12.
`
`In its Answer to the Notice of Opposition, Applicant admits that Registration Nos.
`
`1,634,474, 2,443,615, 2,472,684 and 2,474,811 were issued by the U.S. Patent and Trademark Office, that
`
`each are currently owned by USA Baby for use in connection with the recited services. (See Answer to
`
`Notice of Opposition attached hereto as Exhibit E at ‘1 6, 8, 9, 10).
`
`‘ On September 27, 2005, after the instant proceeding was commenced, Application No.
`78/504,526 for THE BABY’S ROOM mark was published for Opposition and Registered on the
`Principal Register on December 20, 2005 in connection with the aforementioned services.
`5
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`

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`13.
`
`Moreover, Applicant admits that Registration No. 1,634,474 for the mark THE BABY’S
`
`ROOM is presently valid and subsisting, and is prima facie evidence of USA Baby’s exclusive right to use
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`the mark in connection with “retail store services featuring furniture, mattresses, toys and related
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`merchandise for infants and children.” (Exhibit E at 9 6).
`
`B.
`
`BACKGROUND OF THE PARTIES
`
`USA Baby is a leading franchisor and retailer of infant and children’s furniture and related goods
`
`and services. USA Baby has various franchises throughout the United States.
`
`(Eriksen Decl. at ‘I 2).
`
`Since 1975, USA Baby has been offering retail store services for the sale of furniture, mattresses, toys and
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`related merchandise for infants and children, and these services have been continuously offered, and
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`products sold, throughout the United States.
`
`(Eriksen Decl. at ‘I 3). USA Baby’s services are offered
`
`under the marks: THE BABY’S ROOM, THE BABY’S ROOM and Design, CHILD SPACE, and CHILD
`
`SPACE and Design as well as others. (Eriksen Decl. at ‘I 4). The typical investment by a franchisee of
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`USA Baby currently involves a total investment of approximately half a million dollars. (Eriksen Decl. at
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`91 5). USA Baby operates what is one of the most successful franchise businesses in the United States for
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`the last thirty (30) plus years.
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`It offers franchises under its trademarks THE BABY’S ROOM, THE
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`BABY’S ROOM and Design, CHILD SPACE and CHILD SPACE and Design among others.
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`(Eriksen
`
`Decl. at ‘I 6).
`
`Applicant previously was a USA Baby franchisee that operated a number of the BABY’S ROOM
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`Stores in the Midwest. (Eriksen Decl. at ‘I 7). At or about a time that his franchise ceased, Applicant filed
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`Application Serial No. 78/483,760 for the mark MY BABY’S ROOM on an intent to use basis for use in
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`connection with “retail furniture store services featuring furniture and accessories for infants and
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`children” in International Class 35. The application was filed on September 15, 2004, and published on
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`September 27, 2005. (Eriksen Decl. at ‘I 8).
`
`USA Baby started using the mark THE BABY’S ROOM in 1975 to identify its retail store services
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`offering furniture and accessories for infants and children. Since at least as early as September 23, 1975,
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`

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`USA Baby or its predecessors in interest have continuously used the mark THE BABY’S ROOM in
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`commerce in connection with “retail store services featuring furniture, mattresses, toys and related
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`merchandise for infants and children”.
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`(Eriksen Decl. at ‘l 9). THE BABY’S ROOM mark has been
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`consistently used by USA Baby both as its trademark and, to some extent, as the trade name by which it
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`has come to be known among purchasers. THE BABY’S ROOM mark and trade name have generated
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`substantial goodwill associated with the mark over the last several decades. (Eriksen Decl. at ‘l 10).
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`This substantial goodwill has resulted in the further evolution of other, related marks for related
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`services. Specifically, it has resulted in the issuance of Registration No. 2,443,615 for the mark THE
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`BABY’S ROOM and Design in connection with “retail store services featuring furniture, mattresses, toys
`
`and related merchandise for infants and children." Moreover, it has resulted in the registration of the
`
`marks CHILD SPACE and Design (Registration No. 2,472,684) and CHILD SPACE (Registration No.
`
`2,474,811) for use in connection with “retail stores services featuring furniture for infants, children and
`
`teenagers, namely, cribs, mattresses, bunk beds, captains beds, loft beds, twin beds, desks, hutches,
`
`bookcases, entertainment units, storage units, rockers, armoires, dressers and chairs.” Last it has resulted
`
`in the registration of Application Serial No. 78/504,526 for the mark THE BABY’S ROOM (which has
`
`resulted in the recent issuance2 of Registration No. 3,031,990) for “retail store services featuring furniture
`
`for infants, children and teenagers, namely, cribs, mattresses, bunk beds, captains beds, loft beds, twin
`
`beds, desks, hutches, bookcases, entertainment units, storage units, rockers, armoires, dressers, chairs
`
`and toys and related merchandise.” (Eriksen Decl. at ‘J 11).
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`Based upon the undisputed facts, there is a clear likelihood of consumer confusion. The Board
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`should grant USA Baby’s motion for Summary Judgment and sustain this opposition because there is no
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`issue of triable fact.
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`In this case, the parties cannot reasonably dispute the marks, goods and services,
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`channels of commerce, and sophistication of buyers. The appearance, sound, connotation, commercial
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`2 On September 27, 2005, after the instant proceeding was commenced, Application No. 78/504,526 for
`THE BABY’S ROOM mark was published for Opposition and Registered on the Principal Register on
`December 20, 2005 in connection with the aforementioned services.
`7
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`

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`impression of the marks, and the services and channels of trade are so similar between Applicants and
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`USA Baby’s Marks that there is simply a clear likelihood of confusion as a matter of law.
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`II.
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`ISSUES
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`A plaintiff moving for Summary judgment in its favor on a Section 2(d) claim must establish that
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`there is no genuine dispute that (1) it has standing to maintain the proceeding; (2) it is the prior user of
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`its pleaded mark; and (3) contemporaneous use of the parties‘ respective marks on their respective goods
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`would be likely to cause confusion mistake or to deceive consumers. See Hornblower (7 Weeks, Inc. 60
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`USPQ2d1733 (TTAB 2001).
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`As outlined above, USA Baby has standing to oppose the marks at issue in this proceeding.
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`Further, there is no issue as to priority since Applicant did not counterclaim to cancel any one of the five
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`(5) U.S. Registrations for the aforementioned USA Baby Marks and because USA Baby’s pleaded
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`registrations are valid and subsisting. King Candy Co. v. Eunice King’s Kitchen, Inc, 496 F.2d. 1400, 182 USPQ
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`108 (CCPA 1974).
`
`In any event, USA Baby’s use of the marks THE BABY’S ROOM and THE BABY’S
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`ROOM and Design date back over thirty years) and accordingly priority cannot be an issue. Even
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`Applicant admits that USA Baby’s use of the marks THE BABY’S ROOM and THE BABY’S ROOM and
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`Design began before Applicant can claim first use of any of Applicant’s Marks. (Exhibit F at ‘1 12).
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`In fact, Application Serial No. 78/483,760 for the mark MY BABY’S ROOM, and Application
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`Serial No. 78/484,188 for the mark THE CHII_DREN’S ROOM were filed on an intent’ to«use basis for
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`“retail furniture store services featuring furniture and accessories for infants and children”. Since the
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`applications were filed on September 15, 2004, priority cannot be an issue.
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`(See TARR printouts
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`attached hereto as Exhibits G and
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`Applicant further admits that its filing for registration of the
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`marks MY BABY’S ROOM and THE CHII_DREN’S ROOM was filed without the consent or permission
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`of USA Baby. (Exhibit F at ‘.1 16). Neither can priority be an issue as to the marks MY CHILD'S ROOM
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`and MY CHILD‘S ROOM and Design (App. Nos. 78/484,530 and 78/531,507) since each claims a date of
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`

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`first use in commerce of only December 16, 2004, well after USA Baby used each of the five USA BABY
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`Marks in commerce. (See TARR printouts attached hereto as Exhibits I andj).
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`In contrast, each of the aforementioned Registrations for the USA BABY Marks by USA Baby,
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`except for No. 3,031,990, were issued prior to dates of the intent/to«use Applications for the marks MY
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`BABY’S ROOM and THE CHILDREN’S ROOM were filed and the earliest date of first use recited therein
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`by USA Baby is at least as early as September 23, I975. Applicant has not challenged those Registrations.
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`Therefore, the only issue for determination is the existence of a likelihood of confusion and the resulting
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`dilution of the USA Baby Marks. Specifically, the issue presented is whether there is a likelihood of
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`confusion between Applicant’s Marks for retail furniture store services featuring furniture and
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`accessories for infants and children and the USA Baby Marks used in connection with, inter alia, the
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`same retail furniture store services for furniture and related merchandise for infants and children.
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`III. ARGUMENT
`
`A. Standard for Summaryjudgment in Opposition Proceedings
`
`The Federal Circuit has made it clear that likelihood of confusion is an issue of law that can be
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`resolved by way of Summary judgment. Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1565, 4
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`USPQ.2d 1793, 1797 (Fed. Cir. l987)(“The uniform precedent of this court is that the issue of likelihood of
`
`confusion is one of law. The Federal Circuit has held that likelihood of confusion is a question of law to
`
`be decided by the Board). Weiss Associates, Inc. v. HRE Associates, Inc., 902 F.2d 1546, 1547 (Fed. Cir. 1990).
`
`See also Pure Gold, Inc. v. Syntex (Ll.S.A.), Inc., 739 F.2d 624, 636 (Fed. Cir. l984)(likelihood of confusion is an
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`issue well~suited for summary judgment). Moreover, 37 C.F.R. § 2.l16(a) makes Fed.R.Civ.P. 56
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`applicable to all inter partes proceedings before the Board. Summary judgment in favor of an opposer is
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`appropriate in opposition cases.
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`In fact, the Trademark Trial and Appeal Board has repeatedly decided
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`summary judgment motions relative to likelihood of confusion in favor of an opposer. See, e.g., National
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`Football League v. jasper Alliance Corp., 16 USPQ1212 (TTAB 1990)(finding “SUPER BOWL” for greeting
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`cards confusingly similar to “SUPER BOWL” in connection with entertainment services despite non»
`
`9
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`

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`identical goods); Bongrain Int’l
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`(American) Corp. v. Moquet Ltd., 230 USPQ 626 (TTAB 1986)(finding
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`“ALOUETTE” for wines confusingly similar to “ALOUETTE” for cheeses, and finding channels of trade
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`overlapping).
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`Thus, the board may unquestionably resolve that issue on summary judgment. The purpose of
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`summary judgment is one of judicial economy, namely to save the time and expense of an unnecessary
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`trial when no genuine issue of material facts exist and more evidence than is already available in
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`connection with the Summary judgment Motion could not reasonably be expected to change the result.
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`Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 627, 222 USPQ 741 (Fed. Cir. 1984). See also Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 247; 106 S.Ct. 2505, 250910 (1986); Continental Can Co. USA, Inc. v. Monsanto,
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`Co., 948 F.2d 1264, 1265 (Fed. Cir. 1991) (“Summary judgment is proper when there is no genuine issue of
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`material fact, and the movant is entitled to judgment as a matter of law”).
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`Fed. R. Civ. P. 56(c) provides that Summary judgment may be granted “if the pleadings,
`
`depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any show
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`that there is no genuine issues as to any material fact and that the moving party is entitled to a judgment
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`as a matter of law.” The record must be viewed in the light most favorable to the non~moving party, and
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`all factual inferences must be drawn in favor of the non«moving party. Olde Tyme Foods, Inc. v. Roundy’s, Inc.,
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`961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992)(citing United States v. Diebold, Inc., 369 U.S. 654, 655
`
`(1962)). A factual issue is "genuine" only if the evidence is such that a reasonable fact finder could return
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`a verdict for the non~moving party under the applicable substantive evidentiary standard. Anderson,
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`supra, at 254. Accordingly, it is the obligation of the non~moving party to "set forth specific facts
`
`showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The mere identification of a dispute of
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`fact will not necessarily defeat a motion for Summary judgment if the fact disputed is not essential to the
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`determination sought by the Summary judgment Motion; a factual dispute is material only if resolution
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`of the dispute would affect the decision on the legal issue. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624,
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`636 (Fed. Cir. 1984). Moreover, Summary judgment should not be denied "merely to satisfy a litigant’s
`10
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`

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`speculative hope of finding some evidence that might tend to support a complaint.‘ Pure Gold, 739 F.2d at
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`627. (Citing First National Bank v. Cities Services Co., 391 U.S. 253, 290 (1968)).
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`Questions of doubt as to the legal question of likelihood of confusion must always be resolved in
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`favor of the prior user. This principle of law applies to Summary Judgment determinations of likelihood
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`of confusion in the same way it applies to such determinations made after full evidentiary hearings.
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`Bongrain Int’l (American) Corp., v. Moquet I_td., 230 USPQ 626, 628 (TTAB 1986) (noting that in ruling on a
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`opposer’s motion for Summary judgment, “we must resolve our doubts in favor of the opposer, the prior
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`user and registrant"). Accordingly while all underlying factual inferences are drawn in favor of the non—
`
`moving party, in the final analysis of the legal question of likelihood of confusion, any doubt that exists
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`must be resolved in favor of Opposer. Id.
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`B. Standard for Likelihood of Confusion
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`The standard for the likelihood of confusion in an opposition proceeding before the Board is well
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`established as set forth in Application of E.I. DuPont Denemours (7 Co., 476 F.2d 1357, 177USPQ 563
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`(C.C.P.A. 1973) and recently affirmed in In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ 2d
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`1201 (Fed. Cir. 2003).
`
`In the Du Pont case, the Court identified the availability of 13 evidentiary factors
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`that should be evaluated in determining whether a likelihood of confusion exists. The evidentiary
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`elements listed in DuPont are not listed in order of merit. Moreover, the significance of each factor and
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`its relevance to subsequent cases varies from case to case. DuPont, 476 F.2d at 567. Factors of particular
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`relevance in the instant care include (1) the similarities of the goods or services; (2) the similarity of trade
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`channels; (3) the similarities between the parties’ marks; (4) the strength of the senior user’s mark and
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`(5) other probative evidence concerning the effect of use. In re E.I. DuPont de Nemours (7 Co., 476 F.2d 1357,
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`1361, 177 USPQ 563, 567 (CCPA 1973); Specialty Brands, inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 671«
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`76, 223 USPQ 1281, 1282085 (Fed. Cir. 1984). An evaluation of the relevant DuPont factors shows as a
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`matter of law that likelihood of confusion exists between the USA Baby Marks and Applicants Marks.
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`Accordingly, this instant opposition should be sustained by Summary judgment.
`1 1
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`

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`C. The Uncontroverted Facts Compel a Finding of Likelihood of Confusion As
`A Matter of Law
`
`1.
`
`The Parties Services Are Identical
`
`The similarity or dissimilarity of the parties‘ respective services is one of the primary factors in
`
`determining whether or not there is a likelihood of confusion. DuPont, 177 U.S.P.Q.2d at 567. See also ].C.
`
`Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960, 963, 144 U.S.P.Q. 435, 438 (C.C.P.A. 1965). It is
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`well/settled that the goods and services are compared on the basis of the goods identified in Applicant’s
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`application and Opposer’s registration.
`
`In re Elbaum, 211 USOQ 639, 640 (TTAB 1981). Applicant’s
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`description of its services must be construed most favorably to the opposing prior user. CTS Corp. v.
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`Cronstoms Mfg, Inc, 515 F.2d 780, 185 USPQ 773, 774 (CCPA 1975).
`
`It is not necessary for the goods and
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`services of USA Baby and Applicant to be identical for a likelihood of confusion to exist. Safety»Kleen Corp.
`
`v. Dresser Industries, Inc., 518 F.2d 1399, 1404, 186 U.S.P.Q. 476, 480 (C.C.P.A. 1975); W.E. Kautenberg Co. v. Ekco
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`Products Company, 251 F.2d 628, 631, 116 U.S.P.Q. 417, 419 (C.C.P.A. 1958) (ECKO as applied to kitchen
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`utensils held confusingly similar to WECKO as applied to mops and related products). As it happens
`
`though, the respective services are more than just similar. Here, the identification of services in the
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`subject applications of Applicant are identical to the services set forth in each of the Registrations for the
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`USA Baby Marks.
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`USA Baby adopted and began using THE BABY’S ROOM mark on September 23, 1975, and has
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`used it in commerce throughout the United States. Now, Applicant is seeking to register its marks for
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`use in connection with “retail furniture store services featuring furniture and accessories for infants and
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`children” in International Class 35. As such, there is entirely no contrast between Applicant’s services
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`and those of USA Baby. Construing Applicant’s description in any reasonable manner requires a finding
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`that the services of the parties must be deemed to be identical. Sportschuhfabrilcen RudolfDassler KG v. Garan,
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`Inc. 224 USPQ 1064, 106566 (TTAB 1984); Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335,
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`209 USPQ 986, 988 (CCPA 1981). Therefore, it is not surprising that Applicant admits that the services
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`for which its seeks registration of Applicants Marks are similar and related to the services in which USA
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`Baby uses the USA BABY Marks. (Exhibit F at El 18).
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`2.
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`The Marks at Issue Are Confusingly Similar
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`Not only are the services at issue identical but the marks at issue are substantially similar.
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`"When marks would appear on virtually identical goods or services, the degree of similarity to support a
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`conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ 2d.
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`1698, 1700 (Fed. Cir. 1992). In evaluating whether marks are confusingly similar, the Board looks at the
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`entirety of the marks and compares the marks’ respective appearance, sound, connotation and
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`commercial impression. Century 21 Real Estate Corporation v. Century Life of America, 970 F.2d 874, 876; 23
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`U.S.P.Q.2d 1698 (Fed. Cir. 1992). Given the strong similarity in appearance, sound, connotation and
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`commercial impression of the marks when used with identical services, there is a high likelihood of
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`consumer confusion. "Cases where a defendant uses an identical mark on competitive goods hardly ever
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`find their way into the appellate reports. Such cases are ‘open and shut’ and do not involve protracted
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`litigation to determine liability for trademark infringement." McCarthy, Trademarks and Unfair
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`Competition §23:2O (4th Ed.). As the USA Baby Marks and Applicant’s Marks are substantially similar
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`and used in connection with identical services, consumer confusion is likely.
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`Here there is an undeniable similarity between the USA Baby Marks and Applicant’s Marks.
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`USA Baby owns at least five (5) registrations for the marks THE BABY’S ROOM, THE BABY’S ROOM
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`and Design, CHILD SPACE and CHILD SPACE and Design. First, we note that Applicant’s mark MY
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`BABY’S ROOM is nearly identical to USA Baby’s THE BABY’S ROOM marks. The marks merely differ by
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`Applicant’s use of the weak term “My” in place of the article “The". Not only are the marks nearly
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`identical in appearance, sound and connotation, they create the same overall commercial impression. It is
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`undisputed that Registration No. 1,634,474 for the mark THE BABY’S ROOM is incontestable and that
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`Applicant’s MY BABY’S ROOM mark has a substantially similar order and form. Thus, Applicant has
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`adopted a similar mark in standard character form which it has not yet used in commerce.
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`The same can be said of Applicant’s marks THE CHII_DREN’S ROOM, MY CHII_D’S ROOM and
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`MY CHILD’S ROOM and Design which clearly have the same connotation and commercial impression as
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`USA Baby’s THE BABY’S ROOM marks and CHILD SPACE marks. In this case, considering the sound,
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`appearance and meaning trilogy, the meaning portion itself of the test that dictates a finding that the
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`marks themselves are similar enough to lead to a likelihood of confusion as a matter of law. The
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`Trademark Trial and Appeal Board has consistently held that all three of the trilogy, that is sound,
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`appearance and meaning, need not be present to sustain a finding of likelihood of confusion. See General
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`Foods Corp. v. General Mills, Inc., 167 USPQ 638 (TTAB 1970).
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`In fact, in General Mills the Board concluded
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`that similarities in meaning alone is sufficient to sustain a likelihood of confusion between the two marks
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`used in connection with closely related goods. Id. (“Arise“ and “awake” found to lead to likelihood of
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`confusion when used on ready~to/eat cereal, liquid breakfast drink, and frozen concentrate for imitation
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`orange juice).
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`In determining the meaning and connotation which a trademark evokes, it is proper to consider
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`the context of use.
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`In re Nationwide Indus. Inc., 6 USPQ2d 1882 (TTAB 1988). In the context of retail store
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`services featuring various furniture and accessories for
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`infants and children,
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`the marks THE
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`Cl-IlI_DREN’S ROOM, MY CHILD’S ROOM and MY CHII_D’S ROOM and Design and USA Baby’s THE
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`BABY’S ROOM marks and CHILD SPACE marks mean the same and create the same overall commercial
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`impression. Applicant’s Marks evoke the same mental reaction as the USA Baby Marks which is so
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`strong as to outweigh any phonetic of visual differences between the marks. The similarities compel a
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`conclusion that Applicants Marks and the USA Baby Marks in the context of retail store services
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`featuring furniture and accessories for infants and children are confusingly similar.
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`3. The USA Baby Marks are Strong and Entitled to a Broad Scope of Protection
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`The USA Baby Marks have achieved fame through USA Baby‘s and its predecessors’ extensive
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`sales, advertising and length of use of THE BABY’S ROOM marks in commerce for over thirty (30) years.
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`Since at least 1975, USA Baby has continuously and extensively used THE BABY’S ROOM mark in
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`interstate commerce in connection with retail stores services featuring furniture and various related
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`merchandise for infants and children. USA Baby offers its services under the USA Baby Marks to the
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`same end»consumers as Applicant admittedly offers its services. (Exhibit F at ‘J 19). USA Baby‘s retail
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`store services featuring furniture and related merchandise for infants and children offer delivery
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`throughout the United States. Also, USA Baby offers its services and related goods under USA Baby’s
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`Marks directly to consumers. (Eriksen Decl. at ‘l 12).
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`USA Baby advertises the USA Baby marks through various advertising media. (Eriksen Decl. at ‘l
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`13). Presently, USA Baby‘s sale of furniture and related merchandise for infants and children under all
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`of its marks are over $100 million dollars annually in