MWR Holdings, LLC

Trademark Trial and Appeal Board

Jul 20, 2020

88082466 (T.T.A.B. Jul. 20, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re MWR Holdings, LLC
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Serial Nos. 88082466, 88082484
_____

Joseph Agostino of Greenberg Traurig, LLP,
for MWR Holdings, LLC.
Jules Dean, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Kuhlke, Bergsman and Larkin,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
MWR Holdings, LLC (“Applicant”) seeks registration on the Principal Register for
services identified as “Educational services, namely, providing training of daycare
professionals,” in International Class 41 for the standard character mark BEYOND
THE BUILDING BLOCKS,1 and the word and design mark shown below:2

1 Application Serial No. 88082466, filed on August 17, 2018, alleging use and first in
commerce on October 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051.
2 Application Serial No. 88082484, filed on August 17, 2018, alleging first use and first use in
commerce on October 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051. The
application includes the following description and color claim:
Serial Nos. 88082466, 88082484
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The Trademark Examining Attorney has refused registration of Applicant’s
marks in each application under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), on the ground that Applicant’s marks, when used in connection with the
identified services, so resembles the registered typed mark3 BUILDING BLOCKS
FOR LITERACY (LITERACY disclaimed) for “Educational services, namely,
professional development courses for pre-school educators,” in International Class 41,
as to be likely to cause confusion, mistake or deception.4
When the Section 2(d) refusals were made final, Applicant appealed and briefs
have been filed. Applicant’s request that we consolidate the appeals because they

The mark consists of the words “BEYOND THE BUILDING
BLOCKS,” with the word “BEYOND” in a first font in black, the
word “THE” in white and positioned in a black box to the right
of the word “BEYOND”, and the words “BUILDING BLOCKS”
in a second font in black and positioned below the words
“BEYOND THE”, and to the left of the words a silhouette of an
elephant in blue holding a yellow apple, positioned within a
substantially square box, two sides of which are purple, two
sides of which are green. All other instances of the color white
appearing in the mark represent background and/or transparent
areas and are not claimed as a feature of the mark.
The color(s) black, white, blue, yellow, purple, and green is/are
claimed as a feature of the mark.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012); TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 807.03(i) (October 2018).
4 Registration No. 2492398, issued on September 25, 2001, renewed.
Serial Nos. 88082466, 88082484
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involve common issues of law and fact with similar records is granted. We issue a
single opinion for both appeals.5 See, e.g., In re S. Malhotra & Co. AG, 128 USPQ2d
1100, 1102 (TTAB 2018); TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (TBMP) § 1214 (2020). We affirm the refusals to register.
I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). We consider the du Pont factors for which there is
evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019) See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the du Pont list of factors,
only factors that are “relevant and of record” need be considered). Further,
“[a]lthough confusion, mistake or deception about source or origin is the usual issue
posed under Section 2(d), any confusion made likely by a junior user ’s mark is cause
for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation
or connection.” Hilson Research, Inc. v. Soc’y for Human Resource Mgmt., 27 USPQ2d
1423, 1429 (TTAB 1993); see also Majestic, 65 USPQ2d at 1205 (“...mistaken belief
that [a good] is manufactured or sponsored by the same entity ... is precisely the
mistake that Section 2(d) of the Lanham Act seeks to prevent”).

5 Citations to the record are to Serial No. 88082466 unless otherwise noted.
Serial Nos. 88082466, 88082484
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In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis … ‘may focus . . . on dispositive
factors, such as similarity of the marks and relatedness of the goods.”’) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)).
A. Relatedness of the Services and Trade Channels
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, L.P. 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 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
The services do not have to be identical or even competitive in order to find that
there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499
(TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009).
Serial Nos. 88082466, 88082484
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The issue is not whether the services will be confused with each other, but rather
whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods [or
services] in question are different from, and thus not related to, one another in kind,
the same goods [or services] can be related in the mind of the consuming public as to
the origin of the goods [or services]. It is this sense of relatedness that matters in the
likelihood of confusion analysis.”). It is sufficient that the services of the applicant
and the registrant are related in some manner or that the conditions surrounding
their marketing are such that they are likely to be encountered by the same persons
under circumstances that, because of the marks used in connection therewith, would
lead to the mistaken belief that they originate from the same source. See, e.g., Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB)); On-
line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Applicant did not present argument or evidence on this issue, effectively conceding
the services are related and the channels of trade overlap. In re Morinaga Nyugo K.K.,
120 USPQ2d 1738, 1740 (TTAB 2016). Nonetheless, we offer a brief explanation for
our finding of fact. Applicant’s “Educational services, namely, providing training of
daycare professionals” are legally identical to Registrant’s “Educational services,
namely, professional development courses for pre-school educators.” Both services are
Serial Nos. 88082466, 88082484
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for educating early childhood professionals and are different ways of saying the same
thing. We take judicial notice of the following dictionary definitions:6
Day Care: supervised daytime care for preschool children,
the elderly, or those with chronic disabilities usually
provided at a center outside the home;
Training: the education, instruction, or discipline of a
person or thing that is being trained;
Trained: to make proficient by instruction and practice, as
in some art, profession, or work;
Educator: a person or thing that educates, especially a
teacher, principal, or other person involved in planning or
directing education;
Professional: a person who belongs to one of the
professions, especially one of the learned professions; and
Profession: any vocation or business.
Providing training encompasses professional development courses and daycare
professionals encompasses pre-school educators. Therefore, the services are legally
identical.
That “pre-school educators” may also be “daycare professionals” and “development
courses” include “training” is further corroborated by the excerpts below from three
use-based third-party websites:
ContinuED providing “online professional development for
early childhood education providers” which includes
“research-based training courses” that cover “preschool
setting” “infant and toddler setting” and “family child care

6 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (accessed July
17, 2020). The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or regular fixed editions. In re Cordua Rests. LP, 110
USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016);
In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial Nos. 88082466, 88082484
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setting” (https://www.continued.com/early-childhood-
education, December 4, 2018 Office action pp. 4-10);
The Care Courses School Inc. providing “Book & Online
Training for Early Childhood Professionals” and
“professional development child care training”
(https://www.carecourses.com/PublicPages, December 4,
2018 Office action pp. 11-12); and
Early Learning Leaders providing “professional
development opportunities to strengthen the leadership
skills of child care administrators and enhance the quality
of early care learning programs”
(https://www.earlylearningleaders.org, December 4, 2018
Office action pp. 12-14).
Because the services described in the application and the cited registration are
legally identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (identical goods are presumed to travel in same channels of trade to same class
of purchasers). This overlap in trade channels is also demonstrated by the third-party
websites.
B. Sophistication of the Consumer
Applicant argues that the purchasers of their respective services are “primarily
professionals, such as teachers, preschool and daycare center owners, and purchasing
agents and contractors, the buying class is expected to exercise a high standard for
care when considering making such purchase.” App. Brief, 4 TTABVUE 25. Applicant
explains that:
The services covered by Applicant’s Mark are not “impulse”
services, but are unique and sophisticated services that
must meet rigorous standards of quality due to their
inherent nature. Applicant’s services are marketed, sold
Serial Nos. 88082466, 88082484
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and rendered to industry professionals, such as early
childhood education centers, teachers, staff members,
franchisees, and purchasing agents. Such individuals
would exhibit extraordinary care when purchasing
Applicant’s services and would not be confused with the
services of the Cited Mark, and vice-versa. Because of this,
Applicant’s services and the services covered by the Cited
Mark are not the sort of services bought on impulse.
Therefore, it is highly unlikely that the foregoing
respective purchasers would be confused between
Applicant’s services provided under Applicant’s Mark and
the services provided under the Cited Mark.
App. Brief, 4 TTABVUE 25.
We make our analysis based on the least sophisticated potential purchaser. Stone
Lion Capital v. Lion Capital, 110 USPQ2d at 1163. We find based on the nature of
these services that even the least sophisticated potential purchaser will exercise some
care in making decisions about signing up for training or development courses.
However, while we may infer a higher level of scrutiny in their purchasing, there is
not sufficient evidence of record upon which to make a determination that this factor
would outweigh the other du Pont factors. Moreover, even sophisticated buyers are
not immune from confusion. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find
this factor to be neutral.
C. Strength/Weakness of the Element BUILDING BLOCKS
Applicant argues that the term “BUILDING BLOCKS” is weak in the field of
education services and relies on several third-party registrations for marks that
include the term “BUILDING BLOCKS.” Applicant has not submitted any current
market evidence demonstrating third parties using similar marks on similar goods
Serial Nos. 88082466, 88082484
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and services. “We have frequently said that little weight is to be given such [third-
party] registrations in evaluating whether there is likelihood of confusion. The
existence of these registrations is not evidence of what happens in the market place
or that customers are familiar with them....” AMF Inc. v. Am. Leisure Prods., Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) quoted in In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, 777 F. App’x 516 (Fed. Cir. 2019).
However, third-party registrations may be probative of conceptual strength or
weakness as they
may be considered to demonstrate the meaning of a word
which comprises the mark, or a portion thereof, to show
that there is a well-known and commonly understood
meaning of that word and that the mark has been chosen
to convey that meaning. ... The conclusion to be drawn in
such a case is that there is an inherent weakness in a mark
comprised in whole or in part of the word in question and
that, therefore, the question of likelihood of confusion is
colored by that weakness to the extent that only slight
differences in the marks may be sufficient to distinguish
one from the other.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (internal citations omitted);
see also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1675 (Fed. Cir. 2015) (“Third party registrations are relevant to prove that some
segment of the composite marks which both contesting parties use has a normally
understood and well-recognized descriptive or suggestive meaning, leading to the
conclusion that that segment is relatively weak.”) (citations omitted). See also In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d at 1745 (“[T]hird-party
registrations are relevant evidence of the inherent or conceptual strength of a mark
Serial Nos. 88082466, 88082484
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or term because they are probative of how terms are used in connection with the goods
or services identified in the registrations.”)
Applicant submitted sixteen7 use-based third-party registrations shown in the
chart below and argues that they “demonstrate the phrase ‘BUILDING BLOCKS’ is
so commonly used and has a well-known descriptive meaning in the education field
that the relevant consuming public will look to other elements to distinguish the
source of the goods or services, and that such phrase is commonly used in the
education field to denote a basic unit or component from which something is built
upon.”8 App. Brief, 4 TTABVUE 17.
Reg. No. Mark Goods/Services
5669231

Educational publications, namely, workbooks,
textbooks, activity goods, teacher guides,
manuals, and educational booklets in the field of
phonics (Class 16)
4478231 BUILDING BLOCKS Educational software featuring instruction in
the field of math (Class 9); Printed educational
materials in the field of math (Class 16);
Education services, namely, providing online
instruction in the field of math … (Class 41)

7 Applicant attached an exhibit to its brief that has several third-party registrations. We have
considered only those registrations submitted during prosecution of the application. To the
extent any of the registrations attached to the brief were not submitted during prosecution,
they have not been considered. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).
8 Reg. No. 4179573, submitted as another third-party registration, was cancelled under
Section 8 of the Trademark Act, 15 U.S.C. § 1058. “A cancelled registration is only evidence
that the registration issued and it does not carry any of the legal presumptions under Section
7(b) of the Trademark Act, 15 U.S.C. § 1057(b). See Bond v. Taylor, 119 USPQ2d 1049, 1054-
55 (TTAB 2016); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011) (“‘dead’
or cancelled registrations have no probative value at all.”). As such, we have given no
consideration to this particular registration.” In re Information Builders, Inc., 2020 USPQ2d
10444, at *6 n.19 (TTAB 2020).
Serial Nos. 88082466, 88082484
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3932873 BUILDING BLOCKS
OF
COMMUNICATION
Speech, audiology and occupational therapy
services (Class 44)
3840796 BUILDING BLOCKS
FOR WRITING
SUCCESS
Educational activity books for use by children
(Class 16)
3700996

Teaching kit comprised primarily of a teachers
manual in the field of bible study and also
containing flash cards in the nature of drill cards
… sold as a unit (Class 16)
3377803 BUILDING BLOCKS
OF SCIENCE
Printed instructional, educational, and teaching
materials in the field of science; educational
publications, namely, training and resource
manuals and guides in the field of science
education (Class 16)
2337908

Printed instructional, educational, and teaching
materials describing and illustrating phonetic
reading programs for beginning readers (Class
16)
4984807 BUILDING BLOCKS
THE ABC’S OF
DRIVING
Vehicle-driving instruction (Class 41)
4944118 CONSTRUCTION
MANAGEMENT
BUILDING BLOCKS
Arranging and conducting business seminars in
the field of business and construction; Business
training; Educational services, namely,
conducting classes, seminars, conferences,
workshops, retreats, camps and field trips in the
field of business and distribution of training
material in connection therewith; Leadership
development training in the field of business and
construction (Class 41)
4626056 TEACHER
BUILDING BLOCKS
School supplies, teacher supplies and
educational items, namely, printed paper
certificates, stickers, pencils, pencil eraser
toppers, paper borders for lining walls, bulletin
boards and chalk boards, [ paper cutters, ] paper
posters… (Class 16)
4609289 BUILDING BLOCKS
LACROSSE
Educational services, namely, providing
seminars, classes, instruction and coaching in
the fields of lacrosse (Class 41)
4605144 BUILDING BLOCK
PERFORMANCE
Personal fitness training services and
consultancy; Physical fitness consultation (Class
41)
Serial Nos. 88082466, 88082484
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4601845 CAPITAL
BUILDING BLOCKS
providing a website featuring information about
investing (Class 36)
4560719 BUILDING BLOCKS
OF HOPE
Electronic downloadable publications, namely,
patient, caregiver, and professional educational
resources for use by medical professionals in the
field of science and medicine (Class 9); Book
covers; Educational publications, namely,
patient, caregiver and professional resources in
the fields of oncology … (Class 16); Book bags
(Class 18)
4398688 THE BUILDING
BLOCK APPROACH
Prerecorded DVDs in the field of golf and golf
instruction (Class 9)
3603524 THE BUILDING
BLOCKS OF ROCK
Providing an online database for use in learning
to play the guitar (Class 41)

The Examining Attorney argues that:
[T]he applicant’s evidence only shows education goods and
services that are largely unrelated to the very specific
services identified by the applicant and registrant.
Specifically, the applicant and registrant are the only
“BUILDING BLOCKS” marks used in connection with
training early childhood professionals. The weakness or
dilution of a particular mark is generally determined in the
context of the number and nature of similar marks in use
in the marketplace in connection with similar services.
Ex. Att. Brief, 6 TTABVUE 10.
The Examining Attorney also points out that the phrase is “used mostly in
connection with good[s] rather than services” and different “subject matters” that are
“largely unrelated to each other.” Id. at 11.
The third-party registrations are for educational services or printed materials in
support thereof, but they are in very different fields. Many are simply too far from
early childhood care and education to be of much probative value (e.g., materials or
services related to guitars, oncology, investing, business, driving, and lacrosse).
Serial Nos. 88082466, 88082484
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However, they do tend to support that the phrase “BUILDING BLOCKS” is
suggestive in the context of educational goods and services generally and specifically
in education for children (phonics, school supplies, activity books, math). We take
judicial notice of the following definition for the phrase “BUILDING BLOCKS”: a
basic element or component.9 We find that “BUILDING BLOCKS” is suggestive for
any type of educational service, including early childhood education, and accord it a
somewhat narrower scope of protection as an element of the cited mark. However, we
note that Applicant and Registrant are the only ones in the field of early childhood
education and day care using that element in their respective marks.
D. Similarity/Dissimilarity of the Marks
In comparing the marks we compare the marks in their entireties as to
“appearance, sound, connotation and commercial impression.” 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). “Similarity in any
one of these elements may be sufficient to find the marks confusingly similar.” In re
Inn at St. John’s, 126 USPQ2d at 1746) (citing In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)). “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. v. Triumph Learning, 101 USPQ2d at

9 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (accessed July 15,
2020).
Serial Nos. 88082466, 88082484
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1721. Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on a comparison of 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.”). However, “in articulating reasons for reaching a conclusion
on the issue of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks in their entireties .” Nat’l
Data, 224 USPQ at 751.
Applicant’s and Registrant’s marks are similar in appearance, sound, connotation
and commercial impression because they both include the phrase “BUILDING
BLOCKS.” Applicant’s mark begins with the wording “BEYOND THE” and
Registrant’s mark ends with the wording “FOR LITERACY.” In addition, in
Application Serial No. 88082484, the wording in Applicant’s mark is in stylized form
and the mark includes design elements of a child reaching for an apple in a frame
and color claims.
In comparing the two word marks, Applicant argues that the additional words
“BEYOND” and “LITERACY” in the respective marks “evoke completely different
meanings and commercial impressions.” App. Brief, 4 TTABVUE 9. Based on
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dictionary definitions,10 Applicant argues that its mark “evokes a meaning and
commercial impression of a characteristic or feature of the associated educational
services that surpasses or lies outside the scope of the basics or ordinary course of
education (i.e. building blocks), and, therefore, has a higher and more experienced
level of education training.” Id. at 10. By contrast, Registrant’s mark “evokes a
meaning and commercial impression of the educational services being specifically
directed towards the basics (i.e., building blocks) of literacy/reading and writing.”
The Examining Attorney asserts that “BUILDING BLOCKS” conveys the same
commercial impression in both marks and the additional wording in each mark is
insufficient to distinguish them. The Examining Attorney argues that the additional
wording in each mark merely draws attention to the shared wording “BUILDING
BLOCKS,” that Applicant’s mark states something that is beyond “BUILDING
BLOCKS” while Registrant’s mark states the “BUILDING BLOCKS” are for literacy.
The Examining Attorney rests the determination that the marks are similar by
finding that “BUILDING BLOCKS” is the “central focus” of both marks and “the
overall commercial impression of the marks is similar because the specific
components of the marks that carry more weight when determining their commercial
impressions are confusingly similar, namely, ‘BUILDING BLOCKS’.” Ex. Att. Brief,

10 Beyond: (preposition) 2b. in a degree or amount surpassing (noun) 2. something that lies
outside the scope of ordinary experience. Literacy: (noun) the quality or state of being literate.
MERRIAM-WEBSTER (https://www.merriam-webster.com) June 4, 2019 Response pp. 9-16.
We take judicial notice of the following dictionary definitions for “BUILDING BLOCKS”
attached to Applicant’s brief: a unit of construction or composition (MERRIAM-WEBSTER
(https://www.merriam-webster.com)); some basic things that are put together to make
something exist (CAMBRIDGE DICTIONARY (https://dictionary.cambridge.org)). App. Brief, 4
TTABVUE 33-36.
Serial Nos. 88082466, 88082484
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6 TTABVUE 6. In addition, the Examining Attorney points out that Registrant’s
mark begins with “BUILDING BLOCKS” and ends with the descriptive disclaimed
word “LITERACY” making the shared phrase “BUILDING BLOCKS” the dominant
element in Registrant’s mark.
Here, where the services are admittedly virtually identical, the degree of
similarity between the marks necessary to support a determination that confusion is
likely declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d
1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 101 USPQ2d at
1908; In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). We
acknowledge the phrase “BUILDING BLOCKS” is suggestive of these services in the
sense that it suggests a learning process; however, the connotation and commercial
impression of “BUILDING BLOCKS” in each mark is identical. The additional
wording in the respective marks simply provides more information to the consumer
about the services. Registrant’s mark is directed to a specific learning purpose,
literacy, and Applicant’s mark gets the consumer to the next level or beyond the
building blocks. Overall we find the word marks in their entireties to be similar, in
particular because the services are so closely related.
Turning to Applicant’s word and design mark, we find that the phrase “BEYOND
THE BUILDING BLOCKS” is the dominant element. In re Viterra Inc., 101 USPQ2d
at 1911 (the verbal portion of a word and design mark likely will be the dominant
portion, given that the literal component of brand names likely will appear alone
Serial Nos. 88082466, 88082484
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when used in text and will be spoken when requested by consumers); In re Max
Capital Grp., 93 USPQ2d at 1247. In addition, the design elements in Applicant’s
mark, a child picking an apple framed by a background rectangle, underscores the
connotation and commercial impression of early child care and educational services
In re Aquitaine Wine USA, 126 USPQ2d 1181, 1187 (TTAB 2018) (“[W]here . . . we
are comparing a mark in standard characters to a mark that includes a pictorial
representation of that term, the fact that the word + design mark includes such a
pictorial representation will be taken into account to determine likelihood of
confusion in terms of the marks’ overall connotation and commercial impression.”);
In re Max Capital Grp., 93 USPQ2d at 1248 (holding applicant’s mark, MAX with
pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the
“addition of a column design to the cited mark . . . is not sufficient to convey that [the]
marks . . . identify different sources for legally identical insurance services”). Finally,
Registrant’s mark is in typed form and is not limited to any particular depiction. The
rights associated with a mark in standard characters reside in the wording and not
in any particular display. In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP § 1207.01(c)(iii)
(Oct. 2018). We must consider Applicant’s mark “regardless of font style, size, or
color,” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011), including iterations that present Registrant’s mark in
Serial Nos. 88082466, 88082484
- 18 -
similar stylization to the word portion in Applicant’s mark. See In re Aquitaine Wine
USA, LLC, 126 USPQ2d at 1186.11
In view of the above, the similarity of the marks weighs in favor of likely confusion.
II. Conclusion
In view of the closely related services and overlap in trade channels and classes of
consumers, and the similarity in the marks, despite some weakness of the common
element and some consumer care in the purchasing process, confusion is likely
between Applicant’s marks BEYOND THE BUILDING BLOCKS and ,
and Registrant’s mark BUILDING BLOCKS FOR LITERACY.
Decision: The refusal to register Applicant’s mark is affirmed.

11 In this regard, the Examining Attorney’s argument that “the registrant’s mark can appear
in any stylization alongside any design element, including the stylization and design element
of the applicant’s mark” extends the reach of standard character marks a little too far. Ex.
Att. Brief, 6 TTABVUE 10 (emphasis added). As the Board explained in In re Aquitaine, 126
USPQ2d at 1186, “when we are comparing a standard character mark to a word + design
mark for Section 2(d) purposes, we will consider variations of the depictions of the standard
character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers,
or any combination thereof.’ … We hasten to add … the fact that the word + design mark
includes such a pictorial representation will be taken into account to determine likelihood of
confusion in terms of the marks’ overall connotation and commercial impression.”