philosophy, inc.v.Kristi M. Wilson

Trademark Trial and Appeal Board

Mar 7, 2012

No. 91189376 (T.T.A.B. Mar. 7, 2012)

Mailed: March 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

philosophy, inc.

v.

Kristi M. Wilson
_____

Opposition No. 91189376
_____

David G. Barker of Snell & Wilmer, L.L.P. for philosophy,
inc.

Kristi M. Wilson, pro se.
______

Before Cataldo, Bergsman and Kuczma, Administrative
Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

philosophy, inc. (“opposer”) filed a notice of
opposition against trademark application Serial No. 77421238
for the following word and design mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91189376
2
filed by Kristi M. Wilson (“applicant”), as an intent to use
application under § 1(b) of the Trademark Act for:

A series of books, written articles, handouts and
worksheets in the field of philosophy for babies;
Baby books in Class 16;

and

Baby bodysuits; Baby tops in Class 25.1

Opposer timely submitted the evidence discussed below
and its trial brief. Within the time period for applicant
to submit her trial brief, applicant filed an untitled two-
page document designated on the ESTTA coversheet as an
“Answer.” In an order dated July 22, 2011, the Board
construed applicant’s “Answer” as her trial brief.2
Accordingly, further references to this document will be to
applicant’s “trial brief.” No further briefs were filed by
either party.

1 Filed on March 13, 2008; “PHILOSOPHY FOR BABIES” disclaimed;
the colors white, red, and black are claimed as a feature of the
mark and the mark is described as: The mark consists of a red
border, white background, large central red star with the image
of a baby in the center in shades of red. In black letters in the
upper left hand corner on the red border, are the letters "P4B."
In the lower right corner on the red border are the words
"Philosophy 4 Babies" in black.

2 The order also noted that no evidence accompanied the trial
brief although the document submitted contained a reference to
“Exhibit A.”

Opposition No. 91189376
3
A. Pleadings
As grounds for opposition, opposer alleges priority of
use and likelihood of confusion based on the following
marks:
1) the registered PHILOSOPHY word marks set forth in
the chart below (“PHILOSOPHY Mark(s)”):3
2016208 PHILOSOPHY Class 3
cosmetics, namely lipsticks,
lip gloss, lip liner, lip
pencil, eye pencil, mascara,
eye liner, eye shadow, face
powder, foundation, and
blush; for fragrances,
namely perfume, toilet
water and cologne; for
facial and body skin care
products, namely
exfoliation scrubs, washes,
cleansers, lotions, and
creams; for sun care
products, namely
suntanning creams, lotions,
oils and gels, after sun
creams and lotions,
sunblock preparations, and
sunscreens; for hair care
products, namely shampoo,
conditioner, and hairspray;
for massage lotions and
oils; for foot care products,
namely creams and lotions;
for non-medicated skin
lightening preparations
Renewed;
Filed: 10/24/1994
Issued: 11/12/1996
2214968 PHILOSOPHY Class 18
travelling bags
Renewed;
Filed: 4/2/1996
Issued: 12/29/1998
2269341 PHILOSOPHY Class 41
educational seminars and
Renewed;
Filed: 4/2/1996

3 Notice of Opposition ¶¶ 11 and 21; opposer’s trial brief pp.
28, 30.
Opposition No. 91189376
4
workshops in the field of
cosmetics and skin care;
entertainment in the nature
of award ceremonies
Issued: 8/10/1999
2388010 PHILOSOPHY Class 42
retail store services
featuring a full line of
cosmetics, hair care
products, bath products,
skin care products,
fragrances
Renewed;
Filed: 9/25/1995
Issued: 9/19/2000
3406516 PHILOSOPHY Class 14
jewelry
Registered;
Filed: 5/24/2004
Issued: 4/1/2008
3412632 PHILOSOPHY Class 16
greeting cards

Class 41
publishing services namely
books, short stories,
pamphlets, newsletters
Registered;
Filed: 4/5/2004
Issued: 4/15/2008
3440195 PHILOSOPHY Class 21
cosmetic brushes
Registered;
Filed: 10/2/2007
Issued: 6/3/2008
3514047 PHILOSOPHY Class 4
candles

Class 5
acne treatment
preparations; air freshener;
medicated skin lotions

Class 18
beach bags; all purpose
bags, namely, all purpose
sport bags; book bags
Registered;
Filed: 5/24/2004
Issued: 10/7/2008
3558970 PHILOSOPHY Class 20
mirrors
Registered;
Filed: 11/3/2004
Issued: 1/6/2009
3617509 PHILOSOPHY Class 21
sponges for applying body
powder; beverage
glassware
Registered;
Filed: 11/15/2004
Issued: 5/5/2009
3633115 PHILOSOPHY Class 28
christmas tree decorations
and ornaments
Registered;
Filed: 11/22/2004
Issued: 6/2/2009
Opposition No. 91189376
5
2) the registered BABY GIRL, BABY GRACE, MIRACLE BABY
and PHILOSOPHY BABYCAKES marks set forth in the
chart below (collectively “BABY Marks”) allegedly
used in connection with opposer’s PHILOSOPHY
Marks:4
2800616 BABY GIRL Class 3
cosmetics, namely, lip
balm; fragrances, namely,
perfume; non-medicated
skin care products, namely,
soap, scrubs, and
exfoliators; face and body
lotion and cream
8&15;
Filed: 11/17/1999
Issued: 12/30/2003
2815754 BABY GRACE

“baby”
disclaimed5
Class 3
fragrances, namely,
perfume; face and body
lotion; and scented head-to-
toe body wash
8&15;
Filed: 5/21/2002
Issued: 2/17/2004
3109906 MIRACLE
BABY
Class 3
cosmetics, namely, lip
balm, non-medicated skin
care products, namely,
scrubs, exfoliators, face and
body cream
Registered;
Filed: 6/25/2002
Issued: 6/27/2006

3667863
(SN 78/683539)
PHILOSOPHY
BABYCAKES
Class 3
Skin care kits and gift sets
containing 3-in-1 shampoo,
shower gel and bubble bath
Registered;
Filed: 8/2/2005
Issued: 8/11/2009

3) common law rights in the “trademark significance”
resulting from opposer’s use of images of babies
and children, as well as its BABY Marks, in

4 Notice of Opposition ¶ 11; opposer’s trial brief p. 30.

5 The word “baby” was disclaimed in response to the examiner’s
request for a disclaimer based on the “non-medicated baby care
products” identified in the application as filed. These products
Opposition No. 91189376
6
connection with opposer’s PHILOSOPHY Marks,
allegedly resulting in opposer’s PHILOSOPHY Marks
and baby/child images acquiring trademark
significance as an indicator of source of
opposer’s products (“Baby Image Mark”).6
Applicant, who appears pro se in this matter, admitted
most of the factual allegations in the notice of opposition,
but denied the salient allegations regarding relatedness of
the parties’ products, trade channels and consumers;
likelihood of confusion; and injury to opposer.7
B. Opposer’s Motion to Strike and Applicant’s Admissions
In response to applicant’s trial brief, opposer filed a
motion to strike the brief in its entirety, making an
alternative request that the Board “strike or disregard any
statements . . . not supported by evidence properly made of
record or that contradicts applicant’s previous
admissions.”8 In its July 22, 2011 order, and pursuant to
TBMP § 571 (3rd ed. 2011), the Board denied the motion to
strike applicant’s trial brief indicating that opposer’s

were deleted from the application when the statement of use was
filed.
6 Notice of Opposition ¶¶ 11 and 21; opposer’s trial brief p. 13.

7 “Amendment to Answer” filed May 5, 2009.

8 Opposer’s January 26, 2011, “Motion to Strike Applicant’s
Letter Dated December 31, 2010,” p. 8.

Opposition No. 91189376
7
objections would be considered at final hearing. We now
consider opposer’s objections to applicant’s trial brief.
Opposer urges the Board to strike or disregard
statements made by applicant in her trial brief. Opposer’s
position is based on the following: applicant submitted no
testimony or evidence; applicant’s admissions9 contradict
statements in her brief and such statements are not based on
facts in the record; and, anything submitted by applicant in
connection with opposer’s summary judgment motion is not
part of the record. For the following reasons, opposer’s
motion is granted in part.
Factual statements made in a party’s brief can be given
no consideration unless they are supported by competent
evidence. TBMP § 704.06(b). Unfortunately, opposer’s
motion does not identify the objectionable statements,
leaving the Board with this task. Reviewing applicant’s
brief, we find that it references some facts and arguments
for which there is support in the record.
Even though applicant has submitted no evidence, some
of the statements in her brief find support in her
application which forms part of the record without any
action by the parties and, reference may be made thereto for
any relevant and competent purpose. 37 C.F.R. § 2.122(b),

9 As discussed infra, opposer’s requests to admit are deemed
admitted due to applicant’s failure to respond to the requests.

Opposition No. 91189376
8
TBMP § 704.04. For example, applicant’s application covers
“a series of books, written articles, handouts and
worksheets in the field of philosophy for babies; Baby
books.” (emphasis added). Therefore, the record supports
her statement that “our product is quite literally, a book
of philosophy.” Similarly, her contention that:
“[T]he word ‘philosophy’ is thus, an important
descriptor of our book and the relevance of our
trademark is that it provides our customers with an
accurate description of our product.”

is also supported by the record, namely, the disclaimer of
the term “PHILOSOPHY FOR BABIES.” Applicant amended her
application to include a disclaimer of this phrase in
response to a requirement by the examining attorney. Under
these circumstances, the disclaimer may be considered an
admission by applicant that the phrase “PHILOSOPHY FOR
BABIES” is merely descriptive. See Bass Pro Trademarks LLC
v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1851 (TTAB
2008); American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793,
798 (TTAB 1986) (statements in application may be considered
as evidence). Accordingly, applicant can rely on this
evidence to support the descriptiveness of the phrase
“PHILOSOPHY FOR BABIES.”
On the other hand, there is no support in the record
for applicant’s arguments that:
“One can only conclude that they simply want to stamp
out or colonize . . . anyone who wants to use the term
‘philosophy’ – one of the most widely used words to
Opposition No. 91189376
9
describe the transmission of knowledge from ancient
times to the present.”

. . .
“With respect to the most recent communication from the
Snell & Wilmer law firm claiming we somehow admit to
Trademark infringement, we absolutely deny these
charges.”

and accordingly, these arguments will not be considered.
Additionally, opposer objects to “Exhibit A” referred
to in applicant’s trial brief. Even if Exhibit A
accompanied the trial brief when filed, it would not be
considered because it was not properly made of record during
the time for taking testimony. TBMP § 704.05(b).
Opposer also objects to the statements in applicant’s
brief denying a likelihood of confusion because they
contradict applicant’s admission to opposer’s requests to
admit that in her opinion, a likelihood of confusion in fact
exists.
The scope and nature of requests for admission in
proceedings before the Board are governed by Fed. R. Civ. P.
36. TBMP § 407.02. Under Rule 36, a requested admission is
deemed admitted unless a written answer or objection is
provided to the requesting party within thirty days after
service of the request. See Giersch v. Scripps Networks
Inc., 85 USPQ2d 1306, 1307 (TTAB 2007); TBMP § 407.03(a).
Copies of Opposer’s First and Second Sets of Requests for
Admission to Applicant bearing certificates of service on
Opposition No. 91189376
10
applicant were properly introduced into evidence via a
timely filed notice of reliance pursuant to Rule
2.120(j)(3)(i), 37 C.F.R. § 2.120(j)(3)(i).10
Admissions that are not withdrawn or amended generally
cannot be rebutted by contrary testimony at trial. American
Automobile Ass’n, v. AAA Legal Clinic of Jefferson Crooke,
930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991), TBMP §
407.04 (any matter admitted, either expressly or for failure
to timely respond, is conclusively established unless Board
permits otherwise). Applicant has not sought permission to
amend or withdraw her admissions, so they stand admitted
except for those that were in response to “defective”
requests for admission.
Rule 36(a) provides that requests for admission may be
directed to “facts, the application of law to fact, or
opinions about either.” Several of opposer’s requests for
admission, namely, Request Nos. 16, 17, 20-22, 32-35
encompass conclusions of law relating to likelihood of
confusion. Therefore, such Requests are “defective” and
applicant’s lack of response to those Requests does not

10 Opposer’s evidence includes a copy of the Declaration of Albert
L. Underhill Under 37 C.F.R. § 2.20 in support of Opposer’s
Motion for Summary Judgment. See PB 000342-344. Mr. Underhill’s
Declaration, as counsel for opposer, confirms that the First Set
of Requests for Admission mailed to applicant was initially
returned and re-served on applicant by mailing a copy to the
address confirmed by applicant in her email dated September 1,
2009. Opposer’s Second Set of Requests for Admission to
Applicant were served to the address provided by applicant on
September 1, 2009.
Opposition No. 91189376
11
constitute an admission of confusion. See Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ
151, 153-54 (CCPA 1978) (likelihood of confusion is a legal
conclusion, therefore, it cannot be an “admission,” only
facts may be admitted; under no circumstances may a party’s
opinion . . . relieve the decision maker of the burden of
reaching [its] own ultimate conclusion on the entire
record).
Applicant admitted several allegations set forth in the
notice of opposition which can be received as evidence as an
admission against interest. See TBMP § 704.06(a), Kellogg
Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1548 n. 6
(TTAB 1990) (pleadings have evidentiary value only to the
extent they contain opponent’s admissions against interest),
aff’d on other grounds, 951 F.2d 330, 21 USPQ2d 1142 (Fed.
Cir. 1991). Notably, in her Amendment to Answer, applicant
specifically denied the allegations relating to likelihood
of confusion. Because applicant denied the likelihood of
confusion allegations in the notice of opposition, and
because her failure to respond to the requests for admission
regarding likelihood of confusion are not deemed legal
admissions, applicant’s arguments denying likelihood of
confusion survive opposer’s motion to strike.
In view of the foregoing, consideration of applicant’s
brief will be limited to applicant’s use of the descriptive
Opposition No. 91189376
12
term “philosophy for (4) babies” in her mark and her denial
of any likelihood of confusion based on the incorporation of
this term in her mark.
C. Background
Opposer sells cosmetics and personal care products and
began using the “philosophy” name, in lower case letters, in
connection with such products when it was founded in 1996.
Opposer uses “childhood” imagery, i.e., images of children
of various ages in some of its marketing and product
packaging. For example, images of children have been
featured on its catalogs, product packaging, letterhead,
lobby and on employee business cards. Its products also
feature a legend that is comprised of the word “philosophy”
followed by a colon and an inspirational phrase, which
opposer refers to as a “philosophy.” In addition to the
“philosophy” house mark, many of its products also bear
additional trademarks that are separate from its
“philosophy” mark.
D. Preliminary Issues
1. Family of Marks
In its trial brief, opposer raises for the first time
the claim that there is a likelihood of confusion between
opposer’s PHILOSOPHY “family of marks” and applicant’s
Opposition No. 91189376
13
mark.11 Inasmuch as a family of marks was neither pleaded
in the notice of opposition nor tried by the parties,12 it
has not been considered. See Productos Lacteos Tocumbo S.A.
de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921,
1927 (TTAB 2011) and cases cited therein.
Even if opposer pleaded a family of marks, the
requisite showing of a family of marks has not been made.
The fact that opposer has used and registered several marks
incorporating the word PHILOSOPHY is not in itself
sufficient to establish the existence of a family of marks.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Although
opposer’s registrations for its PHILOSOPHY marks are in the
record, the evidence is insufficient to support a finding
that “the pattern of usage of the common element is
sufficient to be indicative of the origin of the family.”
Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511,
1514 (TTAB) 2009) citing to Black & Decker Corp. v. Emerson
Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) and J & J
Snack Foods, 18 USPQ2d at 1891.

11 Opposer’s trial brief p. 23.

12 For example, “family of marks” is not mentioned in any of
opposer’s requests to admit.

Opposition No. 91189376
14
Therefore, likelihood of confusion will be determined
based on the PHILOSOPHY mark that is the subject of
opposer’s individual registrations.
2. Opposer’s Baby Image Mark
In addition to its PHILOSOPHY Marks and its BABY Marks,
opposer bases this opposition on its alleged rights in the
unregistered “Baby Image Mark.” Opposer contends that its
“substantial use of images of babies and children, as well
as its ‘baby’ Marks . . . in connection with [its
PHILOSOPHY] Mark, has resulted in opposer’s [PHILOSOPHY]
Mark and baby/child images acquiring trademark significance
as an indicator of the source of Opposer’s products.”
Opposer refers to this “acquired trademark significance” as
its “Baby Image Mark.”13
Opposer’s testimony and evidence show that it has used
numerous different photographic images in its catalogs,
product pamphlets, and product packaging.14 Consequently,
opposer has not precisely defined its Baby Image Mark.
Instead, opposer recites a broad definition of its purported
mark that extends to unspecified “images of babies and
children” used in an undefined relationship with its
PHILOSOPHY Mark.

13 Opposer’s trial brief pp. 13, 25-26, 28.

14 Nevin Dep. pp. 10, 13-14, 28, 32-34, 37, 39-41, 43-45, 56-58,
62-73; Trial Exhibits 23 and 24.

Opposition No. 91189376
15
Given the nature and breadth of opposer’s purported
Baby Image Mark, it is more appropriately characterized as a
trade dress as the term “trade dress” has been used to refer
to the total image and overall appearance of a product or
service. See In re Hudson News Co., 39 USPQ2d 1915, 1918
(TTAB 1996) citing to Two Pesos, Inc. v. Taco Cabana, 505
U.S. 763, 23 USPQ2d 1081, 1082 n.1 (1992) citing Restatement
(Third) of Unfair Competition Section 16, Comment a (Tent.
Draft No. 2 (1990)).
A threshold issue is whether an unregistered trade
dress such as opposer’s Baby Image Mark, can serve as the
basis for an opposition under § 2(d) of the Trademark Act.
The Board has previously recognized that an unregistered
designation that may not have been used as a trademark, but
rather as a designation involving the addition of a
descriptive numeral to an acknowledged mark, reveals usage
of the designation as a trade appellation or identifier
(i.e., usage in the nature of a trademark) which constitutes
an established ground for opposition under § 13 of the
Trademark Act. See Color Key Corporation v. Color 1
Associates, Inc., 219 USPQ 936, 939-40 (TTAB 1983).
The pertinent language in § 2(d) provides that an
opposition may be based on a “mark registered in the Patent
and Trademark Office, or a mark or trade name previously
used in the United States. . .” 15 U.S.C. § 1052(d). To
Opposition No. 91189376
16
determine whether opposer’s Baby Image Mark trade dress
constitutes a “mark previously used” as set forth in § 2(d),
we turn to the definition of “trademark” in § 45 of the
Trademark Act which states:
The term “trademark” includes any word, name, symbol,
or device, or any combination thereof-
(1)used by a person, or
. . .
to identify and distinguish his or her goods, including
a unique product, from those manufactured or sold by
others and to indicate the source of the goods, even if
that source is unknown. (emphasis added).

15 U.S.C. § 1127.
While the term “trade dress” is not mentioned in §§ 2 or 45
of the Trademark Act, for purposes of the definition of a
mark registrable under § 2, trade dress constitutes a
“symbol” or “device.” Wal-Mart Stores Inc. v. Samara
Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1067 (2000)
citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,
34 USPQ2d 1161, 1162 (1995) (“Since human beings might use
as a ‘symbol’ or ‘device’ almost anything at all that is
capable of carrying meaning, this language, read literally,
is not restrictive.”).15
In Two Pesos, the Supreme Court acknowledged that
trademark and trade dress essentially serve the same

15 This reading of § 2 of the Trademark Act is buttressed by the
1999 amendment to § 43(a) of the Act, 15 U.S.C. 1125(a) (3),
which specifically refers to “civil action[s] for trade dress
infringement under this chapter for trade dress not registered on
the principal register.” Wal-Mart, 54 USPQ2d at 1067.

Opposition No. 91189376
17
purpose, noting “[t]here is no persuasive reason to apply
different analysis to the two.” Two Pesos, 23 USPQ2d at
1085. “[T]he Court interprets this section [§ 43(a)] as
having created a federal cause of action for infringement of
unregistered trademark or trade dress and concludes that
such a mark or trade dress should receive essentially the
protection as those that are registered.” Rosco Inc. v.
Mirror Lite Co., 304 F.3d 1373, 64 USPQ2d 1676, 1682-83,
(Fed. Cir. 2002) citing Two Pesos, 23 USPQ2d at 1087
(Stevens, J., concurring). Because trade dress rights
fulfill the same purpose and are entitled to similar
protections afforded to trademarks under the trademark law,
we hold that an unregistered trade dress can serve as the
basis for an opposition under § 2(d) of the Trademark Act.16
We now consider whether opposer’s Baby Image Mark
constitutes a protectable trade dress. “The design or
packaging of a product may acquire a distinctiveness which
serves to identify the product with its manufacturer or
source; and a design or package which acquires this
secondary meaning . . . is a trade dress which may not be

16 This is a different scenario from Board proceedings where a
defendant’s trade dress which is not part of the mark sought to
be registered but is used in connection with the trademark, is
challenged on the ground of likelihood of confusion. Under those
circumstances, the issues relate to unfair competition which is
beyond the Board’s jurisdiction and for courts to address.
Stouffer Corporation v. Health Valley Natural Foods Inc., 1
USPQ2d 1900, 1905 (TTAB 1986).

Opposition No. 91189376
18
used in a manner likely to cause confusion. . .” TrafFix
Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58
USPQ2d 1001, 1004 (2001). While trade dress for product
packaging may be inherently distinctive, Wal-Mart, 54 USPQ2d
at 1068-69, opposer acknowledges that its Baby Image Mark
trade dress is not inherently distinctive by asserting that
its trade dress has “acquired trademark significance.”17
Opposer bears the burden of proving secondary meaning,
i.e., “acquired trademark significance,” by a preponderance
of the evidence. Tone Brothers Inc. v. Sysco Corp., 28 F.3d
1192, 31 USPQ2d 1321, 1327 (Fed. Cir. 1994) citing to Yamaha
Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1006 (Fed. Cir. 1988). Opposer must establish
secondary meaning in its trade dress as of applicant’s March
13, 2008, filing date. Cf. Herbko Int’l Inc. v. Kappa Books
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378-79 (Fed. Cir.
2002) and Otto Roth & Co., Inc. v. Universal Foods Corp.,
640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981) (a party opposing
registration of a trademark due to a likelihood of confusion
with his own unregistered term cannot prevail unless he
shows that his term is distinctive of his goods, whether
inherently or through the acquisition of secondary meaning
or through “whatever other type of use may have developed a
trade identity.”).

17 Opposer’s trial brief pp. 13, 26.
Opposition No. 91189376
19
Opposer may prove acquired distinctiveness in its Baby
Image Mark trade dress by direct evidence such as actual
testimony, declarations or surveys of consumers as to their
state of mind; and/or circumstantial evidence comprising
evidence from which consumer association might be inferred,
such as years of use, extensive sales and advertising, and
any similar evidence showing wide exposure of the mark to
consumers. In re Brouwerij Bosteels, 96 USPQ2d 1414, 1424
(TTAB 2010).
Opposer has not offered any direct evidence of acquired
distinctiveness. Its circumstantial evidence shows opposer
has used numerous photographic images of babies and children
on its product catalogs since 1996; on product packaging
from “about” 1998, and on business cards since 2000.18 The
evidence also shows that in addition to photographic images
of babies/children, opposer’s catalogs, product packaging
and promotional materials have included photographic images
of adults with a baby/child as well as photographic images
of young adults/adults alone, i.e., with no baby or child
shown in the image.19 The evidence also reflects that many
of opposer’s products are sold in containers with no

18 Nevin Dep. pp. 33-34, 41; Trial Exhibit 23 PB000397-426 and
Trial Exhibit 24 PB000494.

19 See, e.g., Opposer’s brand launch catalog, Trial Exhibit 23
PB000397-426; Trial Exhibit 24 PB000503, PB000520, PB000542.

Opposition No. 91189376
20
photographic images.20 Moreover, while some packaging bears
the PHILISOPHY trademark above the photographic image, other
packaging shows use of the word “philosophy” sometimes with
a registration symbol, followed by a colon and a saying,
located underneath the featured image (referred to by
opposer as its “philosophy dot dot” legend). An example of
the “philosophy dot dot” legend utilized by opposer is shown
below:21

Opposer’s use of numerous photographic images in
various manners in conjunction with the PHILOSOPHY mark,
necessitates its broad definition of the Baby Image Mark.

20 See, e.g., Trial Exhibit 23 PB000444-446, 447-459; Trial
Exhibit 24 PB000492, PB000512, and PB000520.

21 Trial Exhibit 24 PB000508.
Opposition No. 91189376
21
By attempting to cover any possible image of babies or
children that may be used with the word “philosophy” in the
definition of its trade dress, opposer fails to articulate a
distinct trade dress. When faced with an analogous claim of
trademark rights in all likenesses and images of a
particular individual, the Second Circuit observed:
[D]ifferent photographs of the same person may be
markedly dissimilar. Thus, a photograph of a human
being, unlike a portrait of a fanciful cartoon
character, is not inherently “distinctive” in the
trademark sense of tending to indicate origin . . .
Under some circumstances, a photograph of a person may
be a valid trademark - if, for example, a particular
photograph was consistently used on specific goods.
[Plaintiff], however, asserts rights in every
photograph of [Babe] Ruth. This sweeping contention
resembles that rejected in Estate of Presley v. Russen,
513 F. Supp. 1339, [211 USPQ 415], (D.N.J. 1981). The
estate of the entertainer Elvis Presley argued that his
“image and likeness” was a valid mark. The District of
New Jersey rejected the claim as too broad . . .
However, the court went on to note that a particular
image of Presley could be a valid mark . . .”

Pirone v. MacMillan Inc., 894 F.2d 579, 13 USPQ2d 1799, 1801
(2d Cir 1990). For these same reasons, the Board refused
registration of a subsequent application seeking to register
“the likeness and image of Elvis Presley” as a trademark
covering all possible manners of presentation without
limitation. See In re Elvis Presley Enterprises Inc., 50
USPQ2d 1632, 1634 (TTAB 1999).
The vagueness of the alleged trade dress together with
the absence of evidence concerning the amount of sales or
advertising for product promotion or packaging featuring the
Opposition No. 91189376
22
alleged trade dress, or any other evidence from which
consumer association might be inferred, compels the finding
that opposer has not met its burden of proving secondary
meaning in the Baby Image Mark trade dress. We therefore
find that although opposer has used baby and child images in
connection with the packaging of its products, the evidence
is insufficient to show whether consumers recognize and
associate the Baby Image Mark trade dress with opposer or
that any such association was created prior to the March 13,
2008 filing date of applicant’s application.
For the reasons set forth above, opposer’s Baby Image
Mark trade dress does not support a basis for opposition.
However, opposer has demonstrated its use of a baby/child
themed trade dress in connection with the promotion of its
products and product packaging prior to applicant’s filing
date. This themed trade dress can be taken into account in
assessing the commercial impressions of applicant’s mark and
opposer’s PHILOSOPHY and BABY Marks in connection with our
likelihood of confusion analysis below. See Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281, 1284 (Fed. Cir. 1984); Anderson, Clayton
& Co. v. Christie Food Products Inc., 4 USPQ2d 1555, 1557
(TTAB 1987); Po Folks, Inc. v. Kountry Folks Restaurants,
Inc., 231 USPQ 313, 315 (TTAB 1986).
Opposition No. 91189376
23
We now address two images noted by opposer that fall
under the description of its Baby Image Mark:
2.(a) “girl peeking” Star Hang Tag
Opposer argues that applicant’s mark is confusingly
similar to opposer’s “girl peeking” Star hang tag22 which
consists of the word “philosophy” in proximity to a child
image inside the outline of a five pointed star. Below are
images from opposer’s brief which show (from left to right),
opposer’s star hang tag containing the “girl peeking image,”
and applicant’s mark:23

Opposer used the Star hang tag as a “quasi gift card
[that we] attached to products [that we] sent to editors and
friends at holiday time.” In addition to the graphics shown

22 Opposer’s trial brief pp. 30-31.

23 Opposer’s trial brief p. 31.
Opposition No. 91189376
24
above, the tag contained a “little poem” and the language
“happy holidays, your friends at philosophy” shown below:24

As evidenced by its ornamental nature and social
content, the Star hang tag did not function as a trademark
for opposer’s products, rather it was a greeting card that
accompanied gifts opposer sent to its business contacts.
The five-pointed star outline shown on the hang tag is
directly attributable to its purpose as a holiday greeting
card, and there is no evidence that it has been used by
opposer in any other manner (e.g., on product packaging or
on a hang tag affixed to a product). To the extent that
applicant’s mark might give rise to an unfair competition
claim based on opposer’s marks and baby/child theme, that is
beyond the Board’s jurisdiction to determine. See Amsted

24 Nevin Dep. p. 30; Trial Exhibit 24 PB000532.
Opposition No. 91189376
25
Industries Inc. v. West Coast Wire Rope & Rigging Inc., 2
USPQ2d 1755, 1761 (TTAB 1987) and Po Folks, 231 USPQ at 315.
2. (b) “girl with pail” trade dress
Opposer has used a photographic image of a “girl with
pail” on its product catalogs since 2000, and on product
packaging, on letterhead and fax transmittals and on its
website.25 Opposer’s witness testified that her “guess
would be somewhere between 20-- to 50,000” copies of its
catalog featuring the “girl with pail” trade dress are
distributed annually.26 To the extent that opposer has
proved that it used its PHILOSOPHY trademark in connection
with its “girl with pail” trade dress on product catalogs
and packaging, we will consider this to be a trademark (or a
trade dress that is tantamount to a trademark) for purposes
of this proceeding.27 Accordingly, the “girl with a pail”
trade dress shown below will be considered as a basis for
opposition.28

25 Nevin Dep. pp. 13-14; 44; 69.

26 Nevin Dep. p. 44.

27 Nevin Dep. p. 10 (“philosophy” trademark appears on all
products); p. 44 (“philosophy” is at the top [of the catalog
cover]).

28 This image of the “girl with pail” trade dress is a
representative example.

Opposition No. 91189376
26

3. Books and Written Materials
Opposer contends that it has used its PHILOSOPHY and
its Baby Image Marks on books and written materials prior to
the filing date of applicant’s application. In support of
this priority claim, opposer submits several printed product
catalogs, pamphlets, price list, business cards and
promotional materials distributed by opposer beginning in
1996, as well as two “books” published by one of opposer’s
founders.29
We have reviewed opposer’s testimony and documentary
evidence and find that it does not establish opposer’s

29 Opposer’s trial brief pp. 16-17, 20-21.

Opposition No. 91189376
27
trademark use of either its PHILOSOPHY mark or its Baby
Image Mark trade dress for books and written materials. In
addition to lacking dates of distribution, the materials
noted by opposer do not show trademark use.
Before trademark rights can be established, the subject
matter to which the term is applied must be “goods in
trade.” Incidental items that a party uses in conducting
its business, as opposed to items sold or transported in
commerce for use by others, are not “goods in trade.” See
In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722,
723 (CCPA 1974); In re Ameritox Ltd., 101 USPQ2d 1081, 1084
(TTAB 2011) (printed lab reports are not goods in trade sold
separately from drug testing services); In re Douglas
Aircraft Co., Inc., 123 USPQ 271, 272 (TTAB 1959) (books,
pamphlets, and brochures that serve only to explain and
advertise the goods in which applicant deals are not
“goods”); TMEP § 1202.06 (8th ed. 2011). Opposer’s use of
the term PHILOSOPHY and/or its Baby Image Mark trade dress
on its catalogs and product literature may suffice to
establish trademark use for the products featured in such
materials.30 However, they do not function as trademarks
for written materials simply because they appear on
opposer’s promotional product literature.

30 See Trademark Manual of Examining Procedure § 904.03(h).

Opposition No. 91189376
28
Similarly, the two “books” published by Cristina
Carlino, a co-founder of opposer, do not evidence a
trademark use of opposer’s marks for books.31 As admitted
by Christine Nevin, “vice president of package & product
innovation” for opposer, “the great mystery,”32 is not a
book, but actually, a 3-page “invitation” for the PHILOSOPHY
brand launch in 1996,33 which refers to PHILOSOPHY on the
third page in the following excerpted manner:
“introducing
philosophy™
a new age of beauty
noon luncheon
February 2, 1996
The rainbow room
30 rockefeller plaza
r.s.v.p. (212) 794-6100”
The informational manner in which the PHILOSOPHY name is
utilized in the invitation, without association to any
products, does not constitute a trademark use of the mark.
Opposer relies on a second book entitled “the rainbow
connection,” to support its trademark use of PHILOSOPHY and

31 See opposer’s Trial Exhibit 23, PB000471-474 entitled: “the
great mystery;” and opposer’s Trial Exhibit 24, PB000582
entitled: “the rainbow connection.”

32 Opposer’s Trial Exhibit 23 PB000471-474.

33 Nevin Dep. p. 25.
Opposition No. 91189376
29
the Baby Image Mark trade dress for books.34 Underneath the
title of the book, the cover displays the “girl with pail”
image above the “philosophy dot dot” legend, i.e.,
“philosophy” followed by a colon and an inspirational
saying. The name of the author with the phrase “creator of
philosophy®” underneath her name is placed near the bottom
of the cover.
In the absence of any reference to opposer’s products,
neither “philosophy” nor the Baby Image Mark trade dress was
used in a trademark manner to identify the publisher or
source of this book. Moreover, the publication of a single
book cannot create, as a matter of law, an association
between the book’s “title,” in this instance the “girl with
pail” image, and the publisher.35 Herbko Int’l, 64 USPQ2d
at 1378.
The record is noticeably silent as to opposer’s
ownership rights in the book or to any legal connection
between the book and opposer. The only evidence provided by
opposer is the book cover.36 Although opposer and author

34 Opposer’s Trial Exhibit 25, PB000582 (only the book cover was
submitted as evidence); also produced as Exhibit T to Notice of
Reliance.

35 While titles of single works are not registrable, they may be
protected under § 43(a) of the Trademark Act, 15 U.S.C. § 1125(a)
upon a showing of secondary meaning. See Herbko Int’l, 64 USPQ2d
at 1379 n. 2.

36 The purported webpage, PB000516, from amazon.com offering the
book for sale and containing promotional language identifying Ms.
Opposition No. 91189376
30
Cristina Carlino are well aware of their relationship, and
purchasers of the book might be aware of their relationship,
there is no evidence to establish that the public is
actually aware of the relationship Ms. Carlino has with
PHILOSOPHY brand products. Cf. Herman Miller Inc. v.
Palazzetti Imports and Exports Inc., 270 F.3d 298, 60 USPQ2d
1633, 1646 n. 7 (6th Cir. 2001). In an attempt to create a
connection, opposer’s witness favorably responded to a
leading question by opposer’s attorney, that consumers would
likely confuse a book published by a third party with
“philosophy” and a child image on the cover as a book having
opposer as the source.37 In the absence of any other
evidence, this testimony fails to establish the necessary
connection between the book and opposer’s trademark rights.
In view of the foregoing, we find that opposer has not
established prior rights in any trademark for books and/or
written materials.

Carlino as the CEO of opposer is not admissible evidence because
it lacks a foundation (i.e., it bears no date or URL), and
opposer’s witness did not testify as to this information. Cf.
Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010) (document obtained from the internet identifying its date
of publication or printing, and its source (e.g., the URL), may
be admitted into evidence pursuant to a notice of reliance . . .
document obtained from the internet displaying a date and its
source are deemed presumptively true and genuine . . . the date
and source information on the face of internet documents allow
the nonoffering party the opportunity to verify the documents).

37 Nevin Dep. pp. 28-29.

Opposition No. 91189376
31
E. The Record
By rule, the record includes the pleadings and
applicant’s application file. Trademark Rule 2.122(b), 37
CFR § 2.122(b). In addition, opposer introduced the
following evidence and testimony:
1. Notice of reliance on the following items:
a. Photocopies of opposer’s pleaded
registrations together with corresponding
printouts from the TARR electronic database38
showing that the registrations are currently
subsisting and owned by opposer [Exhibits A-G
to opposer’s notice of reliance, docket entry
# 12];
b. Printouts from the TARR electronic database
for opposer’s pleaded applications, showing
that the applications for the marks BABY
SHOWER (Serial No. 77/205988) and BABY
YOURSELF (Serial No. 77/449948) were then
pending and owned by opposer39 and, that the
application for PHILOSOPHY BABYCAKES has
issued as Registration No. 3667863 and is

38 TARR, now known as TSDR, is the USPTO’s electronic database for
document retrieval. TARR printouts showing status and title of
pleaded registrations may be introduced at trial under a notice
of reliance. See 37 C.F.R. § 2.122(d)(1); TBMP 704.03(b)(1)(A).

39 Both application Serial Nos. 77/205988 and 77/449948 have since
been abandoned.
Opposition No. 91189376
32
subsisting and owned by opposer [Exhibits O-Q
to opposer’s notice of reliance, docket entry
# 12].
c. Photocopies of unpleaded Registration Nos.:
3406516, 3412632, 3440195, 3514047, 3558970,
3617509, and 3633115 for the PHILOSOPHY word
mark owned by opposer together with
corresponding printouts from the TARR
electronic database40 showing that they are
currently subsisting and owned by opposer
[Exhibits H-N to opposer’s notice of
reliance, docket entry # 12];
d. Opposer’s First Set of Requests for Admission
to Applicant Nos. 1-23 [Exhibit R to
opposer’s notice of reliance, docket entry
# 12];
e. Opposer’s Second Set of Requests for
Admission to Applicant Nos. 24-37 [Exhibit S
to opposer’s notice of reliance, docket entry
# 12];
f. Cover page of the book entitled the rainbow
connection, ISBN 038549878 by Christina

40 TARR printouts showing status and title of unpleaded
registrations owned by a party may be introduced at trial under a
notice of reliance. TBMP § 704.03(b)(1)(A).
Opposition No. 91189376
33
Carlino [Exhibit T to opposer’s notice of
reliance, docket entry # 12].
2. Testimony deposition of Christine Nevin, Vice
President of Package and Product Innovation for
opposer, with attached exhibits 1-28, taken on
June 18, 2010 [docket entries ## 13-16].
Applicant did not introduce any testimony or evidence.
F. Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
G. Priority and Likelihood of Confusion
To facilitate our review of the issues presented in
this proceeding due to opposer’s reliance on issued
registrations and alleged common law rights in various
marks, we separately address the priority and the likelihood
of confusion analysis with respect to each of the
marks/trade dress which remains as a basis for the
opposition.
Our determination of likelihood of confusion under
§ 2(d) of the Trademark Act for each of the marks/trade
dress discussed below, is based on an analysis of all of the
Opposition No. 91189376
34
probative facts in evidence that are relevant to the factors
bearing on the issue of likelihood of confusion. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). Additional factors such
as the similarity or dissimilarity of trade channels, and
the buyers to whom sales are made, are also pertinent in
this case.
With respect to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression, we note that in a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987).
G-1. PHILOSOPHY Mark
1.(a) Priority
Because opposer’s registrations for its PHILOSOPHY Mark
are of record and there is no counterclaim for cancellation,
Opposition No. 91189376
35
priority under § 2(d) is not an issue as to the goods
covered by those registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Opposer also bases its likelihood of confusion claim on
its alleged common law rights in the PHILOSOPHY mark for
books and written materials.41 As addressed above, opposer
has not established prior common law rights in the
PHILOSOPHY mark for such goods.
Opposer similarly alleges that it has prior common law
rights in the PHILOSOPHY mark for clothing items such as t-
shirts, caps and robes, and bases its claim of likelihood of
confusion in part on such use.42 The testimony and evidence
submitted by opposer does not make a persuasive showing that
it owns trademark rights in the PHILOSOPHY mark for
clothing.
Use of a mark on clothing items in commerce may suffice
as proof of use of the mark as a “secondary source.” See In
re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982)
and TMEP § 1202.03(c). There is limited testimony by Ms.
Nevin that opposer recently started selling short sleeved t-
shirts, and previously distributed hats and robes to its

41 Opposer’s trial brief pp. 16-17.

42 Opposer’s trial brief p. 15.

Opposition No. 91189376
36
employees,43 and no testimony as to any advertising, sales
or revenue for clothing items.
Based on opposer’s limited evidence, opposer has failed
to prove that its distribution of clothing items to its
employees constitutes trademark use. It is opposer’s burden
to demonstrate that it has used its mark in a regular or
recurring manner so that the consuming public would be aware
that opposer offers the goods under the mark and therefore
associate opposer's mark with the goods. Morgan Creek
Productions Inc. v. Foria International Inc., 91 USPQ2d
1134, 1144 (TTAB 2009). The testimony and evidence
submitted by opposer does not meet that burden. There is no
clear evidence that opposer has distributed any clothing
items to the general public, let alone in any numbers to
make an impression, or that clothing bearing its mark has
been distributed on a regular or recurring basis.
Even assuming opposer owns common law rights in the
PHILOSOPHY mark for clothing, opposer has not shown that it
acquired those rights prior to the March 13, 2008, filing
date of applicant’s application.44 The testimony that
opposer “used these t-shirts on air at QVC probably since,
at least, 2000. And then recently did short-sleeved

43 Nevin Dep. pp. 74-76.

44 Opposer’s witness testified that its uses of PHILOSOPHY on
clothing items were prior to “April 2008.” Nevin Dep. p. 76.

Opposition No. 91189376
37
versions of these on philosophy.com for sale[.]” is
ambiguous at best.45 For example, the witness did not
explain what she meant by saying that opposer “used these t-
shirts on air at QVC.” We do not know whether this means
that people simply wore t-shirts bearing the word
“philosophy” on QVC television broadcasts, or that the t-
shirts were actually offered for sale on QVC. Therefore,
opposer has not proved that it has prior common law rights
in the PHILOSOPHY mark for clothing items.
In view of the foregoing, opposer’s prior rights in the
PHILOSOPHY mark are limited to those goods and services set
forth in its registrations of record, none of which include
books, written materials, or clothing items.
1. (b) Similarity or Dissimilarity and Nature
of the Goods at Issue, Likely to
Continue Trade Channels and Classes of
Customers

Relying on its registrations covering various products
and services, opposer challenges registration of applicant’s
mark for the goods in both Classes 16 and 25. For purposes
of this decision, we have considered those goods and
services identified in opposer’s registrations and evidence
which present the strongest case for likelihood of
confusion. We address the similarity of goods for each
Class below.

45 Nevin Dep. p. 74.
Opposition No. 91189376
38
Applicant’s application covers “a series of books,
written articles, handouts and worksheets in the field of
philosophy for babies; Baby books” in Class 16. Because
opposer has not proved prior rights in any of its marks for
books or written materials, we look to its registrations
which include Registration No. 3412632 for its PHILOSOPHY
mark for “greeting cards” in Class 16 and “publishing
services, namely books, short stories, pamphlets,
newsletters” in Class 41. There is no evidence in the
record regarding the relatedness of greeting cards on one
hand, and books and printed materials in the field of
philosophy, or baby books, on the other hand. Therefore,
there is no basis for us to find them to be similar or
related products.
We next consider opposer’s publishing services in Class
41. In analyzing this particular factor in the present
case, it is of significant importance that the issue of
likelihood of confusion must be determined on the basis of
the parties’ goods and services as they are set forth in the
involved registrations and application, rather than in light
of what the goods and services actually are as may be shown
by any extrinsic evidence. See, e.g., Octocom Systems Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
Opposition No. 91189376
39
1813, 1815-16 (Fed. Cir. 1987); and CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). Therefore,
we consider the publishing services as they are described in
opposer’s Registration No. 3412632 without reading any
limitations into those services. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002); Octocom, 16 USPQ2d at 1788.
Because there are no restrictions in this Registration,
we can assume that the Registration covers all types of
books, including baby books and books in the field of
“philosophy for babies.” The issue is not whether consumers
would confuse the goods or services themselves, but rather
whether they would be confused as to the source of the
goods or services. Likelihood of confusion can be found if
the respective products are related in some manner and/or if
the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that they
emanate from the same source. 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007).
There is no evidence in the record regarding the
relatedness of book publishing services and books. However,
the dictionary definition of “publishing” sheds light on
their relatedness: “publishing-the business or profession
of the commercial production and issuance of literature esp.
Opposition No. 91189376
40
in book form for public distribution or sale . . . .” 46
Because the business of a book publisher is to distribute
and/or sell books, there is an inherent business
relationship between publishing books and selling books. In
light of this relationship, we find applicant’s goods in
Class 16 are related to opposer’s book publishing services
recited in Registration No. 3412632. See In re United
Service Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986)
(mark for distributorship services in the field of health
and beauty aids held likely to cause confusion with mark for
skin cream).
Where the goods in an involved registration are broadly
identified as to their nature and type, such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that the scope of the identification of goods
encompasses all the goods of the nature and type described
therein, that the identified goods are offered in all
channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
Paula Payne Products Co. v. Johnson Publishing Co., Inc.,

46 Webster’s Third New International Dictionary of the English
Language Unabridged, Merriam-Webster Inc., 1993. 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).
Opposition No. 91189376
41
473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); and In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
Opposer owns an unrestricted registration for
publishing services but there is no evidence in the record
regarding the channels of trade or the classes of purchasers
of these services. Due to the inherent relationship between
opposer’s book publishing services and books, we presume
that applicant’s books are sold in the same channels of
trade and to at least some of the same customers as those
that ultimately purchase opposer’s publications.
Applicant’s application also covers “baby bodysuits and
baby tops” in Class 25. As discussed above, opposer has not
proved priority with respect to its use of the PHILOSOPHY
Marks on clothing items.47 The goods for which opposer has
priority are cosmetic products including but not limited to
fragrances, body and skin care products, hair care products,
foot care products, (Registration No. 2016208); cosmetic
brushes (Registration No. 3440195); candles in Class 4, acne
treatments, air freshener, medicated skin lotions in Class
5, beach bags, all purpose bags, all purpose sport bags, and
book bags, in Class 18 (Registration No. 3514047);
travelling bags (Registration No. 2214968); mirrors in Class
20 (Registration No. 3558970); jewelry in Class 14

47 We also note that none of opposer’s clothing items shown in
opposer’s Trial Exhibit 22, PB000390-000394 are for babies or
children.
Opposition No. 91189376
42
(Registration No. 3406516); sponges and beverage glassware
in Class 21 (Registration No. 3617509); Christmas tree
decorations and ornaments in Class 28 (Registration no.
3633115); greeting cards in Class 16 and publishing services
in Class 41 (Registration No. 3412632); educational seminars
in the field of cosmetics and skin care and award
ceremonies, in Class 41 (Registration No. 2269341); retail
store services featuring a full line of cosmetics, and
personal care products, in Class 42 (Registration No.
2388010). Notably, none of the products or services
identified in the foregoing registrations is targeted for
babies or children, and the record is silent as to their
relatedness to applicant’s goods. Accordingly, we find that
the goods and services in opposer’s PHILOSOPHY registrations
are not related to applicant’s baby clothing.
In view of the unrestricted channels of trade in the
registrations and subject application and the presumption
that the respective goods move in all channels of trade that
would be normal for such goods and would be purchased by all
potential customers, we turn to the evidence of trade
channels and classes of customers for the parties’ products
and services.
Opposer’s evidence shows that its products are sold in
brick and mortar retail stores such as Sephora, Nordstrom
Opposition No. 91189376
43
and Macy’s,48 and at two free-standing stores in Arizona
owned by applicant.49 It also sells products on television
via the QVC marketing channel at least once a month and
sells products via the internet at opposer’s website
philosophy.com, as well at the following third-party
websites: nordstrom.com, beauty.com, drugstore.com, qvc.com,
and the “Sephora website.” Opposer advertises and promotes
its products on the internet utilizing emails sent to users
of the philosophy.com website, by publishing product
catalogs, holding events at retail stores for special
promotions, selling e-gift cards, and having its products
appear on the Oprah show between 1996 and 1998.50
Applicant admits (by default) that she markets or
intends to market products bearing her mark via the internet
and sells goods bearing the mark on amazon.com.51 Applicant
further admits (by default) that opposer’s products bearing
its PHILOSOPHY mark are sold on amazon.com and that
consumers can find applicant’s and opposer’s goods at the
same website. In fact, there is no evidence that the
parties sell their respective products on the amazon.com

48 Ms. Nevin testified that products were sold at approximately
100 Nordstrom stores, and the same number of Macy’s stores.
Product is being rolled out into more than 250 Ulta stores.
Nevin Dep. p. 86.

49 Nevin Dep. pp. 10, 11, 13, 50, 53-70, 86-88.

50 Nevin Dep. pp. 51-52, 62, 75 and 88.

Opposition No. 91189376
44
website. The testimony of opposer’s witness concerning the
sale of the “rainbow connection” book offered for sale at
amazon.com does not show that opposer’s products are sold at
amazon.com.52 As previously discussed, there is no proof
that opposer is the entity that is “selling” the “rainbow
connection” book; nor is there any evidence that opposer
sells any of its products at amazon.com.
Based on the evidence and the nature of the parties’
products, we find both parties market and sell their
respective products to consumers via the internet utilizing
third-party consumer internet sites, but there is no
evidence that their respective products are sold on the same
websites. Additionally, applicant’s products, like
opposer’s products, are the type of products that are sold
through retail stores. Unfortunately, these findings of
fact do not provide much assistance in our likelihood of
confusion analysis because most entities sell their products
in these manners.
Opposer sells its cosmetic and “color products” mostly
to women and has a page on its website advertising “gifts
for teens” but its products “can appeal to anyone.”53
Applicant’s products, i.e., baby books and baby clothes,
would likely be purchased by persons, especially women, that

51 Request For Admission No. 24.

52 Opposer’s Trial Brief p. 21. citing to Nevin Dep. p. 29.
Opposition No. 91189376
45
have or are expecting a baby or as a gift for someone with a
baby. Given this broad spectrum of potential consumers, and
especially female consumers, there is opportunity for
overlap in the type of consumers to which the parties’
products are marketed and sold.
There is no evidence showing that opposer's personal
care products, or the other products recited in its
registrations, and applicant's baby clothing, are sold in
the same stores or on the same websites. However, even if
there were such evidence, the presence of the parties’
respective goods in the same store does not necessarily
lead to the conclusion that confusion would arise. See
Interstate Brands, 198 USPQ at 153; and Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
The parties’ products have different purposes:
opposer’s products are for personal care and grooming,
household decoration and various types of bags, versus
applicant’s baby clothing. The educational and retail
services recited in opposer’s registrations are limited to
cosmetics and skin care which are not related to baby
clothing. There is no evidence that the parties’ products
would be sold in the same department or be situated near
each other; nor is there evidence that these products are

53 Nevin Dep. pp. 9 and 65.
Opposition No. 91189376
46
complementary or would otherwise be purchased together, such
that consumers would encounter both types of products in the
course of a single shopping trip. Moreover, there is no
basis, such as evidence that the same companies make or
distribute baby clothes as well as personal care and
grooming products, household decorative products and bags,
or that they sell such products under a single mark, upon
which we could conclude that consumers would assume that
these different products emanate from a single source. Even
where marks are identical, a lack of the foregoing evidence
can result in the failure to make a prima facie case of
likelihood of confusion. See Vital Pharmaceuticals Inc. v.
Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011).
1. (c) Similarity of the Marks in Terms of
Appearance, Sound, Meaning and
Connotation

A particular feature of a mark may be more obvious or
dominant and therefore, when determining likelihood of
confusion, greater weight ought to be given to the force and
effect of such a feature. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.
Cir. 1983) and In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). Contrary to opposer’s
position, the dominant feature of applicant’s mark is the
Opposition No. 91189376
47
image of a baby inside of a five-pointed red star outlined
by a red square.54
Upon viewing applicant’s mark, attention is immediately
drawn to the upper-body baby image set in a red star and
framed in a square. Eventually, the terms “P4B” and
“Philosophy4Babies” displayed in relatively small font and
contained in the top and bottom sides of the surrounding
square frame are observed.
When comparing the parties’ marks we are mindful that
it is improper to dissect a mark, and that marks must be
viewed in their entireties. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1688 USPQ (Fed. Cir. 1993). In some
circumstances however, “one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark.” Leading
Jewelers Guild, Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1905 (TTAB 2007); National Data, 224 USPQ at 751 (“[T]here
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.”). The
design portion of applicant’s mark is so dominant that it
avoids any similarity in appearance that might otherwise

54 The color(s) white, red and black is/are claimed as a feature
Opposition No. 91189376
48
result from the inclusion of the word “philosophy” in both
parties’ marks. Indeed, the word portion of applicant’s
mark is so visually obscure as to go undetected by a casual
observer.
However, when referring to applicant’s products,
consumers will most likely refer to them by the name
“Philosophy4Babies” as that term contains familiar words and
is more apt to be articulated over the unfamiliar term “P4B”
that is also contained in applicant’s mark. Thus, when the
marks are pronounced, they will be similar in sound due to
the inclusion of the word “philosophy” in opposer’s and
applicant’s marks.
Any similarity in appearance and sound between the
parties’ marks stems from the fact that the phrase
“Philosophy4Babies” in applicant's mark incorporates
opposer's previously used and registered PHILOSOPHY mark in
its entirety. In cases such as this, a likelihood of
confusion has frequently been found and inclusion of a
merely suggestive or descriptive element is of much less
significance in avoiding a likelihood of confusion. The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar to the mark CONCEPT). See also Coca-Cola
Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556,

of applicant’s mark.
Opposition No. 91189376
49
188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal
Lancer soldier design is similar to the mark BENGAL); In re
The Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529
(CCPA 1973) (E-CELL is similar to the mark E).
Nevertheless, there is no absolute rule and exceptions
have been made when the additional matter was found
sufficient to distinguish the marks under circumstances
where the marks in their entireties convey significantly
different meanings or commercial impressions or the
incorporated matter has been so merged with the other matter
that it “loses its separate identity.” See, e.g., Castle &
Cooke, Inc. v. Oulevay, S.A., 370 F.2d 359, 152 USPQ 115
(CCPA 1967) (FARANDOLE not confusingly similar to DOLE for
related food products because DOLE is so merged into
FARANDOLE that it loses its individual identity therein).
See also, Lever Brothers Company v. The Barcolene Company,
463 F.2d 1107, 174 USPQ 392, 393 (CCPA 1972) (mark ALL
CLEAR! not confusingly similar to ALL); and Colgate-
Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 167
USPQ 529, 531 (CCPA 1970) (no likelihood of confusion found
between marks PEAK for dentifrice and PEAK PERIOD for
personal deodorant). Although a portion of applicant's mark
incorporates opposer's PHILOSOPHY mark, the word
“Philosophy” is used as part of the phrase
“Philosophy4Babies” with no emphasis given to the word
Opposition No. 91189376
50
“philosophy.” Moreover, the framed baby image in a star
dominates applicant's mark and distinguishes it from
opposer's PHILOSOPHY mark.
In addition to the registered PHILOSOPHY word mark
which is used by itself on opposer’s products, opposer also
uses the PHILOSPHY mark in lower case letters followed by a
colon and various inspirational phrases, referred to by
opposer as its “philosophy dot dot” legend.55
The purpose of the “philosophy dot dot” legend is to
convey that the contents of opposer’s products “makes your
skin and body feel good” and the written phrase is to
“inspire[s] you.”56 Applicant does not use the “philosophy
dot dot” legend format or otherwise separate the word
“philosophy” from the other words in the phrase
“Philosophy4Babies.” Nor does the record support a finding
that there is anything inspirational about the phrase
“Philosophy4Babies.” In view of the foregoing, the term
“Philosophy4Babies” in applicant’s mark is not similar in
appearance to opposer’s “philosophy dot dot” legend.
Given that both parties’ marks contain the word
“philosophy,” they have similar meanings, with applicant’s

55 For example, “philosophy: hope in a box™” and “philosophy®:
smell good, feel good” have been used on packaging for gift sets.
See, opposer’s Trial Exhibit 24, PB000503 and 000579; Nevin Dep.
pp. 10, 14.

56 Nevin Dep. P. 10.

Opposition No. 91189376
51
mark indicating that it relates to a specific type of
“philosophy,” i.e., philosophy for babies.57 Despite their
similar meanings, the connotation and impressions created by
each mark differs so as to avoid a likelihood of confusion.
In considering the connotation and overall impression
of the marks, we are compelled to consider the nature of the
parties’ respective goods and services. See, e.g., TBC
Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315, 1317
(Fed. Cir. 1997) (court discounted “distinct connotation” of
GRAND SLAM in relation to bridge, baseball, golf and tennis
as irrelevant and noting that GRAND SLAM is wholly arbitrary
for automobile tires) and Coach Services Inc. v. Triumph
Learning LLC, 96 USPQ2d 1600, 1609 (TTAB 2010) aff’d ___
F.3d ___, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (COACH for
fashion accessories is suggestive of travel accommodations
engendering commercial impression of a coach or carriage bag
which is different commercial impression of COACH for
educational materials). Thus, the connotation of the
parties’ marks depends on the type of products with which
they are used. For example, opposer’s PHILOSOPHY mark when
used in connection with publishing services, connotes the
subject matter of the published materials. Similarly, the
term “Philosophy4Babies” in applicant’s mark connotes the

57 Although the term “philosophy for babies” is somewhat ambiguous
with respect to books and written materials, it is a descriptive
term, as recognized by applicant’s disclaimer of this term.
Opposition No. 91189376
52
subject matter of applicant’s books, written articles,
handouts and worksheets and baby books and therefore, is
descriptive of the contents of the books, as reflected by
applicant’s disclaimer of this term.58
Usually, when the parties’ marks are deemed to have
similar connotations, that is a factor which supports a
likelihood of confusion. Here however, the descriptive
connotation of the word “philosophy” as the subject matter
of both parties’ book-related services and products renders
the connotation of their marks a neutral factor with respect
to these services and products.
For cosmetics and body care products, opposer’s
PHILOSOPHY mark has no significance; it merely connotes the
subject of philosophy. On the other hand, the baby image
and word “babies” contained in applicant’s mark, when used
for baby clothing, connotes that the clothing is for babies.
Thus, for non-book related products, the marks have
different connotations.
We find that given the different appearances and
commercial impressions, this du Pont factor weighs in favor
of applicant and against finding a likelihood of confusion.

58 The filing of a disclaimer with the Patent and Trademark
Office does not remove the disclaimed matter from the purview of
determination of likelihood of confusion. See National Data, 224
USPQ at 751. The marks must be considered in the way in which
they are perceived by the relevant public.

Opposition No. 91189376
53
1. (d) Balancing the Factors

Not all of the du Pont factors are relevant to
every case, and only factors of significance to the
particular mark need be considered. In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For
example, the Board can “focus . . . on dispositive factors,
such as similarity of the marks and relatedness of the
goods.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citations
omitted). We have carefully considered all of the evidence
made of record and the parties’ admissible arguments related
thereto, including any evidence and arguments not
specifically discussed in this opinion, and weighed the
pertinent likelihood of confusion factors.
With respect to the similarity of the parties’ goods
and services, applicant’s baby books are related to
opposer’s publishing services and it is likely that these
goods and services move in the same trade channels to some
of the same end consumers. However, the differences in the
marks together with the descriptiveness of the term
“Philosophy4Babies” for such products are sufficient to
avoid any likelihood of confusion for the book-related
products and services.
We find that the cosmetic, and body care, household
decoration, and bag products identified in opposer’s
Opposition No. 91189376
54
PHILOSOPHY registrations, and applicant’s baby clothes, may
be sold at retail stores and on the internet to overlapping
consumers. Due to the different purposes of the parties’
products and the lack of evidence of relatedness, we find
that they are not similar or related. Further, the services
recited in opposer’s registrations are restricted to
educational and retail services related to cosmetic and body
care products which are not related to baby clothes.
To the extent that opposer’s PHILOSOPHY Mark and
applicant’s mark contain the word “philosophy,” they are
similar in sound and meaning. However, the dominant design
portion of applicant’s mark distinguishes the appearances of
the parties’ marks. Considering the commercial impression
and connotation of the marks in connection with the
products, the descriptiveness of the word “philosophy” as it
relates to materials published by opposer and applicant’s
books and publications, neutralizes this factor. For non-
book products such as opposer’s cosmetics and body care
products, and applicant’s baby clothing, the parties’ marks
have different commercial impressions.
In view of the foregoing, we find that applicant’s mark
for the goods in classes 16 and 25 is not likely to cause
confusion with opposer’s PHILOSOPHY Mark.
Opposition No. 91189376
55
G-2. BABY Marks/PHILOSOPHY and BABY Marks Combination
2.(a) Priority
Opposer’s registrations for its BABY Marks are of
record and there is no counterclaim for cancellation.
Therefore, priority under § 2(d) is not an issue as to the
goods covered by those registrations. King Candy, 182 USPQ
at 110. However, opposer does not rely solely on its BABY
Marks for likelihood of confusion. It contends that
applicant’s mark is “substantially similar if not identical
to” opposer’s use of its PHILOSOPHY mark with opposer’s
registered MIRACLE BABY, BABY GRACE, BABY GIRL and
PHILOSOPHY BABYCAKES marks (“BABY Marks”).59 Therefore,
opposer also relies on its alleged common law rights
stemming from its use of PHILOSOPHY together with its BABY
Marks as a basis for its claim of likelihood of confusion.
While opposer is entitled to rely on its PHILOSOPHY
registrations and its BABY registrations for priority, this
priority does not automatically extend to the combination of
the BABY marks with opposer’s PHILOSOPHY mark. Because
opposer does not own any registrations covering the
combination of its PHILOSOPHY mark with the BABY GIRL, BABY
GRACE or MIRACLE BABY marks, it must establish ownership of
common law trademark rights for these combinations.

59 Notice of Opposition ¶ 11; opposer’s trial brief p. 30.
Opposition No. 91189376
56
There is no evidence that opposer used the foregoing
BABY marks prior to applicant’s filing date. Opposer’s
witness testified that opposer always used its PHILOSOPHY
Mark in “conjunction and close association” with these three
BABY Marks on product packaging.60 In view of this
testimony, opposer is entitled to rely on the registration
dates of the BABY GIRL, BABY GRACE and MIRACLE BABY
registrations as the priority dates for its use of the
combination of PHILOSOPHY and these BABY Marks.61 The
registration dates for these registrations are all well
prior to applicant’s filing date, and are the most certain
dates on which opposer may rely for this purpose.
Therefore, opposer has established priority for its use of
the combination of the PHILOSOPHY mark with the BABY GIRL,
BABY GRACE and MIRACLE BABY marks for the cosmetics,
fragrance, skin and body care products recited those
respective registrations.
As discussed above, opposer has not shown that it used
PHILOSOPHY as a trademark for books, written materials or
clothing. Consequently, opposer has not proved priority in
its use of the combination of the PHILOSOPHY mark with any
of its BABY Marks for these items.

60 Nevin Dep. pp. 80-81.

61 The registrations for BABY GIRL, BABY GRACE and MIRACLE BABY
issued in 2003, 2004 and 2006 respectively, and accordingly,
were all issued prior to applicant’s March 13, 2008 filing date.
Opposition No. 91189376
57
Opposer’s registered PHILOSOPHY BABYCAKES trademark
embodies the combination of PHILOSOPHY with the “baby”
formative. Thus, its registration for this mark establishes
priority for this combination. King Candy, 182 USPQ at 110.
Despite the fact that the PHILOSOPHY BABYCAKES registration
issued subsequent to the filing of the notice of opposition,
the registration establishes opposer’s priority for the
products covered in the registration because the
corresponding application was identified in the ESTTA
coversheet,62 pleaded in the notice of opposition and a copy
of the registration was made of record during opposer’s
testimony period. Cf. UMG Recordings Inc. v. O’Rourke, 92
USPQ2d 1042, 1045-46 (TTAB 2009).

2. (b) Similarity or Dissimilarity and Nature
of the Goods at Issue, Likely to
Continue Trade Channels and Classes of
Customers

Because opposer only uses the combination of its
PHILOSOPHY Mark and its BABY Marks in connection with its
cosmetics and body care products, we consider the
relatedness of such products to applicant’s books and baby
clothing. In the absence of any evidence regarding the
similarity of such products, we note that they are not
inherently related. We next consider whether they are
likely to travel in similar trade channels to be purchased

62 ESTTA is the Board’s electronic filing system.
Opposition No. 91189376
58
by the same class of purchasers. For the reasons set forth
in the discussion of the PHILOSOPHY Mark, we find that even
if these products travel in the same or similar trade
channels, to some of the same types of customers, they have
very different purposes, i.e., opposer’s personal care
products versus applicant’s books for educational
entertainment and baby clothes. Without any evidence
regarding the relatedness of these types of products there
is no basis for us to conclude that the products are related
such that consumers would assume that they emanate from the
same source.

2. (c) Similarity of the Marks in Terms of
Appearance, Sound, Meaning and
Connotation

Opposer contends that applicant’s mark is
“substantially similar if not identical to” opposer’s use of
its PHILOSOPHY mark with its BABY Marks. Although both
parties’ marks contain the word “philosophy,” opposer’s BABY
Marks include the word “baby” or “babycakes” while
applicant’s mark contains the word “babies.” Thus, the
common words used in the parties “marks” are not identical.
Moreover, applicant’s mark incorporate the words
“philosophy” and “babies” in the same phrase. The only
instances where opposer incorporates the word “philosophy”
with “baby” in the same phrase is in its PHILOSOPHY
BABYCAKES mark which does not sound the same as
Opposition No. 91189376
59
“Philosophy4Babies.” Given that opposer’s PHILOSOPHY
BABYCAKES mark is two words, it also differs in appearance
from applicant’s term “Philosophy4Babies.” In view of the
lack of evidence to show whether consumers use opposer’s
PHILOSOPHY Mark together with the BABY Marks to refer to its
products, there is no basis for an assessment of the
similarity in sound.
In order for marks to be considered together, two
elements must be satisfied before the likelihood of
confusion analysis can proceed. First, it must be
established that the marks have been and are being used
together on a single product or in marketing. Second, it
must be established that opposer’s marks are used in such a
fashion that it would be proper to combine them for purposes
of comparison, that is, that they have been used and/or
advertised conjointly in such a manner and to such an extent
in connection with a single product that they have come to
be associated together, in the mind of the purchasing
public, as an indication of origin for opposer’s product.
See Schering-Plough HealthCare Products Inc. v. Ing-Jing
Huang, 84 USPQ2d 1323, 1326 (TTAB 2007) (opposer met
difficult burden of showing routine combined use of “Dr.
Scholl’s” and “Air-Pillo” such that the two marks came to be
Opposition No. 91189376
60
associated together as indicator of origin in the mind of
the buying public) and cases cited therein.63
The evidence demonstrates that opposer used the BABY
GIRL mark for the name of a product gift set displaying the
PHILOSOPHY mark either on the packaging as part of the
“philosophy dot dot” legend, or on a hang tag that also
displayed the BABY GIRL mark.64 The BABY GRACE mark has
been used directly on individual product containers where
PHILOSOPHY was used as part of the “philosophy dot dot”
legend.65 The evidence indicates that the BABY Marks were
used on the same products with the PHILOSOPHY mark, but not
as a combined or unitary term. Given this “disjointed” use
of the BABY Marks with the PHILOSOPHY mark, it is unlikely
that they have a unitary meaning or commercial impression,
or if they do it differs from that of applicant’s mark which
includes the unitary phrase “Philosophy4Babies.”
Opposer’s failure to precisely define or prove a
particular manner of use of the BABY Marks in combination
with its PHILOSOPHY mark adversely impacts our ability to
assess the similarity of the marks. However, the lack of
evidence showing that the marks have been used or advertised

63 Although the case law is settled in requiring evidence on
conjoint use, the results vary depending on the evidentiary
record in each case. Schering-Plough, 84 USPQ2d at 1326.

64 Nevin Dep. pp. 37-38, 51; opposer’s Trial Exhibit 24, PB000487-
488 and PB000519.

Opposition No. 91189376
61
in a manner and to an extent that they have come to be
associated together in the mind of the purchasing public as
an indication of origin for opposer’s products is fatal to
opposer’s claim of confusion with respect to the BABY GIRL,
BABY GRACE and MIRACLE BABY marks.
The PHILOSOPHY BABYCAKES mark was used on a hang tag
for a shower gel, shampoo and bubble bath set.66 The
inclusion of the word “babycakes” distinguishes this mark
from applicant’s mark in sound and appearance, as well as
meaning and commercial impression. The term “babycakes” is
defined as “a term of endearment; sweetie; dear. (Also a
term of address).”67 Thus, it has a different meaning and
purpose from the word “baby” as used in connection with
applicant’s products. The inclusion of the number “4” as a
homonym for the preposition “for” in applicant’s
“Philosophy4Babies” term, endows applicant’s mark with a
different meaning and commercial impression informing
viewers that applicant’s product is “for” babies.

65 Nevin Dep. Pp. 38-40; opposer’s Trial Exhibit 24 PB000491-492,
PB000517, PB000533.
66 Nevin Dep. p. 51; opposer’s Trial Exhibit 24, PB000520.

67 Dictionary of American Slang and Colloquial Expressions by
Richard A. Spears. Fourth Edition. Copyright 2007. Published by
McGraw Hill; found at dictionary.reference.com. 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 format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006).

Opposition No. 91189376
62
As discussed above, opposer’s “themed trade dress” that
utilizes baby/child images in connection with its PHILOSOPHY
and BABY Marks can be taken into consideration in assessing
the commercial impression of opposer’s PHILOSOPHY and BABY
Marks. Contextual trade dress can be relevant to show that
the commercial impression projected by an applied for mark
is similar to that of the prior marks, thereby supporting a
likelihood of confusion. The rationale being that trade
dress represents part of the context in which a mark is used
and therefore can be probative of the significance which the
mark is likely to project to consumers. See Morton-Norwich
Products, Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561,
189 USPQ 413, 415 (CCPA 1976); Northwestern Golf Co. v.
Acushnet Co., 226 USPQ 240, 244 (TTAB 1985). It is also
settled that a distinction in trade dress cannot weigh
against likelihood of confusion with respect to the
registration of a mark because such trade dress might well
be changed at any time. Kimberly-Clark Corp. v. H. Douglas
Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541, 543 (Fed.
Cir. 1985). With the foregoing in mind, we consider the
impact of opposer’s trade dress in assessing the commercial
impression of the marks.68

68 Based on the “disjointed” manner in which the combination
PHILOSOPHY Mark and the BABY Marks have been used, and the lack
of any evidence recognizing the association of those marks, the
combination of these marks is not a “trade dress” we separately
consider in assessing the commercial impression.
Opposition No. 91189376
63
Opposer’s child/baby themed trade dress utilized with
its PHILOSOPHY and BABY Marks provides a basis for some
similarity in commercial impressions between opposer’s trade
dress and applicant’s mark emanating from the common use of
baby images.69 However, none of opposer’s child/baby images
are set against a star background except for the holiday
Star hang tag. Any resulting similarity in commercial
impression must be further discounted in view of the
descriptiveness of baby images with respect to applicant’s
baby products. That is, because the common element provided
by contextual evidence, i.e., opposer’s use of baby images,
is descriptive of applicant’s products, that element, by
itself, is insufficient to trigger a finding of similar
commercial impression. Thus, the commercial impression of
opposer’s PHILOSOPHY and BABY Marks, including its themed
baby/child trade dress, is not similar to the commercial
impression of applicant’s mark.
2. (d) Balancing the Factors

Opposer does not use three of its BABY Marks in
combination with its PHILOSOPHY Mark in a conjoined fashion
and there is no evidence of consumer association of these
marks. Therefore, as to those three BABY Marks, i.e., BABY
GIRL, BABY GRACE and MIRACLE BABY, applicant’s mark is not

69 See e.g., Trial Exhibit 23, PB000441; Trial Exhibit 24,
PB000495, PB000505, PB000514.
Opposition No. 91189376
64
similar to opposer’s PHILOSOPHY and BABY Marks combination.
As a result of opposer’s “disjointed” use of its PHILOSOPHY
and BABY Marks, any meaning or commercial impression is
different from that created by the unitary
“Philosophy4Babies” phrase in applicant’s mark.
Opposer’s PHILOSOPHY BABYCAKES mark differs in
appearance and sound; and has a different meaning and
commercial impression from applicant’s mark.
The child/baby themed trade dress opposer sometimes utilizes
with its PHILOSOPHY and BABY Marks provides an initial basis
for finding some similarity in commercial impressions.
However, any similarity in commercial impression is heavily
discounted due to the descriptiveness of baby images with
respect to applicant’s baby products. The cosmetic and body
care products that are listed in opposer’s BABY Mark
registrations are not similar or related to applicant’s baby
books and baby clothing. Accordingly, there is no
likelihood of confusion with opposer’s combination of its
PHILOSOPHY and BABY Marks.
G-3. “girl with pail” trade dress
3.(a) Priority
As discussed above, opposer has shown trademark rights
in one version of its alleged Baby Image Mark trade dress,
namely, the “girl with pail” trade dress (i.e., “girl with

Opposition No. 91189376
65
pail image” used in connection with opposer’s PHILOSOPHY
mark). Inasmuch as Opposer has not submitted evidence of
any registration that includes the “girl with pail” image,
it must prove that it has prior common law rights in the
“girl with pail” trade dress.
Opposer’s witness testified that this image has been
used on the covers of opposer’s “product catalogs” since
2000, that the catalog “goes through periodic updates,
refreshing the product assortment,” and that 20,000 to
50,000 copies of the catalog are distributed annually.70
The record contains a copy of the front and back covers of
opposer’s 2000 catalog.71 Because the record does not
contain a copy of the contents of the 2000 catalog, we are
unable to confirm whether the catalog suffices as proof of
trademark use of the “girl with pail” trade dress, i.e.,
whether it establishes use of the trade dress in close
association with the products. See In re Anpath Group Inc.,
95 USPQ2d 1377, 1382 (TTAB 2010) (pamphlet and flyer lacking
adequate information for making a decision to purchase the
goods and place an order held insufficient as specimens);
and TMEP § 904.03(h).
Even if opposer's use of the “girl with pail” trade
dress on its product catalog, was not a technical trademark

70 Nevin Dep. pp. 44-45.

71 Nevin Dep. p. 44; opposer’s Trial Exhibit 24, PB000500.
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66
use, it is well settled that use analogous to trademark use
is considered in determining priority. The use of the
“girl with pail” trade dress on the cover of a catalog of
general circulation would clearly be of such nature and
extent as to create the public identification of the trade
dress with opposer's goods as is required under analogous
use. See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372,
37 USPQ2d 1879, 1881 (Fed. Cir. 1996). Opposer has also
provided evidence that it continued to use the “girl with
pail” trade dress on product packaging including for
fragrance, facial cleanser, hand cream and skin care kits,
prior to April 2008, and also on gift cards.72 Accordingly,
we find that opposer has established priority in the “girl
with pail” trade dress for fragrance and skin care products.

3. (b) Similarity or Dissimilarity and Nature
of the Goods at Issue, Likely to
Continue Trade Channels and Classes of
Customers

Because opposer only uses its “girl with pail” trade
dress in connection with its cosmetics and body care
products, we consider the relatedness of such products to
applicant’s books and baby clothing. For the reasons set
forth above, the products have very different purposes,
i.e., opposer’s personal care products versus applicant’s
books for educational entertainment and baby clothes.

72 Nevin Dep. pp. 37, 62, 69; Opposer’s Trial Exhibit 24 at
Opposition No. 91189376
67
Without any evidence regarding the relatedness of these
types of products there is no basis for us to conclude that
the products are related such that consumers would assume
that they emanate from the same source.
3. (c) Similarity of the Marks in Terms of
Appearance, Sound, Meaning and
Connotation

In considering the similarity of the “girl with pail”
trade dress and applicant’s mark, we focus on the
appearance, meaning and commercial impression of the marks.
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. Leading Jewelers Guild, 82
USPQ2d at 1905. Visually, the marks are not similar.
Opposer’s “girl with a pail” trade dress features an image
of a girl in a bathing suit standing on sand next to a pail
and holding a sand shovel, with the word “philosophy.” On
the other hand, applicant’s mark features a dominant upper-
body baby image surrounded by a five-pointed star, all
framed in a square, the top and bottom sides of the square
bearing the terms “P4B” and “Philosophy4Babies,”
respectively, in small print.

PB000487, PB000552; PB000576.
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68
Overall, the images used by the parties bear little, if
any, resemblance to each other. The baby image surrounded
by a prominent star background set in a square frame in
applicant’s mark renders a very different visual impression
from opposer’s “girl with a pail” trade dress. The girl
image in opposer’s mark is not framed or otherwise set-off
against any background. Given the dominance of the baby
image in applicant’s mark, and the descriptive use of the
word “philosophy” in the phrase “Philosophy4Babies,” the
inclusion of the word “philosophy” in both applicant’s mark
and opposer’s trade dress is not enough to render them
similar in overall appearance.
The commercial impressions of the two also differ. On
its face, opposer’s “girl with a pail” trade dress does not
convey any particular meaning, other than the plain meaning
of the word “philosophy” with an image of a little girl.
The fact that the girl is standing on sand with a sand
shovel and pail and wearing a bathing suit, could connote
that opposer’s products are for use at the beach. Unlike
opposer’s mark, the wording and baby image contained in
applicant’s mark are descriptive of applicant’s baby books
and baby clothes and connote a strong association with
“babies,” resulting in the impression that her products
relate to babies.
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69
When viewed in their commercial contexts, together with
the differences in the images and the parties’ respective
products, opposer’s “girl with pail” trade dress and
applicant’s mark convey different commercial impressions.
3. (d) Balancing the Factors

The most pertinent factors in assessing the likelihood
of confusion with respect to the “girl with pail” trade
dress include the appearance, meaning and commercial
impressions of the marks. The parties’ marks are not
similar in appearance or meaning. Likewise, the parties’
marks have different commercial impressions. Thus, we find
that these marks are not similar in appearance, meaning or
commercial impression. There is no evidence to support a
finding that opposer’s body care products are related to
applicant’s baby books and baby clothing. In view of the
foregoing, the balance of the confusion factors tips
decidedly in favor of a finding of no likelihood of
confusion with respect to the “girl with pail” trade dress.

Decision: The opposition is dismissed.