BRAINY ACTS Not Confusable With BRAINY BABY for Children's Activity Books, Says TTAB

The Board dismissed this Section 2(d) opposition to registration of BRAINY ACTS for educational publications in the field of early childhood development, finding confusion unlikely with the registered mark BRAINY BABIES for children's interactive educational books. The goods overlap, and as to those goods the Board must presume that they travel in the same ordinary trade channels and will be marketed to the same classes of consumers. The first DuPont factor proved to be the hurdle that tripped up Opposer Small Fry. Small Fry Beginnings, LLC v. Evelyn Williams English, Opposition No. 91269989 (August 7, 2023) [not precedential] (Opinion by Judge Martha B. Allard).

Small Fry claimed to own a family of BRAINY marks, but its proofs fell short. In order to establish ownership of a family of marks, Small Fry had to first establish priority vis-a-vis the claimed "family" feature by showing that the marks allegedly in the family "were used and promoted together in such a manner as to create public recognition coupled with an association of common origin predicated on the 'family' feature." "Simply using [and/or registering] a series of similar marks does not of itself establish the existence of a family." The Board concluded that Small Fry failed to demonstrate that a family of marks "has been consistently promoted or advertised together in such a manner to cause consumers to recognize the common feature."

The Board then turned to Small Fry's individual marks, the closest being the registered mark BRAINY BABY for "Children’s activity books; Children’s books; Children’s interactive educational books."

The Board noted that the marks BRAINY ACTS and BRAINY BABY sound different: "Applicant’s mark, when pronounced, sounds like one word, “brainiacs.” In contrast, Opposer's mark sounds like two distinct words; moreover, its use of alliteration causes the mark to have a lilting cadence, which consists not only of the initial “b” sound, but also the repetition of the long “a” sound, overall giving it a pleasing−but very different− sound when pronounced."

Considering the marks in their entireties, we find that the marks are dissimilar. Applicant’s and Opposer’s marks are similar only to the extent that they each contain the term BRAINY and connote that using their respective identified goods will result in a smart child. Overall, however, the marks are dissimilar due to their significant differences in pronunciation and commercial impression due to Applicant’s use of a play on words compared to Opposer’s use of alliteration.

Small Fry claimed that its BRAINY BABY mark is famous, pointing to long use, strong sales, robust advertising and promotional efforts, unsolicited media recognition, and industry awards. The Board found that the evidence and testimony "supports the conclusion that Opposer runs a commercially successful business, but given the unclear, imprecise nature of Opposer’s testimony, the evidence does not support a finding that Opposer’s mark falls on the higher end of the spectrum of fame." The Board concluded that Small Fry failed to show that its BRAINY BABY mark merits an expanded scope of protection.

As to conceptual strength, since the BRAINY BABY mark is registered on the Principal Register without a claim of acquired distinctiveness, it is presumed to be inherently distinctive and at least suggestive. However, third-party registration evidence of marks containing the word BRAINY for educational services (which the Board found to be closely related to the goods at issue) led the Board to conclude that "Opposer’s BRAINY BABY mark is highly suggestive because it connotes the purpose of Opposer’s children’s books, i.e., to stimulate brain development in babies to promote intelligence."

In sum, Small Fry failed to prove that its mark is famous or commercially strong, but applicant was unsuccessful in demonstrating that the BRAINY BABY mark is commercially weak. And so, the Board found find that the BRAINY BABY mark "falls in the middle of the commercial strength spectrum from very strong to very weak." However, the BRAINY BABY mark is "highly suggestive" for Small Fry's goods. Therefore, the Board found that the mark is entitled to "a relatively narrow scope of protection."

Although the parties’ goods are legally identical in part, the channels of trade and classes of consumers are presumed to be the same, and the parties’ goods may be subject to impulse purchasing, overall, we find the marks sufficiently dissimilar to avoid a likelihood of confusion.

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TTABlogger comment: The "family of marks" argument is a consistent failure.

Text Copyright John L. Welch 2023.