Battat IncorporatedDownload PDFTrademark Trial and Appeal BoardDec 17, 2014No. 85531198 (T.T.A.B. Dec. 17, 2014) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: December 17, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Battat Incorporated _____ Serial No. 85531198 _____ Andrew S. Langsam of Pryor Cashman, LLP, for Battat Incorporated. David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112, Angela Wilson, Managing Attorney. _____ Before Wellington, Greenbaum and Masiello, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Battat Incorporated (“Applicant”) seeks registration on the Principal Register of the standard character mark FUNKEYS for “musical toys for toddlers, not including toy action figures, toy figure playsets, and items associated therewith” in International Class 28.1 1 Application Serial No. 85531198 was filed on February 1, 2012, based upon an allegation of first use of the mark in commerce on December 21, 2009, under Section 1(a) of the Trademark Act. Serial No. 85531198 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark based on a likelihood of confusion, under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the registered mark U.B.FUNKEYS (in standard characters) for, inter alia, “toys, games and playthings, namely, toy figures, toy figure playsets, and accessories for all of the foregoing” in International Class 28.2 After the refusal became final, Applicant filed a Request for Reconsideration which was denied. Applicant then appealed. Both Applicant and the Examining Attorney filed briefs. Examining Attorney’s Objection to Applicant’s Reliance on Third-Party Registration The Examining Attorney has objection to Applicant’s reliance on a third-party registration because “[a]lthough applicant made reference to ‘another Registered mark’ in its request for reconsideration dated April 14, 2014, it first specified the registration in [its appeal] brief and never made the registration of record.” Brief, p. 5. The Examining Attorney cites to Trademark Rule 2.142(d) which requires all evidence be filed prior to appeal, and requests that the Board disregard the registration. In fact, Applicant did more than just “reference to another Registered mark” in its Request for Reconsideration; in the second paragraph, it argues that “the Examining has ignored, however, Registration 4,392,067 for substantially the same mark FUNKEYS as the applied for mark, registered for related but slightly 2 Registration No. 3465468 issued on July 15, 2008. The registration also covers goods in Class 9; however, only the goods in Class 28 were asserted as a basis for refusal by the Examining Attorney. Serial No. 85531198 - 3 - different goods.” Req. for Recon., p. 1. Applicant also referenced this “recent Registration of the mark FUNKEYS for use with Dance costumes, dresses, hats, etc.” Id. Moreover, the Examining Attorney did not address Applicant’s reference to this registration in the subsequent Office Action (issued on April 14, 2014) denying the Request for Reconsideration. If an applicant, during the prosecution of the application, identifies a third-party registration without also submitting an actual copy thereof, and the examining attorney does not object or otherwise advise the applicant that the mere reference is insufficient to make the registration of record at a point when the applicant could cure the insufficiency, the examining attorney will be deemed to have waived any objection as to the admissibility of the information regarding the registration. See TBMP § 1207.03 (October 2014) and decisions cited therein. Here, Applicant filed its appeal on June 13, 2014, approximately two months after the Office Action denying its Request for Reconsideration. Thus, had the Examining Attorney objected to Applicant’s reference of the third-party registration or advised that it was insufficient to make the registration of record, Applicant would have had ample time to cure the deficiency prior to the appeal. In view thereof, we find the objection to Applicant’s reliance on the registration has been waived. See In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013) (“[T]he examining attorney’s failure to advise applicant of the insufficiency of the list of registrations when it was proffered during examination constituted a waiver of any objection to consideration Serial No. 85531198 - 4 - of that list. Accordingly, we will consider the ... list of registrations ... ‘for whatever limited probative value such evidence may have,’” (citing In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001))). In this case, however, the information provided by Applicant in the Request for Reconsideration, namely, the registration number, the mark and goods covered, is the extent of the information that may be considered. In other words, the Board will not consider more than the information provided by Applicant. TBMP § 1208.02. We now turn to the substance of the refusal of registration. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Similarity of the Goods Identified in the Application and Registration We turn first to the du Pont factor involving the relatedness of the goods. Here, the record supports a finding that Applicant’s musical toys for toddlers are related to Registrant’s toy figures, toy figure play sets and accessories. The Examining Serial No. 85531198 - 5 - Attorney submitted copies of six third-party registrations that cover both musical toys and toy figures.3 Third-party registrations that individually cover the identified goods in the application and registration, and are based on use in commerce, may have some probative value to the extent that they serve to suggest that these goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). To further illustrate this point, the Examining Attorney submitted website evidence showing that third-party toy manufacturers, such as Hasbro and Fisher-Price, offer musical toys for toddlers as well as toy action figures.4 Thus, in addition to the obvious similarity based on the goods being toys, consumers would not be unaccustomed these types of toys coming from the same manufacturer. Accordingly, although the subject application’s identification of goods specifically excludes Registrant’s goods, i.e., “toy action figures … playsets … and accessories … ,” this will not prevent confusion because consumers will not be aware of the existence of this exclusionary language in the application. The question is whether the goods are sufficiently related such that, if similar marks are used thereon, consumers will believe that the products emanate from a single source. Based on the record, we find the respective toy goods have such a relationship. In view of the above, the relatedness of the respective goods factor favors a finding of a likelihood of confusion. 3 Attached to Office Action issued on March 12, 2012. 4 Attached to Office Action issued on December 16, 2013. Serial No. 85531198 - 6 - Trade Channels, Care in Purchasing and Classes of Consumers for the Goods The application and registration set forth no limitations on the trade channels or the purchasers to whom the respective goods will be sold. Although the goods are not identical, they are toys and will thus travel in the normal channels of trade for toys. Applicant’s musical toys for toddlers and Registrant’s toy action figures will be offered to the same classes of purchasers, namely, children or parents of children and may be purchased in the same retail stores that specialize in toys, e.g., Toys R Us, or the toy departments of larger stores, e.g., Target, Walmart, etc. We further note that the identified toys are generally not expensive items. For example, a Melissa & Doug-brand “Castle Wooden Figure Set” (toy figure playset) costs $19.99 and the same brand “Pull & Play Musical Inchworm Baby Toy” costs $12.99.5 Thus, we cannot conclude that consumers for the identified goods will exercise a higher level of care in their selection; to the contrary, we must consider the possibility that these toys will be purchased on impulse. “When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Accordingly, the du Pont factors involving trade channels for Applicant’s and Registrant’s toys and the classes of consumers to whom they are sold favor finding a likelihood of confusion. Because toys are subject to impulse purchasing, and nothing 5 See attached website printouts attached to Office Action issued on December 16, 2013. Serial No. 85531198 - 7 - more than ordinary care would be exercised by ordinary consumers, this factor weighs slightly in favor of the same conclusion. Similarity of the Marks In comparing the marks, we must consider them in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Initially, we note the similarity in the marks stemming from their shared use of the designation FUNKEYS. The marks differ only because Applicant has lopped off the initials that preface the registered mark, U.B.FUNKEYS. Visually and aurally, they are similar. As far as meaning, the Examining Attorney asserts that the registered mark is a play on the phrase “You be Funk(e)y,” and argues that the phrase “be funky” is “ubiquitous, particularly in the field of music.” Brief, p. 5. The record includes a handful of third-party uses of this term.6 He also points to Applicant’s specimen of use (showing use of “B.” prefacing the mark FUNKEYS) filed with the application, and asserts that this “shows that applicant and registrant are both playing off that phrase [“be funky”] and creating nearly identical commercial impressions.” Id. Applicant, on the other hand, argues that initial letters U.B. should not be ignored as they appear first in Registrant’s mark and that Applicant’s own use of 6 See attached website printouts attached to Office Action issued on December 16, 2013. Serial No. 85531198 - 8 - FUNKEYS has a certain meaning “when the goods [of Applicant] are appreciated” in that “the goods are intended to be fun to play with” and the element KEYS “relate[s] to musical tones” or “’keys’ to success, and … related to the shape of conventional household keys for opening locks … .” Brief, p. 3. Although we disagree with the Examining Attorney’s contention that the record demonstrates that the phrase “be funky” is ubiquitous, we do agree that U.B.FUNKEYS and FUNKEYS are similar in connotation inasmuch as consumers viewing these marks may understand both as a play on the words “fun” and “keys” as well as on the term “funky.” To the extent consumers understand the marks in the latter manner, i.e., a play on the word “funky,” the fact that the term is identically misspelled (with the letters “-e•y”) brings them even closer. As to Applicant’s suggestion that the “fun” and “keys” elements in its mark have alternative and unique meanings because its goods are “musical toys” is not persuasive. While we acknowledge the possibility that Applicant’s mark may be perceived as a combination of these two terms, this does not necessarily distinguish it from Registrant’s mark. The same connotation may apply to Registrant’s mark in connection with its goods. That is, Registrant’s toy action figures or the related accessories may have a musical element, e.g., a musician action figure or a musical accessory for the toy action figure; in which case, the same suggestive meanings for “fun” and “keys” would be present in Registrant’s mark. Ultimately, we have considered the marks in their entireties and do not ignore the presence of additional letters at the beginning of the registered mark; however, Serial No. 85531198 - 9 - we find the overall commercial impressions of the marks are not so different as to avoid a likelihood of confusion. While the registered mark is likely to be understood as a phrase with the “you be” preface, the commercial impressions of the two marks remain very similar. In other words, whether consumers view the mark as “you be funky” or “you be fun keys,” this remains close in meaning to “funk(e)ys” or “fun keys.” Moreover, we note that there is no evidence of record showing that the term “funky” or “funkeys” is weak or diluted in connection with toys. As discussed infra, we consider Applicant’s assertions regarding a Registration No. 4392067 for “substantially the same mark FUNKEYS” in connection with “dance costumes, dresses, hats, etc.”; however, a single registered mark that may, or may not, be in use hardly constitutes evidence that the consuming public has been conditioned by viewing marks with the term FUNKEYS to overlook a similarity based on use of this same term. See Palm Bay, 73 USPQ2d at 1694 (“The purpose of a defendant introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.”). Conclusion In summary, we have carefully considered all of the evidence and arguments of record relevant to the du Pont likelihood of confusion factors. We conclude that because the identified toy goods are closely related; will travel in similar channels of trade and be offered to the same classes of consumers; and that relevant customers would exercise only an ordinary level of care in their purchases and might purchase Serial No. 85531198 - 10 - the goods on impulse; there is sufficient similarity between the marks to cause a likelihood of confusion. Decision: The likelihood of confusion refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation