Battat Incorporated

Trademark Trial and Appeal Board

Dec 17, 2014

No. 85531198 (T.T.A.B. Dec. 17, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Battat Incorporated
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Serial No. 85531198
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Andrew S. Langsam of Pryor Cashman, LLP,
for Battat Incorporated.

David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112,
Angela Wilson, Managing Attorney.
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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.
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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.
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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
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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
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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.
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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.
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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.
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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,
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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
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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.