Candace Wahl

Trademark Trial and Appeal Board

Nov 20, 2013

No. 85485701 (T.T.A.B. Nov. 20, 2013)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wahl
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Serial No. 85485701
_____

Matthew H. Swyers of The Trademark Company, PLLC,
for Candace J. Wahl.
Jennifer D. Richardson, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Bucher, Ritchie and Lykos,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Candace J. Wahl (“applicant”), a U.S. citizen and resident of North Hollywood,
California, seeks registration on the Principal Register of the mark FLUTTER
FAERIES (in standard character format) for “doll accessories; dolls,” in International
Class 28.1

1 Application Serial No. 85485701 was filed on December 2, 2011, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Act. No claim is made to the exclusive right to use the word “Faeries” apart from the mark
as shown.
Serial No. 85485701
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The examining attorney has taken the position that applicant’s mark so
resembles the following registered marks (the registrations being owned by
unrelated parties), as to be likely to cause confusion, to cause mistake or to deceive
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), when the respective
marks are used in connection with the various identified goods:
Flitter Fairies for “fantasy character toys” in International Class 28;2 and
FLUTTER BEARS for “stuffed animals” in International Class 28; 3

When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry

2 Registration No. 3670819 issued to William Mark Corporation on August 18, 2009. No
claim is made to the exclusive right to use the word “Fairies” apart from the mark as
shown.
3 Registration No. 2806925 issued to PBC International, Inc. on January 20, 2004; Section 8
affidavit (six-year) accepted and Section 15 affidavit acknowledged. No claim is made to the
exclusive right to use the word “Bears” apart from the mark as shown.
Serial No. 85485701
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mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
Registration No. 3670819:
Flitter Fairies for “fantasy character toys”

A. Comparison of the Marks
Applicant has applied to register the mark FLUTTER FAERIES. The
registered mark is Flitter Fairies. In comparing the marks, we must consider the
marks in their entireties as to appearance, sound, connotation and commercial
impression, to determine the similarity or dissimilarity between them. du Pont, 177
USPQ at 567, Palm Bay, 73 USPQ2d at 1692. The test, under the first du Pont
factor, is not whether the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the source of the goods
offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform
Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). Because the similarity or dissimilarity of
the marks is determined based on the marks in their entireties, the analysis cannot
be predicated on dissecting the marks into their various components; that is, the
decision must be based on the entire marks, not just part of the marks. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). On the
other hand, there is nothing improper in stating that, for rational reasons, more or
Serial No. 85485701
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less weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re National
Data Corp., 224 USPQ at 751. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant argues that these marks have different appearances inasmuch as its
leading word is “Flutter” while the ’819 registration leads with the word “Flitter.”
By contrast, the examining attorney contends that the two marks are
confusingly similar because the marks differ visually by only two letters (the letter
“u” in the word “Flutter” and the letter “i” in the word “Flitter,” and the letter “e” in
“Faeries” vs. the letter “i” in the word “Fairies”). As to sound, the marks have only a
small difference in the vowel sound of the first word inasmuch as the words contain
six identical letters. As to connotation, the examining attorney demonstrated with
dictionary entries that the words “FLUTTER” and “FLITTER” are synonyms, and
points out that the words “FAERIES” and “FAIRIES” are merely alternate spellings
of the same word. “Thus, the overall commercial impression of the marks is the
same, as the marks both convey [the impression] that the goods flutter or flitter
about (such as by wings) and feature fairy-like characteristics.” Examining
attorney’s brief at 5.
We agree with the examining attorney that these minor visual and aural
dissimilarities between these two marks are far outweighed by the strong
Serial No. 85485701
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similarities as to connotations and overall commercial impressions, and this critical
du Pont factor favors a finding of likelihood of confusion.
B. Relationship of the Goods, Trade Channels and Common Purchasers
We next turn our attention to an evaluation of the relationship of the goods in
the cited registration to the goods identified in the application. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the
respective goods be identical or even competitive in order to find that they are
related for purposes of our likelihood of confusion analysis. That is, the issue is not
whether consumers would confuse the goods themselves, but rather whether they
would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984). The goods need only be sufficiently related that consumers would be
likely to assume, upon encountering the goods under similar marks, that the goods
originate from, are sponsored or authorized by, or are otherwise connected to the
same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The goods identified in the FLUTTER FAERIES application are “dolls” and “doll
accessories.” The goods in the cited registration are “fantasy character toys.”
Applicant argues that these goods are considerably different:
The Applicant uses its mark exclusively in connection
with half butterfly, half fairy dolls and associated
accessories. Applicant’s dolls may include a cocoon for the
Serial No. 85485701
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doll to live in, as well as removable butterfly wings made
from materials such as: silk, feathers or fabric.
Applicant’s dolls are fashion dolls with clothing changes,
jewelry, and accessories and do not have battery-operated
wings or other battery-operated moving parts. See
Exhibit 1, Affidavit of Candace Wahl. Alternatively, the
cited mark for FLITTER FAIRIES owned by the William
Mark Corporation is used only in connection with a flying
fantasy toy, which has battery-operated moving wings
and comes with a wand to help it fly. The William Mark's
toys main feature is the flying function, not changeable
doll accessories, clothing or jewelry. See Exhibit B of
Exhibit 1, Affidavit of Candace Wahl.
As noted above, this du Pont factor must be based on the identifications of the
respective goods as listed in the application and registration at issue, not on
extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc.,
16 USPQ2d at 1787. Moreover, unrestricted and broad identifications are presumed
to encompass all goods of the type described. See In re Jump Designs, LLC, 80
USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB
1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Based on this
guidance, the examining attorney argues that we must presume that applicant’s
“dolls” and “doll accessories” and registrant’s “fantasy character toys” will be
available to the same classes of purchasers.
In addition to employing dictionary definitions (e.g., a “doll” is actually “a
children’s toy in the shape of a small person”) to support the logic that registrant’s
“fantasy character toys” must be presumed to include applicant’s “dolls,” the
examining attorney also included the following screenshots to establish that
Serial No. 85485701
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“fantasy character dolls” are a subset of “dolls,” and that consumers are accustomed
to encountering “dolls” and “doll accessories” in the same trade channels in the
marketplace as toys generally:
pcBangles
ooak artist bears and other characters. Unique
patterns created and designed by Angela Jardine.
Tuesday, 16 August 2011
New Fantasy character dolls
Here’s the first in my new Fantasy
Character Range. Gambol is a cloth
sculpture, 24 inch dwarf.

He has a rugged needle sculpted and
hand painted face with a tumbling beard.

me

a bear maker and crafter!

Pages
Home
Hug of bears
Bears in the
Workshop
Patterns

Blog
Archive

5

In 1994 she began creating the Tiny Fantasies collection. This is a series of
fantasy characters that are much smaller than the Fairyland characters. The Tiny
Fantasies characters were envisioned as fill in characters to be used to fill out a
fantasy scene. These characters were designed so that they could be sold at a
price which would allow the collector to include several of them in a larger
fantasy scene. For these reasons the majority of the Tiny Fantasies characters
are limited only by the fact that all are individually handmade by the artist.
In 1992 after returning from Australia Marsha began creating her Fairyland Dolls
collections. This is a series of collections of 1 inch scale fantasy character dolls.
The collections are grouped by the type of character and each character is
produced in a Limited Edition. Marsha also began creating hand painted china
for the miniature collector in 1992. Her china is produced from molds falling into
two broad categories; Original sculpture, and Reduction. For more clarification
on these terms please refer to the FAQ page.
After using commercial molds for about 3 years she was encouraged to try her
hand at making her own original sculpture dolls. The first dolls which resulted
from her own sculptures were made in 1990. In 1991 she created the Forest
Fairies Collection for the miniature fair in Adelaide, South Australia. The Forest
Fairies are a collection of 20 1" scale children fairies produced in a Limited
Edition of 25 each. 6

5 Excerpts from http://www.barbiecollector.com/collection/more-fantasy-dolls as captured by
the examining attorney on April 3, 2012, attached to Office action of April 5, 2012.
6 Excerpt from http://www.porcelainfantasies.com/index.php?inc=24, as captured by the
examining attorney on October 25, 2012, attached to Office action of October 26, 2012.
Serial No. 85485701
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Here he is "guarding" my garden path.
Pass if you dare!

Gambol has fixed legs to enable him to
stand and jointed head and arms. His
fingers are wired so that he can keep his
weapon ready.
More fantasy characters will be joining
pcBangles shortly for sale and
commissions can be taken too : )
You can see all my dolls,
bears and fancies here  4

7
8

4 Reprint of web pages from http://pcbangles.blogspot.com/, as captured by the examining
attorney on October 25, 2012, attached to Office action of October 26, 2012.
7 http://www.disneystore.com/toys/dolls/mn/1000259/?CMP=KNC-
DSPDollsGoogle&s?kwcid=TC%7c12111%7ctoys%2520dolls%7c%7cS%7cb%7c11608977072
as captured by the examining attorney on April 3, 2012, attached to Office action of April 5,
2012.
8 Excerpt from http://www.ehow.com/how_6503985_make-fantasy-fairy-dolls.html, as
captured by the examining attorney on October 25, 2012, attached to Office action of
October 26, 2012.
Serial No. 85485701
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9 10
The examining attorney also points to copies of use-based, third-party
registrations (all attached to the Office action of October 26, 2012), suggesting that
the respective goods (“dolls” and “doll accessories” versus “fantasy character toys”)
are of a type which may emanate from a single source. In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993):
HAPPINESS
IN SMALL HANDS
for, inter alia, “ … doll accessories; doll cases; doll clothing;
doll costumes; dolls; dolls and accessories therefor; dolls
and playsets therefor; dolls for playing … fantasy character
toys ... ” in International Class 28;11
Elfling for, inter alia, “ … doll accessories; doll cases; doll clothing;
doll costumes; doll furniture; dolls; dolls and accessories
therefor; dolls and dolls’ clothing; dolls and playsets
therefor; dolls for Christmas; dolls for playing; dolls’
clothes; dolls’ houses; dolls’ rooms; fantasy character toys;
... ” in International Class 28;12

9 Reprint of Hammond Toy logo from http://www.hammondtoy.com/ as captured by the
examining attorney on April 3, 2012, attached to Office action of April 5, 2012.
10 Reprint of Today’s Dolls and Toys logo from http://www.todaysdollsandtoys.com/ as
captured by the examining attorney on April 3, 2012, attached to Office action of April 5,
2012.
11 Registration No. 3528740 issued on November 4, 2008.
12 Registration No. 3639143 issued on June 16, 2009.
Serial No. 85485701
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for, inter alia, “collectable toy figures; doll accessories; doll
clothing; dolls; dolls and accessories therefor; dolls and
playsets therefor; fantasy character toys … ” in
International Class 28;13
P.J. SPARKLES for “dolls; doll accessories; fantasy character playsets
consisting of miniature environments and associated
characters, figures, and objects; fantasy character toys” in
International Class 28;14
BABY GENIUS for, inter alia, “ … doll accessories; doll cases; doll furniture;
doll houses; dolls; dolls and accessories therefor; dolls and
doll accessories … fantasy character toys … ” in
International Class 28;15

for “toys, games and playthings, namely, dolls and doll
accessories; plush toys; fantasy character toys; musical and
talking toys and accessories therefor; party games” in
International Class 28;16
TEACUP PIGGY for, inter alia, “ … dolls and doll accessories, namely,
clothing for dolls, doll rooms, doll beds, doll houses, toy
fabrics and linens for dolls and strollers for dolls; … fantasy
character toys … ” in International Class 28;17
Ninja Mom for, inter alia, “ … dolls and doll accessories, namely,
clothing for dolls; … fantasy character toys … ” in
International Class 28;18 and
ANGRY DOLL for, inter alia, “ … doll accessories; doll houses; dolls; dolls
and accessories therefor; dolls and doll accessories, namely,
clothing for dolls, doll rooms, doll beds, doll houses, toy
fabrics and linens for dolls and strollers for dolls; dolls for
Christmas; dolls for playing; … fantasy character toys … ”
in International Class 28.19

13 Registration No. 3894917 issued on December 21, 2010.
14 Registration No. 3610275 issued on April 21, 2009.
15 Registration No. 4093126 issued on January 31, 2012. No claim is made to the exclusive
right to use the word “Baby” apart from the mark as shown.
16 Registration No. 4120975 issued on April 3. 2012.
17 Registration No. 4165057 issued on June 26, 2012. No claim is made to the exclusive
right to use the word “Piggy” apart from the mark as shown.
18 Registration No. 4147324 issued on May 22, 2012.
19 Registration No. 4149243 issued on May 29, 2012. No claim is made to the exclusive right
to use the word “Doll” apart from the mark as shown.
Serial No. 85485701
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From the totality of this evidence, we find an overlap between applicant’s “dolls”
and registrant’s “fantasy character toys.” Furthermore, absent restrictions in the
application and registration, the identified goods are “presumed to travel in the
same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. 62
USPQ2d at 1005). Evidence from third-party registrations and from Internet
websites supports the conclusion that consumers are accustomed to encountering
“dolls,” “doll accessories,” and “fantasy character toys” sold under the same mark
and/or sold through the same channels of trade. Hence, applicant’s “dolls” and “doll
accessories” are considered closely related to registrant’s “fantasy character toys,”
and these several du Pont factors weigh in favor of a finding of likelihood of
confusion.
C. Third-party Uses
As to the strength of the cited mark, the sixth du Pont factor requires
consideration of any evidence pertaining to the number and nature of similar marks
in use on similar goods or services. Based upon at least sixteen extant federal
trademark registrations20 having marks (shown in table below) incorporating
variations on the terms “Flutter,” “Fairy/Fairies” or “Flitter,” on goods in
International Classes 16 and 28, applicant argues that the cited mark is
commercially weak:

20 Registration No. 3159200 has been cancelled and Registration No. 4004739 issued under
Section 44(e) of the Act.
Serial No. 85485701
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FLUTTERBYE FAIRY FLOWER ’N FLUTTER HEARTS-A-FLUTTER
FLUTTERSHY Flutter Pro E Z FLUTTER
FLUTTERFRENZY FLUTTER FLICKER
GARDEN FAIRIES FAIRY-ETTES FAIRYFLY
DISNEY FAIRIES HORSEFAIRIES FOLLOW-ME FAIRIES
GEM FAIRIES FLITTER DOODLES

Of course, third-party registrations by themselves are not evidence of actual
use of the marks and we therefore cannot conclude that consumers are even
familiar with these registered marks. Bearing this in mind, we clearly cannot say
that consumers have become accustomed to the existence of similar marks in the
marketplace and are thus able to distinguish between similar marks based on
slight differences. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216
USPQ 989 (TTAB 1982).
Additionally, the correct focus of this du Pont factor is actually on registrant’s
cited registration for the mark Flitter Fairies. The word “Fairies” is disclaimed in
this registration, and the only third-party mark above with the word “Flitter” is
FLITTER DOODLES, used in connection with “craft kits for children containing
coloring supplies and glitter” – goods quite different from registrant’s identified
goods. While it is true that the cited registered mark has co-existed and continues to
co-exist with a number of marks containing the words “Flutter” or “Fairies” within
composite marks registered for goods in International Classes 16 and 28, none of
these marks is as similar to registrant’s mark as is applicant’s mark. Moreover,
even within these two classes of goods, some of the goods involved in these third-
Serial No. 85485701
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party registrations (having applicant’s “Flutter” formative) are not related to toys
and dolls (e.g., Flutter Pro for “artificial fishing lures,” E Z FLUTTER for “hunting
game calls,” and FLUTTER FLICKER for “confetti”). Finally, we note that most of
these composite marks contain other distinguishing matter, creating quite
disparate commercial impressions (e.g., HEARTS-A-FLUTTER, GARDEN FAIRIES,
HORSEFAIRIES, DISNEY FAIRIES, etc.).
Accordingly, to the extent that applicant seeks to persuade us that the cited
registered mark is commercially weak, we remain unconvinced based upon the
totality of this record, and we find this to be, at best for applicant, a neutral du Pont
factor.
D. Conditions Surrounding Sales
The fourth du Pont factor focuses on the conditions under which and buyers to
whom sales are made, i.e., “impulse” versus careful, sophisticated purchasing.
Applicant argues that its goods are marketed to girls between the ages of five-
and ten-years old, who are seeking a unique fashion doll with changeable
accessories, clothing, and jewelry, priced at $10.00 to $40.00 apiece. Applicant
represents that registrant’s toys are priced around $20.00 apiece. Given the ages of
the children, the relatively low price points of the goods at retail, and the striking
similarity of the marks, we are not convinced that purchasers of applicant’s and
registrant’s goods will be at all sophisticated or discerning consumers. Moreover, in
light of the relatively inexpensive nature of these goods, even the parent or other
consumer who intends to purchase a Flitter Fairies fantasy character toy at the
Serial No. 85485701
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behest of a young child cannot be presumed to be sophisticated enough to avoid the
purchase of applicant’s FLUTTER FAERIES merchandise by mistake. At best for
applicant, this du Pont factor is deemed to be neutral.
E. Lack of Actual Confusion
As to the eighth du Pont factor, applicant argues that she is not aware of any
instances of actual confusion as to the source of these respective goods despite her
having used the mark FLUTTER FAERIES since 2000 in connection with stationery
and paper goods21 in a contemporaneous fashion with registrant’s use of its Flitter
Fairies mark on both toys and unspecified paper products.
However, applicant’s cancelled registration is not evidence of anything except
that it issued, Time Warner Entertainment. Co. v. Jones, 65 USPQ2d 1650, 1654 n.6
(TTAB 2002), and the alleged absence of likelihood of confusion based upon her
prior usage of the mark in connection with stationery and paper goods is irrelevant
to the determination before us.
Even in the hypothetical case where applicant would have established
contemporaneous usage of similar marks on closely-related goods, “[t]he fact that an
applicant in an ex parte case is unaware of any instances of actual confusion is
generally entitled to little probative weight in the likelihood of confusion analysis,
inasmuch as the Board in such cases generally has no way to know whether the
registrant likewise is unaware of any instances of actual confusion … .” In re Opus

21 Registration No. 2720825 for the FLUTTER FAERIES mark (registered in connection
with stationery and other paper goods such as calendars, and notebooks in International
Class 16) issued on June 3, 2003 and was cancelled under Section 8 of the Act in 2010.
Serial No. 85485701
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One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). Furthermore, beyond the challenge
of considering the possible relevance of contemporaneous marketing of admittedly
different goods (e.g., registrant’s fantasy character toys versus applicant’s alleged
stationery and paper goods), there is no evidence about the nature, extent or
substantial geographical overlap of applicant’s and registrant’s actual usage of their
marks in the marketplace on any type of goods so as to render the apparent absence
of actual confusion legally significant. See In re Thomas, 79 USPQ2d 1021, 1028
(TTAB 2006); In re Continental Graphics Corp., 52 USPQ2d 1377 (TTAB 1999);
Gillette Canada, Inc. v. Ranir, 23 USPQ2d 1768 (TTAB 1992).
Finally, we do note that actual confusion is not necessary to show a likelihood of
confusion. See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 396 (Fed. Cir. 1983).
Accordingly, we conclude that the eighth du Pont factor is neutral in this case.
F. Balancing the factors
In view of the facts that the cited registered mark has not been shown to be
diluted, the fact the marks are quite similar, and the fact the goods are closely
related, if not overlapping, we find that applicant’s registration of the mark
FLUTTER FAERIES for dolls is likely to cause confusion with the cited Flitter
Fairies for fantasy character toys. Any other du Pont factors, at best for applicant,
are neutral. Inasmuch as registration must be refused on the basis of this finding,
we need not address whether there is a likelihood of confusion with respect to the
Serial No. 85485701
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cited mark FLUTTER BEARS (Registration No. 2806925), registered in connection
with stuffed animals.
Decision: The refusal to register applicant’s mark under Section 2(d) of the
Trademark Act based on Registration No. 3670819 is hereby affirmed.