Gi-Go Toys Factory Ltd.

Trademark Trial and Appeal Board

Jun 18, 2002

No. 76000138 (T.T.A.B. Jun. 18, 2002)

Mailed: 18 JUN 2002
Paper No. 10
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gi-Go Toys Factory Ltd.
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Serial No. 76/000,138
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Anthony O. Cormier, Esq. for Gi-Go Toys Factory Ltd.

Rebecca A. Smith, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Hanak, Bucher and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 15, 2000, Gi-Go Toys Factory Ltd. (applicant)
filed an application1 to register the mark MY LITTLE DREAM
GIRL, in typed form, on the Principal Register for goods
identified as “dolls and doll accessories” in International
Class 28.
The Examining Attorney refused to register the mark on
the ground that there would be a likelihood of confusion

1 Serial No. 76/000,138. The application contains an allegation
of applicant’s bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/000,138

2
between applicant’s mark for its goods and the mark DREAM
GIRL, in typed form, for “dolls, doll clothing and doll
accessories” in International Class 28.2
After the examining attorney made the refusal final,
this appeal followed. Both applicant and the examining
attorney filed briefs. An oral hearing was not requested.
The examining attorney’s position is that the marks
are highly similar in that applicant has taken the
registered mark DREAM GIRL and merely added the words “My
Little” to registrant’s mark. “The terms ‘MY LITTLE’
comprise subordinate matter since the dominant portion of
the marks are the terms DREAM GIRL. These terms add little
to the mark and consumers are likely to remember the terms
‘dream girl’ when calling for the goods.” Examining
Attorney’s Br. at 5. When applicant’s identification of
goods is for goods identical to those found in the
identification of goods in the registered mark (dolls and
doll accessories), the examining attorney held that there
would be a likelihood of confusion.
Applicant, on the other hand, argues “DREAM GIRL
implies a young women whom a suitor would desire or about
whom a suitor would have a fanciful vision. The addition
of the words MY LITTLE changes the reverie entirely. With

2 Registration No. 2,084,474, issued July 29, 1997.
Ser No. 76/000,138

3
those words added the subject suggested becomes a child
rather than a young women.” Applicant’s Br. at 6.
Applicant concludes by arguing that “[s]ince in this case
the field is extremely crowded and since the marks are
different in both composition and suggestive meaning, …
there is no compelling reason to infer likelihood of
confusion.” Id. at 7.
We affirm the refusal to register under Section 2(d).
Determining whether there is a likelihood of confusion
requires consideration of the factors set forth in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). See also Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 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).
The first factor we will consider is whether the goods
are related. In this case, applicant’s goods are dolls and
doll accessories. These identical goods are included in
registrant’s identification of goods (dolls, doll clothing
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and doll accessories). “Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.” Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). Since both the goods of
registrant and applicant include dolls and doll
accessories, we must assume that these goods would move
through all normal channels of trade and be sold to the
same consumers. See Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation here, and nothing in the inherent nature of
Squitco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The board, thus,
improperly read limitations into the registration”).
Next, we consider whether the marks are similar in
sound, appearance, meaning or commercial impression. du
Pont, 177 USPQ at 567. Registrant’s mark is DREAM GIRL;
applicant’s mark is MY LITTLE DREAM GIRL. Applicant has
taken the entire registered mark and added the words “My
Little” to it. We agree with applicant’s point that ”the
effect of adding or deleting a term must depend on the
facts of each case.” Applicant’s Br. at 5. However,
“there is a general rule that a subsequent user may not
appropriate another’s entire mark and avoid a likelihood of
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confusion therewith by merely adding descriptive or
otherwise subordinate material to it. An exception may be
found in those cases where the appropriated mark is highly
suggestive or descriptive or has been frequently used by
others in the field for the same or related goods or
services.” In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984)
(citations omitted).
Applicant argues that its “evidence” shows “the
extremely common usage of the words as trademarks and thus
the limited scope of protection of the word as trademarks.”
Applicant’s Br. at 5. We disagree. Applicant has
submitted printouts of records from the Office’s automated
database3 from which applicant concludes that the registered

3 The examining attorney states that “applicant has provided
copies of registered marks” (Office action dated May 31, 2001, p.
2) and “applicant has provided copies of registrations”
(Examining Attorney’s Br. at 4). If applicant has provided
copies of the registrations or registered marks, they are not in
the file. What applicant itself says it has provided are three
exhibits consisting of lists of records from “a TESS search.”
Applicant’s Br. at 6. Exhibit A is a list of 50 of 3124 records
containing the word “dream” or “dreams;” Exhibit B is a list of
the first 50 of 3210 records containing the word “girl” or
“girls; ” and Exhibit C is a list of 20 records containing the
words “dream girls.”
The examining attorney does not object to the lists or
advise applicant that a mere listing of registrations is not
sufficient to make them of record. In re Hub Distributing, Inc.,
218 USPQ 284, 285 (TTAB 1983) (“[W]e do not consider a copy of a
search report to be credible evidence of the existence of the
registrations and the uses listed therein”); See also In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994); In re
Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). We, therefore,
accept the lists for whatever probative value they may have.
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mark is weak. The probative value of these lists is near
zero. The lists themselves consist of columns containing
the serial number, the registration number, the mark, and a
Live/Dead indicator. Lists A and B do not contain a single
registration number. The fact that an application has been
filed with the Office hardly justifies the registration of
applicant’s mark. Exhibit C lists 9 applications and 11
registrations. Six of the nine applications are listed as
“dead.” One application is applicant’s. Of the eleven
registrations listed, six are identified as dead and one is
the cited registration. “[A] canceled registration does
not provide constructive notice of anything.” Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307, 1309 (Fed. Cir. 1989). Furthermore, it is
not surprising that a mark can register over an expired
registration. Therefore, applicant’s evidence consists of
the fact that there are a total of four other registrations
for the term “DREAM GIRL” in all classes of goods and
services. This is hardly noteworthy. If the evidence of
four other registrations in all classes for the same term
is at all relevant, it would tend to support the strength
of the term, and not its weakness. Even if these lists
demonstrated that the cited mark is weak, it is still
entitled to protection when very similar marks are used on
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the identical goods. In re Colonial Stores, Inc., 216 USPQ
793, 795 (TTAB 1982) (“[E]ven weak marks are entitled to
protection against registration of similar marks”).
The only difference between the marks is the
additional term “My Little” in applicant’s mark. Applicant
argues that this creates different commercial impressions,
with the registered mark suggesting a young woman and
applicant’s mark suggesting an infant girl. We do not see
that the commercial impressions of the marks are
significantly different. The term “girl” in the registered
mark is not limited to a girl of any particular age so the
commercial impressions of the marks could be the same, a
girl who is a dream. Applicant’s addition of the “My
Little” to “Dream Girl” simply provides subordinate
information about the dolls. His additional language may
also suggest that the dolls are a smaller version of the
original dolls. Even a much more incongruous use of the
term “little” did not avoid a likelihood of confusion.
Rexel, 223 USPQ at 832 (LITTLE GOLIATH for stapler kits
held to be confusingly similar to GOLIATH for pencils
despite the claim that “Little” combined with “Goliath” was
not subordinate matter because it was oxymoronic).
Therefore, the addition of the words “My Little” does not
change the commercial impression of the marks. They look
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and sound similar and they would have similar meanings.
See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997)(holding that THE DELTA CAFE and
design was confusingly similar to DELTA; more weight given
to common dominant word DELTA). See also Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977)(CALIFORNIA CONCEPT and design held likely to be
confused with CONCEPT for hair care products); Squirtco,
216 USPQ at 939 (“The marks SQUIRT and SQUIRT SQUAD are,
however, of such similarity that they are more likely to
create confusion than prevent it”). A prospective
purchaser could easily believe that there is a common
source for dolls and doll accessories sold under the marks
DREAM GIRL and MY LITTLE DREAM GIRL.
Another factor that supports our conclusion is the
principle that, “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). Here, applicant’s goods are identical to goods in
the registered mark. Therefore, the marks do not need to
be as close to find that there is a likelihood of
confusion.
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Finally, even if we had doubts about the issue of
likelihood of confusion, we must resolve them against
applicant.
If there be doubt on the issue of likelihood of
confusion, the familiar rule in trademark cases, which
this court has consistently applied since its creation
in 1929, is that it must be resolved against the
newcomer or in favor of the prior user or registrant.
The rule is usually applied in inter partes cases but
it applies equally to ex parte rejections.

In re Pneumatiques, Caoutchouc Manufacture et Platitudes
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA
1973). See also Dixie Restaurants, 41 USPQ at 1535 (“Dixie
argues alternatively that the PTO should pass the mark to
publication and allow the registrant to oppose the
applicant's mark, if it chooses. But it is the duty of the
PTO and this court to determine whether there is a
likelihood of confusion between two marks”).
Therefore, when the marks DREAM GIRL and MY LITTLE
DREAM GIRL are used on dolls and doll accessories, there
would be a likelihood of confusion.
Decision: The Examining Attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registration under
Section 2(d) of the Trademark Act is affirmed.