Mattel, Inc.v.Funline Merchandise Co., Inc.

Trademark Trial and Appeal Board

Nov 7, 2006

No. 92040128 (T.T.A.B. Nov. 7, 2006)

Hearing: Mailed: November 7, 2006
April 13, 2006 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mattel, Inc.
v.
Funline Merchandise Co., Inc.
_____

Cancellation No. 92040128
_____

Jill M. Petrini and Jonathan M. Eisenberg of Manatt, Phelps
& Phillips, LLP for Mattel, Inc.

Thomas Yong of Law Offices of Thomas Yong for Funline
Merchandise Co., Inc.
_____

Before Hairston, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

A petition has been filed by Mattel, Inc. to cancel the
registration issued to Funline Merchandise Co., Inc. for the
mark RAD RODS (RODS is disclaimed) as reproduced below,

THIS OPINION IS
CITABLE AS PRECEDENT OF
THE TTAB
Cancellation No. 92040128
2
for “mechanical action toy vehicles.”1
As grounds for cancellation, petitioner asserts that
for many years, it has been engaged in the manufacture and
sale of toys; that it is the owner of Registration No.
2,397,901 for the mark RAD RIGS (RIGS is disclaimed) for
“toy vehicles and accessories therefor,”2 and that, due to
the similarity between petitioner’s RAD RIGS mark and
respondent’s RAD RODS mark and the related nature of the
goods, respondent’s mark is likely to cause confusion with
petitioner’s mark RAD RIGS.3
Respondent, in its answer, admits that petitioner sells
toys and that petitioner is the owner of the pleaded

1 Registration No. 2,425,096 issued January 31, 2001 from an
application filed January 8, 2000, claiming dates of first use
and first use in commerce of June 1, 1999.
2 Issued October 24, 2000 from an application filed November 18,
1999, claiming first use and first use in commerce in November
1998. Office records do not indicate that the required Section 8
affidavit was filed by the deadline of October 24, 2006.
However, in view of the fact that a Section 8 affidavit may be
filed within a six-month grace period after the deadline, we have
treated this registration as still being in effect.
3 Petitioner also alleged ownership of Registration No. 2,304,857
for the mark RADICAL RIDES for “toy vehicles and toy vehicle
accessories” and a likelihood of confusion with this mark. While
a certified copy of this registration was made of record which
shows that the registration is subsisting and owned by
petitioner, USPTO records show that this registration has been
cancelled for failure to file a Section 8 affidavit. Thus,
petitioner’s claim of likelihood of confusion is moot with
respect to this registration. Further, petitioner alleged that
“Registrant’s mark RAD RODS should not have been permitted in
view of Petitioner’s family of ‘RADICAL’ and ‘RAD’ marks.”
(Petition at ¶4). Suffice it to say that the evidence offered by
petitioner with respect to its use of “RADICAL” and “RAD” marks
is insufficient to establish that petitioner owns a family of
marks characterized by either the term “RADICAL” or “RAD.”
Cancellation No. 92040128
3
registration. Respondent denies the remaining allegations
of the petition to cancel.4
The record consists of the pleadings; the file of the
involved registration; the testimony depositions (with
exhibits) of petitioner’s witnesses, John Buchanan and Kathy
Nordgreen; and petitioner’s notice of reliance on, inter
alia, a certified status and title copy of petitioner’s
pleaded Registration No. 2,397,901, respondent’s responses
to petitioner’s discovery requests, and copies of newspaper
articles. Respondent did not take testimony; however, it
did submit a notice of reliance on two third-party
registrations.
Only petitioner filed a brief herein and only
petitioner’s counsel appeared at the oral hearing.
Petitioner’s senior brand manager, John Buchanan,
testified that he is responsible for all marketing and
product development for petitioner’s “Hot Wheels” brand of
toy vehicles and accessories. (Dep. at 8). Petitioner
first marketed a “Hot Wheels” 5-car pack with an assortment
of products called RAD RIGS in 1997. (Dep. at 11). The
products are 1:64 scale vehicles which are sold to retailers
in the United States. The RAD RIGS mark is used on the

4 Respondent also asserted the affirmative defenses of laches,
acquiescence, estoppel and unclean hands. Respondent presented
no argument in support of these defenses, and the defenses are
not supported by the evidence of record.
Cancellation No. 92040128
4
product package. (Dep. at 10-11). Petitioner has
advertised the RAD RIGS products in its catalogs and
displayed them at trade shows. (Dep. at 12). Petitioner is
not currently marketing the line of RAD RIGS brand 5-car
assortment packs; however, these kinds of products generally
stay on store shelves for about two years after the end of
production. (Dep. at 15). There is also a secondary market
for RAD RIGS products consisting of collector and hobby
stores and websites where the products are currently sold.
(Dep. at 16).
The little information we have about respondent and its
goods comes from respondent’s responses to petitioner’s
discovery requests. Respondent’s goods are “1:43 Scale die-
cast mechanical action toy vehicles and 1:64 Scale toy
vehicles” and the “vehicles have oversized engines and giant
tires and come in various colors.” (Interrogatory Response
No. 1). Respondent’s first sale of its goods was March 24,
1999. (Interrogatory Response No. 2). Respondent’s RAD
RODS mark appears on the product packaging, and on cards
accompanying the goods. (Interrogatory Response No. 5).
Insofar as priority is concerned, the evidence of
record establishes petitioner’s use of the mark RAD RIGS for
toy vehicles and accessories since prior to respondent’s
first use of the mark RAD RODS for mechanical action toy
vehicles. Thus, priority rests with petitioner.
Cancellation No. 92040128
5
We turn then to the issue of whether respondent’s mark
RAD RODS for its identified goods so resembles petitioner’s
mark RAD RIGS for its identified goods as to be likely to
cause confusion, mistake or deception.
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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/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).
Considering first the goods of the parties, it is well
established that the issue of likelihood of confusion in a
proceeding such as this must be determined on the basis of
the identification of goods or services set forth in
defendant’s involved registration vis-à-vis the
identification of goods or services in plaintiff’s
registration. See Octocom Services Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cancellation No. 92040128
6
Cir. 1990); and Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Because the
identification in petitioner’s registration reads “toy
vehicles and accessories,” without any limitations as to
specific types of toy vehicles, we must presume, for
purposes herein, that petitioner uses its mark on toy
vehicles of all types, including the type set forth in
respondent’s registration, namely, “mechanical action toy
vehicles.” Further, in the absence of any limitations in
either petitioner’s registration or respondent’s
registration with respect to channels of trade, or classes
of purchasers, we must assume that petitioner and respondent
sell their respective goods in all of the usual trade
channels for goods of this type, e.g., toy stores and mass
merchandisers, to all normal classes of customers therefor,
e.g., children and adults. Accordingly, we can draw no
legal distinction between the parties’ goods, trade channels
and classes of customers. Indeed, respondent states that
“Funline’s trademarked RAD RODS products are marketed and
promoted in the same or similar manner as Mattel’s products”
and that the users of respondent’s products are “persons
aged 5 and up.” (Interrogatory Responses Nos. 4 and 11).
Moreover, the “accessories” for toy vehicles specified in
petitioner’s registration are very closely related to
respondent’s mechanical action toy vehicles.
Cancellation No. 92040128
7
Turning then to the marks, we must determine whether
petitioner’s mark and respondent’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test 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 commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result. 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). Finally, where as in the present
case, the marks would appear on legally identical goods, the
degree of similarity between the marks which is necessary to
support a finding of likelihood of confusion declines.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2 14698 (Fed. Cir. 1992).
Cancellation No. 92040128
8
Applying these principles to the marks in the present
case, we find that respondent’s mark RAD RODS and
petitioner’s mark RAD RIGS, when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression are very similar.
In evaluating the similarity of the marks, we note the
significance of the disclaimed terms “rigs” and “rods” in
connection with the respective goods. In this regard, we
judicially notice that “rig” is defined as, inter alia, “a
tractor-trailer or, sometimes, the tractor alone.”
Webster’s New World College Dictionary (3d ed. 1997).5 In
addition, “rod” is defined as, inter alia, “[SLANG] short
for hot rod.” Id. Thus, each mark consists of the term RAD
followed by a one-syllable term which describes a type of
vehicle -– RIGS, in petitioner’s case, signifying a tractor-
trailer, and RODS, in respondent’s case, signifying a hot
rod. In view of the descriptive nature of the terms RIGS
and RODS, and because RAD is the first term in each mark, it
is the term RAD which dominates the commercial impression of
each mark and is entitled to greater weight in our
comparison of the marks.

5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Cancellation No. 92040128
9
Further, we note that because petitioner’s RAD RIGS
mark is registered in typed drawing or standard character
form, the depiction thereof is not limited to a particular
manner of display. See, e.g., Phillips Petroleum Co. v.
C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). Thus, the registration covers the use of the RAD
RIGS mark by petitioner in any reasonable style of
lettering, including the manner in which respondent depicts
its RAD RODS mark, which increases the visual similarity of
petitioner’s and respondent’s marks.
Although the marks are dissimilar to the extent that
the descriptive words RIGS and RODS differ in appearance and
sound, and do not have the identical meaning, due to the
shared use of the term RAD, the similarities between the
marks outweigh the dissimilarities. For the foregoing
reasons, we are the opinion that purchasers are likely to
believe that the source of RAD RODS mechanical action toy
vehicles is the same as, or is associated with, the source
of RAD RIGS toy vehicles and accessories.
The coexistence (for a limited period) of the two
third-party registrations submitted by respondent does not
persuade us to reach a different result herein. Respondent
submitted printouts of Registration No. 1,588,037 for the
mark RAD RODS for “toy vehicles” and Registration No.
Cancellation No. 92040128
10
1,398,672 for the mark RAD RIG for a “toy vehicle” from the
USPTO’s electronic records. Apart from the fact that the
printouts show that each registration has been canceled, it
is well settled that the determination of registrability of
those particular marks by the trademark examining attorneys
cannot control our decision in the case now before us. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001).
Accordingly, we conclude that respondent’s mark RAD
RODS, when applied to mechanical action toy vehicles, so
resembles petitioner’s mark RAD RIGS used on toy vehicles
and accessories therefor as to be likely to cause confusion,
or to cause mistake, or to deceive.
Decision: The petition to cancel is granted.