Tomy America, Inc.

Trademark Trial and Appeal Board

Sep 24, 1998

No. 74607594 (T.T.A.B. Sep. 24, 1998)

Paper No. 21
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tomy America, Inc.
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Serial No. 74/607,594
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G. Donald Weber, Jr. for Tomy America, Inc.
Susan J. Kastriner, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Tomy America, Inc. has filed an application to
register the mark “BIG FUN” for goods which were
subsequently identified as:
Toys for preschool or kindergarten age children,
namely, plush toys, remote or radio controlled
action toys which move and make sounds, push
or pull toys which move and make sounds,
battery operated action toys, spring actuated
action toys which move or make sounds, multiple
activity toys and building blocks, board games
and manipulative and jigsaw puzzles, ride-on
toys and picture and image making toys namely,
Ser No. 74/607,594
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a toy comprising a board and light conducting
pegs which connect therewith to form various
pictures and a toy consisting of a carry case
and two pages supported therein at an angle
to one another such that the first page
supports an image which is projected through
the second page to enable the user to trace the
image.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the previously registered
mark BIG FUN SOUNDS for “children’s illustrated storybooks
combined with electronic sound-emitting devices, sold as
units, for the purpose of enabling children to play sound
effects and music corresponding to the contents of said
books,”2 as to be likely to cause confusion. Applicant and
the Examining Attorney have filed briefs.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. With respect to the
goods, although the involved goods are different, the issue
to be determined here is not whether the goods are likely
to be confused, but rather whether there is a
likelihood that the public will be misled into the belief

1 Application Serial No. 74/607,594 filed December 6, 1994,
alleging a bona fide intention to use the mark in commerce.
2 Registration No. 1,903,555 issued July 4, 1995.
Ser No. 74/607,594
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that they emanate from the same source. Thus, goods need
not be identical or even competitive in nature to support a
finding of likelihood of confusion. It is sufficient for
the purpose that the goods are related in some way and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under circumstances that could give rise, because
of the marks used thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. Chemical New York Corp. v. Conmar Form Systems,
Inc., 1 USPQ2d 1139, 1143 (TTAB 1986).
In the present case, we find that applicant’s toys for
preschool and kindergarten age children and registrant’s
children’s illustrated storybooks combined with electronic
sound-emitting devices, sold as units are related goods.
These products, which are designed to entertain and educate
young children, are normally sold in toy stores and the toy
department of retail stores. Also, the purchasers of these
goods are the same, namely adults and children. See
Questor Corp. v. Dan Robbins & Associates, Inc., 199 USPQ
358 (TTAB 1978), aff’d 599 F.2d 1009, 202 USPQ 100 (CCPA
1979) [toys and children’s books are related goods]. While
adults may well be the primary purchasers of these kinds of
goods, it does not follow that adults will exercise more
Ser No. 74/607,594
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than ordinary care in purchasing the goods, particularly in
view of the relatively low cost of these kinds of goods.
In addition, the Examining Attorney made of record
several registrations which indicate that entities have
registered a single mark for toys on the one hand, and
children’s books on the other. Such registrations serve to
suggest that goods of the type involved in this appeal may
emanate from a single source under the same mark. In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Turning then to the marks, we find that the commercial
impressions engendered by BIG FUN and BIG FUN SOUNDS to be
sufficiently similar that when the marks are used in
connection with related products, consumers are likely to
be confused. Registrant’s mark BIG FUN SOUNDS connotes
that its children’s illustrated storybooks produce sounds
which are big fun. This is similar to the connotation of
applicant’s mark BIG FUN which is that the preschool and
kindergarten age toys sold under its mark are big fun. In
finding that the marks are similar, we have kept in mind
the normal fallibility of human memory over time and the
fact that the average consumer retains a general rather
than a specific impression of trademarks encountered in the
marketplace.
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In sum, we find that consumers familiar with
registrant’s children’s illustrated storybooks combined
with electronic sound emitting-devices, sold as units, and
sold under the mark BIG FUN SOUNDS would be likely to
believe, upon encountering applicant’s mark BIG FUN for
preschool and kindergarten age toys, that the toys
originated with or were somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.
E. W. Hanak
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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