Monday, November 20, 2006

Citable No. 48: "RAD RIGS" and "RAD RODS" Confusingly Similar for Toy Vehicles, Says TTAB

In its 48th citable decision of 2006, the Board granted a petition for cancellation of a registration for the mark RAD RODS (Stylized) for "mechanical action toy vehicles" [RODS disclaimed], finding the mark likely to cause confusion with the registered mark RAD RIGS [RIGS disclaimed] for "toy vehicles and accessories therefor." Mattel, Inc. v. Funline Merchandise Co., 81 USPQ2d 1372 (TTAB 2006).

Petitioner Mattel established priority by proving use of its RAD RIGS mark since 1997, a date prior to Respondent Funline's first use date (1999). The Board noted that Mattel is not currently marketing RAD RIGS brand toys, but, according to Mattel, "these kinds of products generally stay on store shelves for about two years after the end of production." Moreover, "[t]here is also a secondary market for RAD RIGS products consisting of collector and hobby stores and websites where the products are currently sold."

The Board found the involved goods, trade channels, and classes of customers to be legally indistinguishable. As to the marks, the Board deemed the terms RODS and RIGS to be descriptive, and it found the term RAD to be dominant in both marks. Consequently, the Board concluded that the marks are "very similar" in appearance, sound, connotation, and commercial impression.

Finally, Respondent's submission of two third-party registrations for toy vehicles, one for RAD RODS and the other for RAD RIGS, did not alter the Board's thinking. Both registrations are now cancelled, and in any case, even though the two registrations co-existed on the register (from 1990 to 1992), "the determination of registrability of those particular marks by the trademark examining attorneys cannot control our decision in the case now before us."

The Board therefore granted the petition.

TTABlog comment: Why, you may ask, was this decision deemed citable? I think because its a "vehicle" for the Board to make its point about the two co-existing third-party registrations. The fact that Mattel is not currently marketing the goods was interesting, but was not further discussed by the Board.

Text Copyright John L. Welch 2006.


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