Thursday, December 07, 2006

Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal

In its 51st citable decision of 2006, the Board not surprisingly affirmed a Section 2(d) refusal to register the mark PSYCHO for clothing, in light of the registered mark PSYCHO for clothing. However, as to the PTO's mutilation refusal, the Board said "nuts." In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006).

Applicant's specimen of use

Likelihood of confusion: Applicant Big Pig, Inc. trotted out what may be the losingest TTAB argument: it attempted to limit the goods of its application and the cited registration by referring to the actual channels of trade and manner of use of the marks. [See Welch, "The Top Ten Losing TTAB Arguments"]. Big Pig asserted that its goods are sold only at its barbecue restaurants, and that Registrant's items are sold at skateboarding and sporting goods stores. The Board, of course, stated for the umpteenth time that the issue of likelihood of confusion must be determined in light of the goods as identified, "regardless of what the record may reveal as to the particular nature of the goods, their actual trade channels or the purchasers to which they are in fact directed and sold."

As to the marks, Big Pig imaginatively argued that the meaning of PSYCHO differs dramatically in the two marks, because its mark "connotes a sauce so spicy and delicious that it makes the diner crazy," whereas Registrant's mark relates to the extreme sport of skateboarding and "creates the implication that the sports (sic) are so intense, so thrilling, and by inference so dangerous, that one would be crazy to try them." Again, the Board refused to look beyond the marks as set forth in the application and registration. In other words, the fact that on its specimen of use Big Pig's mark is displayed along with the words "Bubbalou's Bodacious Bar-B-Que" and design elements featuring a pig and fire, is irrelevant.

Consequently, the Board found that confusion is likely, and it affirmed the Section 2(d) refusal.

Mutilation: The Examining Attorney contended that, as a result of "the spatial proximity" of the word PSYCHO to the other elements on the specimen, they "could be perceived by the consumer as unitary in scope." The Board embraced Big Pig's position, finding that the word PSYCHO creates a separate and distinct commercial impression apart from the other words and the design elements.

"... as is noted by applicant, the word PSYCHO is displayed in a different color, type style, and size such that it stands out from the remaining words and design element. The word PSYCHO has, in this display, the look of graffiti painted over a logo. It does not appear to be part of the logo."

As it stated in its most recent mutilation reversal (TTABlogged here), "the Board is mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wishes to register." In re 1175856 Ontario Ltd., Serial No. 78442207 (October 26, 2006).

The Board therefore reversed the mutilation refusal.

Text Copyright John L. Welch 2006.


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