Thursday, April 12, 2007

TTAB Affirms 2(d) Refusal, Dubiously Discards "PARTYPAL" for Disposable Plate with Beverage Holder

In an eyebrow-raising decision, the Board affirmed a Section 2(d) refusal to register the mark PARTYPAL for a "disposable plastic plate containing a beverage holder," finding the mark likely to cause confusion with the registered marks ZOO PALS & Design (shown immediately below), SPORTS PALS, and MERRY PALS for disposable dinnerware. In re Tyco Plastics Services AG, Serial No. 78431431 (March 29, 2007) [not precedential].

The Board understandably found the goods to be similar, if not identical. The identifications of goods in the cited registrations were broad enough to encompass Applicant Tyco's goods. Since there were no restrictions in the application or registrations, the Board presumed that the goods travel in the normal channels of trade and to the normal purchasers for such products. Obviously, disposable dinnerware, being disposable, is/are not likely to be purchased with great care, another factor favoring a likelihood of confusion finding.

But what about the marks? Because the goods are closely related or identical, the degree of similarity necessary to support a finding of likely confusion is diminished. The Board noted the differences in appearance and sound, but found that the "distinctive suffix word 'Pal' (or 'Pals') used in connection with disposable plates, conveys the identical meaning and engenders the same commercial impression, namely that the disposable dishes are easy to use because you can throw them away." [TTABlog comment: I have a few pals, but that doesn't mean I readily discard them].

The Board found "persuasive and logical" Examining Attorney Elizabeth J. Winter's argument regarding the commercial impression of the marks, which argument the Board quoted at length:

"The marks suggest both where the goods can be used and that the goods are the consumer's friend or 'pal.' Because each of the marks refers to a different type of 'pal,' each mark implies that [registrant's] disposable dinnerware goods can be used in a particular venue, whether at a play date, at a neighborhood softball game, or at the zoo." [TTABlog question: what particular venue does MERRY refer to?] *** Similarly, applicant's mark ... informs the potential buyer of the type of setting [where] the goods may be used ..."

The Board concluded that the similarities of the marks in connotation and commercial impression outweigh any dissimilarities in sound and appearance, and it therefore affirmed the refusal to register.

TTABlog comment: I agree that in the mark PARTYPAL, the word 'pal' is a reference to a "friend" or "helper," in that Applicant Tyco's party plate helps the partygoer carry food and a drink on a single plate, leaving the other hand free for whatever. With regard to the cited marks, however, it seems to be a quite a stretch to say that "pal" has the same connotation. It's obvious from the design accompanying that ZOO PALS mark that "pals" is a suggestive reference to panda bears and other furry things, not to ease of discardability.

Moreover, the PTO and the Board treated the registered marks as if a "family" of "pal" marks had been established, but there was no indication that the rather strict requirements for a "family of marks" were met: i.e., use and advertising of the "pals" marks together in such a way as to create a recognition by the public of the "family" pattern.

In relation to Tyco's product, PARTYPAL has a distinctive, matter-of-fact meaning and connotation. In registrant's marks, in contrast, the word "pals" provides at most a nebulous, warm, fuzzy feeling. Coupling the difference in connotation with the differences in sound and appearance, the Board should have reversed this refusal and allowed the Tyco mark to be published for opposition.

Text Copyright John L. Welch 2007.


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