Monday, August 27, 2007

Precedential No. 49: TTAB Reverses Indefiniteness Refusal, Affirms 2(d) Refusal of "PAPER DOLL PROMOTIONS" for Custom Costumes

In a precedential decision, the Board provided a lengthy discussion of the propriety of Applicant Paper Doll Promotions' identification of goods, ruling that "costumes, namely masquerade costumes, Halloween costumes, Mardi Gras costumes, and custom costumes" is sufficiently definite. The Board then went on to sustain one of two Section 2(d) refusals, finding Applicant's mark PAPER DOLL PROMOTIONS likely to cause confusion with the registered mark PAPER DOLL for children's and women's clothing, but not confusingly similar to the mark PAPERDOLL A WOMAN BY ANY DEFINITION and Design (shown far below) for t-shirts and underwear. In re Paper Doll Promotions, Inc., 84 USPQ2d 1660 (TTAB 2007) [precedential].

In a request for reconsideration of the final refusal, Applicant sought to amend its identification of goods to that stated above. The Examining Attorney denied the request, asserting that the proposed identification was indefinite.

The Board assumed that the basis for the Examining Attorney's denial was that the "custom costumes" portion was indefinite. The Board disagreed, noting that the term "custom costumes" is comprised of "common names and terminology that would be generally understood by an average person able to speak English; in short, the identification meets the standards of TMEP Section 1402.01(a) and the clarity test of Examination Note 98/1, and one would not require technical knowledge to understand it." (p. 18)

The Board also reversed the PTO's requirement regarding classification of the goods, finding them to be properly classified in class 25.

"Considering 'custom costumes' in relationship to the other types of clothing costumes set forth in the identification (in contrast to, for example, considering the term in relationship to doll costumes), all of the recited clothing costumes would be commonly understood to be similar items moving in a particular channel of trade."

Turning to the Section 2(d) refusals, the PTO's third-party registration evidence was sufficient to establish the relationship between costumes and ordinary clothing. The marks PAPER DOLL PROMOTIONS and PAPER DOLL were clearly very similar.

As to the other cited registration, the goods were limited to "t-shirts and underwear." Therefore, consumers would not expect "a wide array of clothing items to be marketed under the mark." [TTABlog comment: what about reverse confusion?] Coupling the differences in goods with the differences between the marks, the Board found confusion not likely.

TTABlog comment: After reading this deadly dry decision, one needs a bit of humor. I'm reminded of the Flight of the Conchords song, "Tape of Love":

People are like paper dolls.
Paper dolls and people, they're a similar shape.

Text Copyright John L. Welch 2007.


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