Thursday, March 12, 2009

TTAB Questionably Shows a Second Red Card to "FUTBOLITO": Merely Descriptive for Game Tables, but Confusingly Similar to "MLS FUTBOLITO"?

The Major League Soccer season begins one week from today. We New England Revolution fans face the new season with hope and dread. Four times the Revolution have made it to the MLS Cup, the championship game, and four times they've lost. I'm not sure I can take another one. Anyway, what brings this all to mind is the Board's recent decision affirming the PTO's refusals of the mark FUTBOLITO as being merely descriptive of soccer goals and game tables, and likely to cause confusion with the registered mark MLS FUTBOLITO for soccer entertainment services. The first affirmance was a slam dunk (or in soccer parlance, a "sitter"), while the second was a bit of a knuckleball: difficult to grasp. In re Allen Batres Miranda, Serial No. 77135681 (February 11, 2009) [not precedential].

Section 2(e)(1) Mere Descriptiveness: The Board noted that the term "futbolito" combines the Spanish word for soccer ("futbol") [TTABlog comment: Actually, I think it's the Spanish word for "football"] with the Spanish diminutive suffix "ito," which indicates small size. Examining Attorney Gina Hayes submitted Internet evidence showing that "soccer games with fewer than the regulation number of players may be called 'futbolito.'" Wikipedia evidence indicated that the soccer-themed table-top game sometimes called "foosball" is also known as "futbolito."

Thus the evidence demonstrated that FUTBOLITO is merely descriptive of Applicant Miranda's soccer goals (which could include smaller goals invented for games involving a few players) and of his "game tables" (which could include futbolito tables).

Likelihood of Confusion: Beginning its du Pont analysis with a comparison of the marks, the Board found them "very similar" in connotation or commercial impression because "both are dominated by the term 'futbolito.'" [TTABlog comment: Really? It seems to me that MLS is the dominant term in the cited mark, since FUTBOLITO is at least merely descriptive and has to be considered a weak formative.]

As to the MLS portion of the cited mark, "[c]onsumers are ... likely to attribute this portion of registrant's mark as being merely the trade name (or house mark) of the entity that is the source of the FUTBOLITO services." [TTABlog comment: What? Merely the trade name of the source? Merely? Isn't the trade name a much stronger part of the mark than the descriptive word FUTBOLITO?]. The Board concluded, rather mystifyingly, that the marks are "highly similar in appearance, sound and connotation."

Miranda argued that the cited mark should be accorded a narrow scope of protection, since FUTBOLITO is suggestive of the goods and services. The Board agreed that FUTBOLITO is suggestive of registrant's services, but maintained that it "cannot make such a finding as to the registrant's use of the term FUTBOLITO."

The validity of the registration for the cited mark is not a question before us in this appeal and the registration must be accorded the full benefits to which it is entitled under Section 7(b) of the Trademark Act. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Moreover, we note that there is no disclaimer of the term FUTBOLITO in the cited registration, nor is there any claim of acquired distinctiveness by registrant. And notwithstanding any suggestiveness of FUTBOLITO in the registered mark, we do not find the mark to be so weak as to prevent protection against registration by a subsequent user of the same or very similar mark for related goods and/or services.

[TTABlog query: What's wrong with recognizing that FUTBOLITO is a weak formative and that MLS is the stronger part of the cited mark? Oops, sorry. The Board already decided that FUTBOLITO is the stronger part].

Turning to the goods and services, the Board relied on three use-based third-party registrations to show that "various trademark owners arrange or conduct athletic competitions for entertainment purposes under the same mark as goods, including sports equipment and board games." Although admittedly a "relatively small" number, three was enough for the Board when coupled with the recognition (judicial notice?) that "the licensing of commercial trademarks on 'collateral' goods has become a part of everyday life." [TTABlog comment: Although the evidence was weak on this point, it's difficult to argue that, in reality, the goods and services here are not related].

Finally, the Board noted that any doubt as to the likelihood of confusion issue must be resolved in favor of the prior registrant.

And so the Board affirmed the Section 2(d) refusal.

TTABlog final comment: The Board's citation of the Dixie Restaurants case is curious. There the mark THE DELTA CAFE & Design ["CAFE" disclaimed] was found to be confusingly similar to the registered mark DELTA, both for restaurant services. Applicant Dixie unsuccessfully argued that DELTA must be considered a weak mark because of its geographical connotation. Instead, the appellate court agreed with the TTAB that DELTA is the dominant portion of THE DELTA CAFE, and it affirmed the refusal. That approach to the marks is the opposite of the Board's approach here.

Compare and contrast the FUTBOLITO decision with the recent MOCCA case, in which MOCCA was found to be merely descriptive of ground coffee, but not confusingly similar (according to the panel majority) to the mark MOCA & Design for coffee [MOCA disclaimed]. [TTABlogged here].

Michael E. Hall, at his new blog, Registration Ruminations, provides his more scholarly comments on the FUTBOLITO and MOCCA decisions here.

Text Copyright John L. Welch 2009.


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