Friday, October 29, 2010

Fur Flies at TTAB: Playboy Wins Cancellation of "BUNNY" Registration for Clothing and Handbags

There was no need for Playboy Enterprises to pull a rabbit out of a hat to win this cancellation proceeding. The TTAB readily found Respondent's mark BUNNY for various handbag and clothing items likely to cause confusion with Playboy's "Bunny logo" mark for certain clothing items, billfolds, and card cases. The Board also agreed with Playboy that Respondent did not use her mark for all the identified goods, but it declined to invalidate the registration in its entirety on that ground. Playboy Enterprises International, Inc. v. Diane Dickson dba Bunny, Cancellation No. 92047717 (September 21, 2010) [not precedential].

Likelihood of Confusion: The Board focused its analysis on Playboy's common law use of its Bunny logo for headwear, neckwear, and t-shirts, and on two of its registrations for that logo, one for ties and men's shirts and the other for billfolds and card cases. The Board concluded that the parties' goods, trade channels, and classes of purchasers are either the same or closely related.

As to the marks, the evidence showed that "petitioner, the press and the public refer to the logo as a bunny, rather than as a rabbit or some other moniker." Because "a picture and a word that describes the picture often have the same effect and must be treated as legal equivalents," the Board found the involved marks to be equivalent.

With the goods at least closely related and the marks substantially similar, the Board saw no reason to consider any other du Pont factors [not even the fame factor], and it granted the cancellation petition under Section 2(d).

Non-use: Respondent failed to provide, during discovery, evidence that she had used the BUNNY mark on many of her identified goods. The Board concluded that, as of her filing date, she had used the mark only on handbags, tote bags, clutch bags, wallets, and coin purses.

Playboy contended that the application and registration should be considered void ab initio in its entirety. Not so, said the Board. In the absence of fraud, the application and registration are void "only as to the identified goods upon which respondent did not have use as of her filing date," namely, all the class 25 clothing items and a half-dozen bag-type items.

The Board pointed out that this partial cancellation based on non-use will become effective only if Respondent prevails in an appeal from the Section 2(d) ruling.

TTABlog comment: Regarding the available remedies for fraud and non-use see the TTABlog posting here.

Text Copyright John L. Welch 2010.


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