Wednesday, January 19, 2011

Test Your TTAB Judge-Ability: Are "PAULETTE" and "PAULETTE MACARON" Confusingly Similar to "PAUL" for Bakery Goods?

Holder Suisse S.A. opposed four applications to register the mark PAULETTE MACARON [MACARON disclaimed] and the marks PAULETTE in standard character form and in the two design forms shown below, for bakery goods and retail bakery shops, claiming likelihood of confusion with its registered mark PAUL for goods including flour, bread, and pastry. The Board found PAUL to be a strong mark, and the key issue was the similarity or dissimilarity of the marks. Would you sustain the oppositions? Holder Suisse S.A. v. Paule and Gerard Koumetz, Consolidated Opposition Nos. 91181892, 91181896, 91186200, and 91186198 (December 27, 2010) [not precedential].

The Board wasted little time in finding Opposer's goods to be related to Applicant's goods and services, the trade channels to be the same, and the classes of purchaser overlapping. Furthermore, the goods presumably include low cost bakery items bought with little or no deliberation. The Board noted that purchasers of such impulse items "are held to a lesser standard of purchasing care and are more likely to be confused as to the source of the goods."

Opposer contended that its mark is famous, having been in use for more than 100 years worldwide, but its evidence fell "far short of demonstrating widespread recognition of its PAUL mark among the general public in the United States." Evidence of fame in Europe is irrelevant to fame in this country [Doh! - ed.], and Opposer failed to offer and evidence of consumer recognition or sales figures here. However, the record supported a finding that the mark PAUL is strong "to the extent we must recognize that it is an inherently distinctive mark, also in view of opposer's evidence of media coverage and ... the lack of evidence of relevant third-party uses in the record."

Turning to the specific marks at issue, the Board first considered PAULETTE in standard character form. It perceptively noted that PAULETTE "merely adds a syllable to opposer's PAUL mark." Moreover, as to meaning, PAULETTE is defined as "the French diminutive of PAUL." [Are we in France? ed.] As a result the marks are "highly similar."

Next the Board took a bite out of PAULETTE MACARON, concluding that PAULETTE is the dominatrix of that mark since MACARON is disclaimed. The Board therefore found this mark to be "highly similar" to the registered mark PAUL. [I suspect that to most Americans, PAULETTE MACARON sounds like a woman's full name and is therefore quite different from PAUL. - ed.]

As to the first design mark, it is "highly similar" in appearance to the mark PAUL. Applicant argued that the double "t's appearing in the mark represent two sides of a "macaron," but the Board found that "not sufficient "to create a commercial impression that is separate from that of opposer's PAUL mark." And even if consumers recognize the double-t design as a macaron [highly unlikely, I think - ed.], that stylization "merely adds a highly descriptive connotation to applicant's mark that is subordinate to that created by" the mark as a whole.

Finally as to the second design mark, the circular design is insufficient to distinguish it from Opposer's mark.

Applicant pointed to four years of use without any actual confusion, despite substantial press coverage. However, the Board shrugged off that evidence, pointing out the lack of evidence that "the same segments of the public have been so exposed" to the marks that a substantial opportunity for confusion has incurred.

Lastly, the Board refused to find bad faith on the part of Applicant, pointing out that mere knowledge of Opposer's mark does not, by itself, constitute bad faith.

And so the Board sustained the oppositions.

Text Copyright John L. Welch 2011.


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