Tuesday, April 05, 2011

Test Your TTAB Judge-Ability: Is BUDDY'S NATURAL CHICKEN Confusingly Similar to BUDDIES?

The PTO refused registration of BUDDY'S NATURAL CHICKEN for "non-frozen and processed chicken" [NATURAL CHICKEN disclaimed] in view of the registered mark BUDDIES for "poultry, namely, chicken nuggets, chicken patties, chicken strips and chicken wings. Applicant BUDDY'S argued that the word BUDDY'S in its mark is a given name or nickname, whereas BUDDIES has the connotation of a friend or companion. How would you rule, buddy? In re Buddy's Natural Chicken, Inc., Serial No. 76698852 (March 14, 2011) [not precedential].

The Board found the goods to be legally identical. Therefore they must be presumed to travel in the same channels of trade to the same classes of customers.

The key issue, then, was the similarity or dissimilarity of the marks. Because the goods are identical, the degree of similarity in the marks necessary to support a Section 2(d) refusal is diminished.

The Board had "no trouble" in concluding that the dominant portion of Applicant's mark is BUDDY'S. This word is identical in sound and very similar in appearance to the cited mark BUDDIES.

As to connotation and commercial impression, Examining Attorney Kimberly Frye contended that BUDDY and BUDDIES are "both variations of the same root word, BUDDY."

Applicant principally argued that its mark has a different commercial impression: BUDDY'S "conveys the impression that the natural chicken originates from a person named 'Buddy.'" Applicant also pointed to its specimen of use and compared it to Registrant's use of its mark, which is always preceded by the adjective DINO.

The Board, however, "cannot assume ... that the registrant's mark will always be preceded or modified by the term 'Dino.'" However, the evidence of actual use "is relevant to the extent that it may indicate how consumers are likely to perceive the relevant marks."

The Board agreed that Applicant's mark "will be understood as referencing an individual named 'Buddy,' rather that in the sense of a companion or friend." "Nonetheless, any possible difference in the connotations of the marks does not outweigh the overall similarity between them."

Resolving any doubt in favor of the prior registrant, the Board affirmed the refusal.

TTABlog comment: If I were Applicant, in view of the way the cited mark is apparently used, I think I would seriously consider seeking review by way of civil action in my home town of Austin, Texas. That worked for another Austin-based company, Austinuts, resulting in a settlement (see TTABlog posting here).

Text Copyright John L. Welch 2010.


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