Wednesday, December 04, 2013

WYHA? TTAB Finds FLUTTER FAERIES for Dolls Confusable with FLITTER FAIRIES for Fantasy Toy Characters

The Board affirmed a Section 2(d) refusal to register the mark FLUTTER FAERIES for "doll accessories; dolls," finding the mark likely to cause confusion with the registered mark FLITTER FAIRIES for "fantasy toy characters" [FAIRIES disclaimed]. The marks, though slightly different, have the same meaning, and third-party websites and registrations confirmed the relatedness of the goods. Would you have appealed? In re Wahl, Serial No. 85485701 (November 20, 2013) [not precedential].

The Board, not surprisingly, found the minor visual and aural dissimilarities in the marks to be outweighed by their strong similarities as to connotation and overall commercial impression.

As to the goods, applicant Wahl feebly argued that her goods comprise "half butterfly, half fairy dolls," and may include "a cocoon for the doll to live in, as well as removable butterfly wings." In contrast, she asserted, the cited mark is used with a flying fantasy toy [see video above] that has battery-operated moving wings and "comes with a wand to help it fly." The Board, however, observed for the zillionth time that it must consider the goods as identified in the involved application and registration, regardless of any evidence as to actual use.

Examining Attorney Jennifer D. Richardson submitted Internet evidence showing that "fantasy character dolls" are a subset of "dolls," and that consumers "are accustomed to encountering 'dolls' and 'doll accessories' in the same trade channels in the marketplace as toys generally." Third-party registrations also suggested that the involved goods are of a type that may emanate from a single source under a single mark.

The Board therefore found that the involved goods overlap, and, in view of the lack of restrictions in the identifications of goods, must be presumed to travel in the same channels of trade to the same classes of customers. In short, the involved goods are to be considered "closely related."

Wahl argued that the cited mark is commercially weak in light of a number of third-party registrations for marks such as FLUTTERBYE FAIRY, FLUTTER FLICKER, and FLITTER DOODLES, but that argument flew into a wall. The Board pointed out that registrations are not evidence of actual use, and so one cannot conclude that consumers are familiar with these third-party marks. Moreover, the correct focus is on the cited mark FLITTER FAIRIES, and only one registration contains the word "Flitter" (FLITTER DOODLE); however, and the goods of that registration (craft kits containing coloring supplies and glitter) are quite different from registrant's identified goods. While a number of the third-party marks include the word "Flutter" or "Fairies," none of the marks are similar to the marks at issue here, some are for goods unrelated to dolls and toys (e.g, FLUTTER PRO for artificial fishing lures), and some are for marks that include other distinguishing matter (HORSEFAIRIES, for example).

The involved goods are relatively inexpensive and the board was not convinced that purchasers of these goods will be "at all sophisticated or discerning consumers." It considered this duPont factor to be neutral.

Finally, the lack of an evidence of actual confusion is of little probative weight in an ex parte context, where the registrant has no opportunity to weigh in on the issue. In any case, of course, "actual confusion is not necessary to show a likelihood of confusion."

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: I realize that, although the chances are about one in ten that a likelihood of confusion refusal will be reversed, the cost of filing an appeal and preparing an appeal brief may not be great. The applicant has likely already submitted arguments against the refusal, and these arguments may be re-packaged in an appeal brief at relatively little cost. So some may say, why not give it a shot?

Text Copyright John L. Welch 2013.


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