Friday, October 10, 2014

TTAB Reverses Refusal of "ZOMBIE CINDERELLA" over "WALT DISNEY'S CINDERELLA & Design" for Dolls

The Board reversed a Section 2(d) refusal to register the mark ZOMBIE CINDERELLA for dolls, finding the mark not likely to cause confusion with the registered mark WALT DISNEY’S CINDERELLA & Design, shown below, also for dolls. Marketplace evidence of third-party "Cinderella" dolls, as well as the long history of the fairy tale, demonstrated that CINDERELLA is a weak formative. The Board concluded that the combination of ZOMBIE with CINDERELLA creates an incongruous impression that results in a significant difference between the marks. In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014) [not precedential].

Judicial Notice: The examining attorney struck out twice in his requests that the Board take judicial notice of certain matters. First, as to several specimens of use submitted by applicant in other applications, the Board pointed out that it does not take judicial notice of USPTO records. Second, regarding the fame of "Walt Disney" and the Disney Company, the Board observed that, because fame is a dominant factor in the duPont analysis and must be clearly proven, it is "generally an unsuitable subject for judicial notice."

Cinderella's Weakness The story of Cinderella has been known to the public since at least 1697. The evidence showed that the Cinderella "is an established part of our cultural fabric and enjoys extremely widespread public recognition." Moreover, Aapplicant provided nine examples of dolls that depict the fairy tale character Cinderella. This evidence of marketplace use of CINDERELLA in connection with dolls further underscored the weakness of the term as a source identifier.

The record also shows, as we discuss further below, that this cultural figure has had an impact in the commercial field of dolls, and that many dolls that depict the character Cinderella have been offered in the market by unrelated businesses. We find that, for a doll that depicts the fairytale character Cinderella, the term "Cinderella" is, at a minimum, highly suggestive of the doll in that it names the fairytale character depicted. As such, it has limited power to function as a source indicator.

The Board concluded that the term CINDERELLA, as it appears in the cited mark, is entitled to a limited scope of protection.

Comparing the Marks: The examining attorney contended that the term ZOMBIE is not arbitrary with respect to dolls that depict zombies, but is descriptive thereof. Applicant, on the other hand, maintained that the combination of CINDERELLA and ZOMBIE has a "transformative effect":

Applicant’s mark juxtaposes the grotesqueness of a monster commonly portrayed in horror films with the beauty and innocence of a classic fairytale princess, giving it a unique and incongruous meaning and overall commercial impression. This odd combination of horror and fantasy creates a cognitive dissonance in the minds of consumers and results in a feeling of disequilibrium
The Board found that the designation WALT DISNEY’S is "inherently distinctive and its possessive form emphasizes the weakness of the term CINDERELLA, indicating it is Registrant’s version of the character as opposed to another’s version." Furthermore, the design element "may function, for juvenile customers, as a stronger source indicator than the term CINDERELLA, because it depicts a specific version of Cinderella that is associated with the Walt Disney animated film 'Cinderella.'"

The Board also found that  ZOMBIE and CINDERELLA each have little distinctiveness for dolls that depict zombies. But the Board agreed with applicant that "the combination of ZOMBIE with CINDERELLA creates a unitary mark with an incongruous impression."

Because of the differences in connotation and commercial impression, the Board found the marks not confusingly similar:

We are persuaded by Applicant’s contention that the mark ZOMBIE CINDERELLA creates a "cognitive dissonance," involving an uneasy mixture of innocence and horror. By contrast, the registered mark creates an impression of prettiness and goodness. Even if such marks were used on identical goods, these distinct commercial impressions would be distinguishable.

And so the Board reversed the refusal.

Read comments and post your comment here

TTABlog comment: Hat tip to fellow blogger Erik Pelton for this victory!

Text Copyright John L. Welch 2014.


At 9:53 AM, Anonymous Paul Reidl said...

I was glad to see the Board decline to take judicial notice of certain facts. One of my pet peeves is that the Board sometimes appears to bend over backwards to bail out Examining Attorneys who are sloppy in their Office Actions, either in their logic or their failure of proof. My personal view is that if the Board would be a little tougher on Examining Attorneys it might result in fewer mechanical Office Actions and also reduce the Board workload because applicants would not be prompted to appeal as many cases. There was a foreign equivalents case recently where the Examining Attorney put no evidence into the record regarding the commonness of the foreign language. The Board reversed on that point and resisted the temptation to take judicial notice of Census records of other "common facts."


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