Thursday, November 13, 2014

TTAB Test: Feast Your Eyes on this 2(d) Refusal of BLUE SANTA STEW HOLIDAY FEAST

The USPTO refused registration of the word + design mark shown below, in view of the the registered mark HOLIDAY FEAST, both for pet foods. Are the marks different enough for reversal? How would you rule? In re Blue Buffalo Company, Ltd., Serial No. 85935706 (October 31, 2014) [not precedential].

Because the goods overlap, the Board must presume that they travel through the same channels of trade to the same classes of consumers. The goods are inexpensive items that may be purchased on impulse. Of course, since the goods are legally identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion refusal.

Applicant argued that that any similarity between the mark is of minimal importance because HOLIDAY FEAST is descriptive of the goods. [What holidays do pets celebrate? - ed.] The Board pointed out, however, that the cited mark is registered on the Principal Register without any disclaimer, and so "any argument that the registered mark is descriptive is improper and unavailing in the context of an ex parte proceeding such as this." Under Section 7(b) of the Trademark Act, the cited mark is presumed to be distinctive.

Moreover, there was no evidence of third-party use of HOLIDAY FEAST in connection with pet food. And so this is not a case similar to Knight Textile, where common use of the term ESSENTIALS, even though registered, was sufficient to distinguish the mark NORTON MCNAUGHTON ESSENTIALS for women’s clothing. [TTABlogged here].

To the extent that HOLIDAY FEAST is suggestive of "a grandiose meal for their pets or pet food that has a seasonal flavoring," the same suggestive meaning occurs with both marks and serves to strengthen the similarity between them.

The Board found that the commercial impressions of the two marks were not different enough to avoid a likelihood of confusion:

Both marks engender a holiday-themed fancy meal, albeit in a playful manner inasmuch as it is for pet food. Applicant’s mark accentuates the Christmas season with the wording SANTA STEW that is prominently displayed in larger letters in the center of the mark. This is further enhanced with Christmas holiday design elements, e.g., a Santa cap, a wreath-like border, etc. However, Christmas is but one holiday, and we can envision consumers familiar with Registrant’s HOLIDAY FEAST mark for pet food, encountering Applicant’s mark on pet food, and mistakenly believing that the latter is merely a Christmas-themed variation (“Santa Stew”) in a line of Registrant’s HOLIDAY FEAST pet food.

Finally, the addition of applicant's house mark did not avoid a likelihood of confusion. The Board pointed out that there is no per se rule that addition of a house mark will suffice to distinguish two marks, and in fact "such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: So how did you do?

Text Copyright John L. Welch 2014.


At 11:34 AM, Anonymous Anonymous said...

In addition to WYHA, can you create a category called WTF for when the Board completely loses its mind, like in this case

May be the worst decision in TTAB history.

These marks are nothing alike, and the common element is minimally distinctive.

At 12:14 PM, Anonymous Anonymous said...

Glad to see these comments. Thought I was the one who was confused, but it was the Board.

At 1:52 PM, Anonymous Miriam Richter said...

I think it was a "be careful what you ask for" situation. I would have filed for SANTA STEW only and said it creates a separate commercial impression per TMEP 807.12(d) if the examiner had a problem with it.


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