Wednesday, October 07, 2015

Another TTAB Test: Are "FLUFF IT UP" and "FLUFFY STUFF" Confusable for Cotton Candy?

After yesterday's "F-bomb"-filled post, it's good to return to a more family-oriented discussion. [No - not the Manson family]. Tootsie Roll opposed registration of the mark FLUFF IT UP for "natural cotton candy," alleging likelihood of confusion with its registered marks FLUFFY STUFF and FLUFFY STUFF COTTON CANDY POPS, both for cotton candy [COTTON CANDY POPS disclaimed]. The parties invoked the Accelerated Case Resolution (ACR) procedure, stipulating to standing and priority, as well as to a number of pertinent facts. Applicants argued that their cotton candy is hand-made from natural ingredients, and sold at weddings, fairs, and other events, rather than in grocery, drug, and convenience stores. Also, they maintained, the mark CHARMS always appears adjacent FLUFFY STUFF on Tootsie's goods. How do you think this came out? Tootsie Roll Industries, LLC v. Keelen and Breckenfeld, Opposition No. 91212895 (October 5, 2015) [not precedential].


The Board focused only on Opposer's FLUFFY STUFF mark, for obvious reasons. Tootsie Roll's cotton candy contains artificial flavors, chemical preservatives, and food coloring, while Applicants' natural cotton candy is of "artisan quality." The Board, however, pointed out for the umpteenth time that it must make its Section 2(d) determination in light of the goods as identified in the opposed application and cited registration, regardless of actual marketplace conditions. Here, opposer's "cotton candy" encompasses "natural cotton candy," and thus the involved goods are legally identical. This du Pont factor weighed heavily in Tootsie Roll's favor.

Moreover, there are no limitations as to channels of trade or classes of consumers in either the opposed application or the cited registration, and since the goods are legally identical, they must be presumed to travel in the same, normal channels of trade to the same classes of consumers. The specific differences in the actual channels of trade are irrelevant. This du Pont factor also weighed heavily in Tootsie Roll's favor.


Turning to the marks, the Board observed for the zillionth time that when the involved goods are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board pulled the two marks apart, examined and compared the pieces, and concluded that although the marks are somewhat different in sound, "the overall similarities in appearance and sound outweigh the differences." Moreover, the two marks have similar meanings, and "in their entireties engender similar overall commercial impressions."

Applicants' argument regarding the appearance of opposer's mark CHARMS on packaging for the goods was simply irrelevant. The Board must compare the mark shown in opposer's registration certificate to the mark shown in the application drawing. Likewise, difference in packaging, trade dress, and labeling are immaterial.

The involved goods are relatively low priced products clearly subject to impulse purchases. Purchasers would include ordinary consumers who would be expected to exercise no more than ordinary care in their purchasing decisions.

Finally, there were no other FLUFF or FLUFFY formative marks registered for cotton candy. [stipulated]. Neither FLUFF nor FLUFFY is descriptive for cotton candy. [stipulated]. Based on sales figures, opposer's FLUFFY STUFF marks are well-known. [Stipulated].

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: This case illustrates how the Board usually handles actual marketplace conditions in a Section 2(d) case: it ignores them.

Text Copyright John L. Welch 2015.

7 Comments:

At 7:11 AM, Anonymous Anonymous said...

FLUFFY is not descriptive of cotton candy??

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

"Neither FLUFF nor FLUFFY is descriptive for cotton candy. [stipulated]."


Did applicant make a mistake in entering into that stipulation and not arguing that those words are descriptive?

 
At 12:20 PM, Anonymous Anonymous said...

John, as you have noted many times, where "there are no limitations as to channels of trade or classes of consumers in either the opposed application or the cited registration, and . . . the goods are legally identical, they must be presumed to travel in the same, normal channels of trade to the same classes of consumers. The specific differences in the actual channels of trade are irrelevant." This appears to be far more than a "presumption," as the TTAB terms it. In reality, the TTAB treats this as an irrebuttable presumption, or a rule of law. This being the case, have parties had any luck objecting to discovery about channels of trade and consumers of the goods on the grounds that these issues are already "presumed" in the opposer's favor?

 
At 1:25 PM, Blogger Kate Keelen said...

Thanks for writing this article. I'm the owner of Fluff It Up (new name TBD). I agree that FLUFF and FLUFFY are descriptive of cotton candy, or else why would we both choose those words to describe our products. They were also factually wrong in their conclusion, a business named Fluffpop exists and seems to hold a trademark.

 
At 2:43 PM, Blogger Jenifer deWolf Paine said...

Although I agree about the descriptiveness issue, Opposer won because it has such highly skilled, handsome counsel.

 
At 3:37 PM, Blogger John L. Welch said...

I think the defendant often make allegations, in the answer or in discovery responses, about the differences in the goods and the channels of trade. That certainly opens up the issue to discovery. In any case, a plaintiff wants to find out whether the channels of trade and the goods actually do overlap or are identical, since that reinforces the likelihood of confusion argument. Unless the defendant stipulates to these issues, I don't think the Board will foreclose discovery.

 
At 12:18 PM, Anonymous Droid4apk said...

Did applicant make a mistake in entering into that stipulation and not arguing that those words are descriptive?

 

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