TTABlog Test: Is "HULA DELIGHTS" For Nut Gift Baskets Confusable with "HULA PRINCESS" for Nuts?

The USPTO refused registration of the mark HULA DELIGHTS for "gift baskets featuring processed nuts," finding a likelihood of confusion with the registered mark HULA PRINCESS for "shelled nuts and roasted nuts." On appeal, applicant argued that "HULA" is a weak formative in view of its appearance in marks for a variety of food products, but not nut-related goods. How do you think this came out? In re Friedman and Wieder Enterprises Inc., Serial No. 87612654 (May 6, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Strength of the cited mark: As to conceptual strength, the Board found the mark HULA PRINCESS to be inherently distinctive and arbitrary. As to commercial strength, applicant pointed to 26 third-party registrations for various HULA-formative marks for food products, but not nut-related products. One of the marks was the word HULA alone, while 14 others were formatives of HULA followed by a second term. [Didn't the OMAHA STEAKS decision from the CAFC rule out consideration of third-party marks for unrelated goods? - ed.].

There was no evidence of third-party use, but the Board nonetheless found that the cited mark should be accorded "a somewhat narrower scope of protection than that to which inherently distinctive marks are normally entitled."

Similarity of the Marks: The Board agreed with the Examining Attorney that the identical, leading term HULA creates a similarity between the marks. However, the HULA formative is somewhat weak, as discussed above. Moreover, there was no evidence that DELIGHTS or PRINCESS are weak as applied to the involved goods.

The Board found that, "although the common term HULA is identical, the following terms in the marks are completely dissimilar in appearance and sound." The applied-for mark connotes "tropical enjoyment" while the registered mark suggests "tropical royalty or an individual who is adept at hula dancing." These connotations are somewhat related but different, and "given the differences in the marks' appearance and sound, result in the marks having somewhat different commercial impressions."

In sum, the Board found the marks more dissimilar than similar, and this du Pont factor weighed in applicant's favor.

The Goods: In order to show the relatedness of the goods, the Examining Attorney submitted excerpts from five websites offering both nuts and gift baskets, establishing that "nuts and gift baskets featuring nuts may emanate from at least a modest number of third parties." However, it was not clear whether three of the websites offer roasted, shelled or processed nuts and two of the websites specified that they offer only roasted nuts. As a result the Board found that the relatedness factor only slightly favored a finding of likely confusion.

Conclusion: The Board concluded that the marks are "sufficiently dissimilar that when applied to somewhat related goods, confusion is unlikely as to the source of those goods."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I'll bet you thought this would be an affirmance. Are you shell-shocked? Do you think the decision is nuts?

Text Copyright John L. Welch 2019.