Lego's BRICKHEADZ Applications Run Into TTABrick Wall

Nothing clicked for Lego in its attempt to register the mark BRICKHEADZ, in standard character and logo form, for “computer game software” and “construction toys; toy construction blocks and connecting links therefor; toy figures." The Board blocked registration, finding the marks likely to cause confusion with the registered mark BRICKHEADZ (in standard characters), for “education services, namely, providing classes and educational children’s parties in the field of construction toys to promote, [sic] creativity, critical thinking, and social development as wells [sic] as lessons from science, technology, engineering, math, language arts and social studies.” The Board also upheld a requirement that Lego disclaim BRICK in the logo mark application. In re LEGO Juris A/S, Serial Nos. 87886005 and 87886027 (September 2, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo)

Likelihood of Confusion: Lego argued that the marks have different connotations in context: for its toys, BRICKHEADS refers to the shape of the toys; for the cited services, however, BRICKHEADZ "gives the impression of referring to the tutors, teachers and mentors offering and administrating the services, i.e., they are aficionados, like "gearheads' are enthusiasts for new technology, or for motoring, 'wireheads' are hardware hackers/experts, 'deadheads' are fans of the Grateful Dead."

Lego's argument, lacked a solid base. Lego failed to provide any supporting evidence other than dictionary definitions. "Simply put, there is no evidence that the providers of Registrant’s services refer to themselves as 'brick heads,' or, more importantly, that consumers of Registrant’s services so perceive or identify them." Moreover, even if their connotations differed, the other similarities between the marks sufficed to prove their similarity. Likewise, the Lego logo mark and the cited mark "are much more similar than dissimilar in appearance, sound and connotation and, overall, convey highly similar commercial impressions."

As to the goods and services, Examining Attorney Alison Keeley built a tower of evidence, including website excerpts showing that Lego itself offers educational services to early learning, primary and secondary students in the fields of social and emotional development, science, technology, language, engineering and math. Moreover, third-party website evidence revealed the offering, under the same mark, of both computer game software and building toys as well as educational services related to the toys and software. And some 14 third-party registrations covering goods and services similar to those involved here, were made of record.

Lego claimed that, in order to prove relatedness, "something more" is required than the mere fact that the goods and services are used together. That argument collapsed because, unlike in St. Helena Hospital (involving hospital-based weight and lifestyle services and printed materials on the subject of physical activity and fitness), "the relatedness of construction toys, educational services in the field of construction toys, and broadly identified computer game software, which may include games featuring construction games and toys, is much more apparent." Here the relatedness of the goods and services "is far from obscure or generally unrecognized."

Disclaimer: Lego's specimen of use stated "The Flash LEGO BrickHeadz construction character is fun to build using colorful LEGO bricks." Third-party websites describe Lego's services and related goods as consisting in part of “bricks." Lego, of course, argued that its logo mark is unitary, but the Board took the Lego logo apart, finding that that "consumers would not view the term 'BRICK' as inseparable from the remainder of the mark."

The Board concluded that the term “BRICK” is descriptive and Lego’s mark is not unitary. Therefore, the term “BRICK” was subject to the disclaimer requirement.

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TTABlogger comment: Is there an after market for used Lego blocks?

Text Copyright John L. Welch 2020.