Thursday, May 17, 2007

Finding "KEWPIE" a Strong Mark for Dolls, TTAB Sustains 2(d) Opposition to "ROSE O'NEILL KEWPIE" for Kitchenware

In case you didn't know, the original "Kewpie" characters were created by Rose O'Neill and first published in 1909. They were a marketing phenomenon in the early part of the twentieth century, and nearly one hundred years later, the rights in the "Kewpie" name are still worth fighting over. In Rita Abraham and Jesco Imports, Inc. v. David O'Neill, Opposition No. 92225853 (April 23, 2007) [not precedential], the Board sustained a Section 2(d) opposition to registration of the mark ROSE O'NEILL KEWPIE (Stylized) for "household or kitchen utensils and containers, namely, cookie jars, plates, bowls, cups and glasses" [KEWPIE disclaimed], finding it likely to cause confusion with the mark KEWPIE previously used and registered for dolls, nursery furniture, jewelry, sleepwear, and other products.

Opposer Rita Abraham is the owner of the two pleaded registrations and Jesco is her exclusive licensee. Applicant is the great nephew of Rose O'Neill and is the personal representative of her estate. Disputes over intellectual property rights in these designs and in the KEWPIE mark have simmered for decades between the relatives of Rose O'Neill and the assignee of those rights, Joseph Kallus, and his heirs and assigns.

The Board began by considering Applicant's affirmative defenses that KEWPIE is generic for dolls and that Opposers are not the rightful successors to the KEWPIE marks.

Genericness: Applicant relied on a single dictionary definition ("easily offset" by Opposers' submission of other dictionary entries referring to "Kewpie" as a trademark for dolls.) and a single generic usage by a federal appeals court judge in a wholly unrelated case. He submitted no consumer testimony and no consumer surveys. Against Opposers' evidence of use, recognition, and registration of the KEWPIE mark, Applicant's evidence was de minimis and failed to meet his burden to prove genericness by "clear evidence."

The Board noted that "there are prospective customers of dolls who want to purchase a KEWPIE doll of the sort marketed by opposers and having historical origins with the artistry of Rose O'Neill." However, genericness may not be based upon claims of "purchaser motivation."

"[T]hat purchasers call for a particular product by the name given it by its producer or source does not negate its function as a mark. Such a given name is a proper name, like the name of an individual, not a generic name, so long as the public uses it to identify a product of a single source. It is the normal way the public uses a mark which is applied by a manufacturer or a merchant to a particular product, and, as indicated, trademark concepts do not require the condemnation of normal commercial language." Quoting In re DC Comics, Inc., 215 USPQ 394, 404-405 (CCPA 1982).

Ownership: The Board agreed with Opposers that a 1947 agreement broadly granted intellectual property rights and resulted in an "outright transfer of the trademark rights of Rose O'Neill's Estate to Joseph Kallus [father of Opposer Rita Abraham]."

Likelihood of Confusion: Opposers' registrations and the long and continuous use of the KEWPIE mark established their priority.

As to the marks, the Board agreed with Opposer that the dominant portion of Applicant's mark is the word KEWPIE. The "Rose O'Neill" portion is "so heavily stylized as to compromise somewhat its legibility." Moreover, the "inherent strength and renown" of the mark KEWPIE contributes to this dominance. And the marks convey the same connotations and commercial impressions.

In light of sales of four million dollars by two of Jesco's licensees during the 1990's, promotion and advertising of Opposers' products in catalogues and at toy and gift shows, promotion on television and in national magazines, and advertising by mass marketing chains, "KEWPIE dolls have clearly achieved some degree of renown in the relevant markets." The Board found it to be a "strong mark indeed." Applicant's asserted that "Kewpie" is weak because of third-party usage on a wide variety of products, but the record included only a single, subsisting third-party registration (KEWPIE for various food products). However, that registration is based on a single Japanese registration under Section 44(e) and there was "no probative evidence of third-party usage in this country that would result in our restricting the scope of protection to be afforded to opposers' claimed registrations."

With regard to the goods, Applicant acknowledged that a "range of KEWPIE products will be purchased by collectors." "For collectors, whether the product involves a doll, or collateral products containing images of a doll face reminiscent of the child-like figure first created by Rose O'Neill, both will be seen as related because of the subject matter." The specific goods are related in "cumulative ways," and therefore this du Pont factor favored Opposers.

As to trade channels and conditions of sale, the Board noted Opposers' testimony that the goods would be purchased by the same customers in the same stores. And there was no showing that the consumers of these items would be sophisticated or that the goods are so expensive that purchasers would exercise an inordinate degree of care.

Based upon the similarity of the marks, the strength of the KEWPIE mark in the toy and gift field, the relatedness of the goods, and the overlap in customers, the Board found that confusion is likely and it sustained the opposition.

TTABlog question: In footnote 15, the Board declined to comment on "those contexts in which applicant is entitled to use the KEWPIE trademark as part of a valid historical reference in a manner that is not likely to confuse prospective customers." Given the fact that the design patents and presumably the copyrights in the original ROSE O'NEILL designs have now expired, may someone legally sell replica dolls that look like the originals, and identify them as "based on the original Kewpie doll designs of Rose O'Neill"?

Could Opposers' claim trademark rights in the shape/configuration of the dolls, despite the expiration of the design patents and copyrights? I.e., is there now a "right to copy" those designs, and an accompanying fair use right to identify them as copies of the originals?

Text Copyright John L. Welch 2007.


At 12:45 PM, Blogger John L. Welch said...

With regard to my comment concerning copying of the kewpie doll look, see the Ninth Circuit's decision in the Betty Boop case, dated Feb. 23, 2011.


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