Friday, February 15, 2008

TTAB Dubiously Finds "SOCK-UM" for a Parlor Game Confusingly Similar to "ROCK'EM SOCK'EM ROBOTS" for Action Games

In what it readily acknowledged was a "close case," the Board sustained a Section 2(d) opposition brought by Mattel, Inc. against registration of the mark SOCK-UM for a "game where a labeled mat is placed on the ground or floor, participants position themselves on the mat and volley a sock back and forth from one half of the mat to the other half of the mat." The Board found the applied-for mark confusingly similar to the registered marks ROCK'EM SOCK'EM ROBOTS and ROCK'EM SOCK'EM for, inter alia, action games. Mattel, Inc. v. Briden, Opposition No. 91160087 (January 30, 2008) [not precedential].

The Board first rejected Mattel's assertion that its mark ROCK'EM SOCK'EM ROBOTS is famous. Although the mark has been used for several decades, the record did not include sales and advertising figures for most of the period. Sales in recent years have increased dramatically, but "they are not in the same range for other marks that have been found to be famous." Newspaper and magazine articles have showed that the mark and the game "have recognition for those who played the game in the past." In short, Mattel failed to meet the requirement that fame be clearly proven.

However, the Board did find ROCK'EM SOCK'EM ROBOTS to be a strong mark in view of the length of use and other evidence, and in view of the lack of evidence of similar marks in use by third-parties.

Turning to the goods, the Board found them legally identical since the term "action games" identified in Mattel's registrations would encompass Applicant's game. Because the goods are legally identical, the Board presumed that they travel in the same channels of trade to the same classes of customers.

As to the marks, the Board noted that when the goods are virtually identical, as here, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines. The Board agreed with Mattel that because the word ROBOTS is disclaimed, it "deserves less weight when the marks are compared in their entireties." As to the ROCK'EM portion of Mattel's mark, that too is not that important:

"Although ROCK'EM has a prominent position because it is the first word of the mark, it also has a suggestive connotation similar to SOCK'EM, as it suggests both the shaking motion of a 'sock' and the effect of the striking motion of SOCK'EM, i.e., that one both rocks and socks one's opponent, and that one who is socked is rocked by the socking." [LOL! - ed.]

"Also, because ROCK'EM and SOCK'EM rhyme, the ROCK'EM portion of the mark would be viewed as intrinsically connected to SOCK'EM, and as reinforcing not just the meaning but also the sound and the appearance of SOCK'EM." [HAHAHA! - ed.]

The Board concluded that although there are "clear differences" in the marks, the similarities outweigh the differences, and this du Pont factor favors Mattel "to some extent."

The Board then noted that the goods are inexpensive and are the type that can be purchased on impulse and without great care. The fact that Mattel has used the ROCK'EM SOCK'EM ROBOTS mark on ancillary products like keychains also favors Mattel. [TTABlog query: If the goods are legally identical, who cares about ancillary products?] And the fact that the goods are intended to be sold to the general public means that the number of people "that can potentially be confused is high," and this is a factor favoring Mattel. [TTABlog comment: Huh? I don't get that one. Since when is the number of potential purchasers one of the du Pont factors?]

In one last bit of overreaching, Mattel lamely urged that Applicant adopted her mark with an intent to trade off Mattel's goodwill because she used the same colors (red, yellow, and blue) for her prototype and because her slogan "It'll Knock Your Socks Off" is similar to Mattel's "Knock His Block Off. [LOL - ed.].

Balancing all the relevant factors, and recognizing that any doubt should be resolved in favor of the registrant, the Board sustained the opposition.

TTABlog note: Well, that's what typically happens when a powerhouse registrant goes up against an individual applicant: the registrant dumps in a load of evidence, the Board (as required) semi-robotically marches through the du Pont factors, and the applicant has his or her socks and block knocked off. That's life at the TTAB! But at least we got a few chuckles out of it.

Text Copyright John L. Welch 2008.


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