Thursday, July 31, 2008

TTAB Affirms 2(d) Refusal of "CINDERELLA" for Peanut Butter over Disney Registration for Related Goods

This applicant's attempt to register the mark CINDERELLA (shown immediately below) for "peanut butter" had a grim ending. The mark had been in use since 1895, according to Applicant, and was registered until 2001, but unfortunately the registration was allowed to lapsed by Applicant's predecessor. When American Blanching applied for a new registration, the PTO refused on Section 2(d) grounds, finding the mark likely to cause confusion with the registered mark WALT DISNEY'S CINDERELLA & Design (shown further below) for various food products, including candy, chocolate, cookies, pretzels, and bread. The TTAB affirmed. In re American Blanching Co., Serial No. 76443653 (July 10, 2008) [not precedential].

The Board found that the registered mark is dominated by the term CINDERELLA, because it is in larger type than the term WALT DISNEY'S and the pictorial depiction (which itself reinforces the CINDERELLA portion].

"WALT DISNEY'S would be viewed merely as the trade name of the entity that is the source of the goods sold under the mark. The deletion of the additional features to form applicant's mark is simply not enough to sufficiently distinguish applicant's mark from registrant's mark. Generally, likelihood of confusion is not avoided between otherwise confusingly similar marks by adding or deleting a house mark."

As to the goods, the Board found them to be related and complementary. "[I]t is common knowledge that peanut butter spread on bread is often eaten as a snack." [TTABlog query: I like peanut butter on slices of banana. Does that mean that peanut butter and bananas are related goods?] Also, "peanut butter is used in food items in combination with "chocolate, candy, cookies, and pretzels; peanut butter also may be used an ingredient in candy and cookies." [TTABlog query: Sugar and salt are also used in cookies, etc. Are they therefore all related goods?]

American Blanching noted that the Disney had argued, during prosecution of its own application, that "Cinderella" is a "weak indicator of source given its registration by a number of third parties." The Board "considered these remarks," but did not "view them as a substitute for applicant's own obligation to establish the purported weakness of the cited mark."

Finally, Applicant pointed to the lack of actual confusion, but the Board found "no evidence regarding the extent of use of the respective marks, and whether the use has been sufficient for opportunities of actual confusion to occur." The fact that Applicant's predecessor owned a registration for the mark, "while worthy of consideration," is "outweighed by the factors weighing in favor of finding likelihood of confusion."

And so the Board affirmed the refusal.

TTABlog comments: I don't have as much trouble with the Board's ruling regarding the marks as I do regarding the goods. Would consumers really think peanut butter and bread come from the same source? I think the PTO's proof was very slim here.

On the other hand, I suspect that many Americans believe that Walt Disney created Cinderella, and that any product bearing the mark CINDERELLA is somehow connected with Disney. But, of course, that is another fairy tale.

If indeed Applicant has priority of use (the cited registration issued in 2006, alleging a first use date in 2002), is a cancellation petition in the offing?

Text Copyright John L. Welch 2008.


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