Tuesday, June 02, 2009

Teenie Weenie Wins Split Decision Over Paddington in TTAB 2(d) Battle-of-the-Bear-Designs

In last week's action, the TTAB refereed a Section 2(d) tussle involving an application to register the mark Teenie Weenie Bear & Design (shown below left) for certain paper products (class 16) and various clothing items. A divided Board panel found Applicant's mark not likely to cause confusion with the "Paddington Bear character mark" (which the Board deemed to be represented by the two-dimensional depiction having a floppy hat and duffel coat, shown below right) for related goods in class 16 and for overlapping clothing items. Paddington & Company, Ltd. v. Lead Co., Ltd., Opposition No. 91150248 (May 29, 2009) [not precedential].

Opposer Paddington claimed that its Paddington Bear character mark is famous, but the Board found that the proofs fell short. Although Opposer established that the Paddington Bear books and merchandise have received a "high degree of recognition," Paddington failed to provide any evidence regarding advertising expenditures for merchandise offered under the mark, and it failed to show what portion of the $92 million in retail sales was attributable to the character mark as opposed to the marks PADDINGTON BEAR and/or PB. The Board did, however, conclude that the Paddington Bear character mark "has achieved a high degree of recognition."

The crucial issue, then, became the similarity or dissimilarity of the marks. The panel majority (Judges Hairston and Walters) found the dominant portion of Applicant's mark to be the words TEENIE WEENIE BEAR, and concluded that "these words, along with the differences in applicant's and registrant's respective bear designs," [are] sufficient to distinguish the marks.

... we recognize that both marks include a bear wearing a duffle coat, but this does [not] mean that the marks are similar. The detectives Dick Tracy and Columbo both wore rain coats, but they are hardly similar to one another.

Evidence of third-party use of various teddy bear designs (some wearing duffle coats and hats or hoods) for stuffed toys, in books, and in a calendar, bolstered the majority's conclusion:

Such evidence demonstrates that teddy bears are indeed ubiquitous in the children's toy market, and that teddy bears obviously co-exist and are distinguished because of the differences in the teddy bears themselves and/or other terms used in conjunction with teddy bears.

Judge Bergsman, in dissent, asserted that, since the involved goods are identical or closely related, "the similarity between the marks is significant."

Both marks comprise anthropomorphic bears wearing "duffle” coats and hats. This is important in this case because, as set forth above, the record shows that the Paddington Bear character mark is a strong mark. Without more, photographs of six third-party teddy bears wearing duffle coats and hats or hoods does not weaken opposer’s mark.

He disagreed with the majority's conclusion that "Teenie Weenie Bear" is the dominant element of Applicant's mark, instead finding "that the bear design is the dominant element because of the size and placement of name vis-a-vis the design and that, therefore, the name identifies the design."

And so, the Board dismissed the opposition.

TTABlog comment: The panel majority asserted that "to the extent that purchasers would vocalize opposer's mark, they would be likely to refer to it as 'Paddington Bear' which obviously differs in sound from TEENIE WEENIE BEAR."

Is this a case where the renown of Opposer's character mark, and the concomitant renown of the name PADDINGTON BEAR, works against the Opposer? In other words, is Paddington Bear so well known that confusion is less likely when someone offers products under a arguably similar bear design mark?

Text Copyright John L. Welch 2009.


Post a Comment

<< Home