Tuesday, August 25, 2009

Finding Clothing and Jewelry Related, TTAB Affirms 2(d) Refusal of "TIANA"

Daffy Duck, meet Mucky Duck. The Board affirmed an opposition to Disney's application to register the mark TIANA for various clothing items, finding the mark likely to cause confusion with the identical mark registered for "jewelry, diamonds." The third-party registration evidence "overwhelmingly" favored Examining Attorney Stephen Aquila's position regarding the relatedness of women’s dresses, shirts, skirts and sweaters, on the one hand, and jewelry, on the other hand. In re Disney Enterprises, Inc., Serial No. 77235868 (August 12, 2009) [not precedential].

Princess Tiana

Of course the fact that Disney's and Registrant's marks are identical "weighs heavily against the applicant." When the marks are identical, "it is only necessary that there be a viable relationship between the goods in order to support a likelihood of confusion."

The Board agreed with Disney that there is no per se rule that clothing and jewelry/diamonds are related goods. However, Disney's dresses, shirts, skirts, and sweaters "are sufficiently related to Registrant's 'jewelry' that confusion is likely."

Both Disney and the Examining Attorney submitted third-party registrations on the issue of relatedness of the goods. The Examining Attorney proffered 24 use-based registrations in which the identifications of goods include both clothing and jewelry. Disney introduced 16 registrations (i.e., eight instances) in which "registrations issued to different entities for similar marks, one covering clothing or shoes, and the other covering jewelry and/or diamonds."

The Board observed that, under In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988) and In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993), third-party registrations have "some probative value to the extent that they may serve to suggest that [the] goods ... are of a type which may emanate from a single source."

It found that the third-party registration evidence "overwhelmingly favors the examining attorney's position." Disney's registrations included only two sets that cover women's clothing and jewelry (as opposed to hosiery or shoes or clothing and diamonds). In any case, the Board pointed out once again that "the determination of registrability of particular marks by the trademark examining attorneys cannot control the result in another case involving different marks." The Board also noted that women's clothing and jewelry are complementary. It therefore concluded that the du Pont factor of the similarity of the goods favors a likelihood of confusion finding.

The goods of the parties would travel through the same trade channels (e.g., department stores) to the same classes of purchasers, and they encompass inexpensive items that would be purchased by ordinary consumers.

Finally, Disney argued that TIANA is a weak mark because it is both a personal name and is a foreign term suggestive of the cut of Registrant's diamonds. The Board disagreed that the mark is weak, but in any case pointed out that "even weak marks are entitled to protection where confusion is likely."

And so, the Board affirmed the Section 2(d) refusal.

TTABlog comment: Princess Tiana is the main character in the upcoming Disney movie, The Princess and the Frog. According to Wikipedia, this film "will mark the return of traditional hand-drawn animation for Disney." The story revolves around Tiana, a waitress living in the French Quarter of New Orleans during the Jazz Age, and a prince named Naveen who has been transformed into a frog by an evil voodoo magician called Dr. Facilier.

Seriously, though, what do you think of this refusal? Are you moved by the third-party registration evidence? Do you think that by using third-party registrations, one could find clothing related to almost anything under the sun? If the Disney goods are marketed in connection with the movie, do you think a court would find a likelihood of confusion with TIANA brand jewelry? Reverse confusion?

Text Copyright John L. Welch 2009.


At 9:54 AM, Blogger Brandguy said...

This is a very bad pattern of precedent that is evolving. The Board says that there is no per se rule of relatedness, but if all the examining attorney has to do is submit enough third party registrations, the rule is set for all future cases unless the applicant can come up with sufficient counter examples. Coming up with counter examples is tough. All the examining attorney has to do is run a simple search in which a mark is registered in both IC 14 and 25. Running searches to prove a negative isn't that easy. One approach in this case would be to identify the 100 most popular girls names from the Census Bureau and then run a search for each name and see if there are registrations in both IC 14 and 25 and, if so, if they are held by different registrants. Pretty time consuming. Any better, less costly approaches anyone has tried?

At 11:06 PM, Anonymous Pittsburgh Trademark Lawyer said...

I agree that it is bad precedent to indicate that all you need for relatedness are registrations with both goods. Clothing in particular can be found in many registrations with unrelated goods. For instance there are registrations that have both coal and shirts. One would not necessarily think the two items are related. In Disney’s case it seems that the Board held that women's clothing and jewelry are complementary and travel in the same channels of trade to the same consumers. Hopefully, those factors contributed more to the decision then the registrations.

At 1:28 PM, Anonymous Anonymous said...

I would agree that this case would be more difficult if only third party registrations supported relatedness. However if you look at the prosecution history, in this case, the examining attorney submitted several websites of actual retailers offering women's clothing and jewelry items.

At 5:53 PM, Anonymous Anonymous said...

Seems to me the examining attorney submitted a plethora of evidence beyond third party registrations....


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