Tuesday, September 20, 2011

Test Your TTAB Judge-Ability: Are ENCHANTED PRINCESS and DISENCHANTED PRINCESS Confusingly Similar For Stuffed Toys?

Applicant California Costume appealed from a Section 2(d) refusal to register the mark ENCHANTED PRINCESS for, inter alia, positionable toy figures and soft sculpture toys. The PTO found the mark confusingly similar to the registered mark DISENCHANTED PRINCESS for "toys, namely, stuffed dolls, stuffed toys, and plush toys." The goods are certainly very close, but what about the marks? In re California Costume Collections, Inc., Serial No. 77838682 (September 1, 2011) [not precedential].

Applicant contended that the marks are distinguishable because its mark "conjures up expected images of fairies, fairytales, princes, castles, knights in shining armor, positive hopes and dreams," whereas the cited mark conveys "disillusionment, the idea of being an outcast and of being a non-conformer or nihilist."

Examining Attorney David Yontef urged that the terms "enchanted" and "disenchanted" have "related, albeit different meanings."

Applicant did not "seriously dispute" that there is a close relationship between the goods. In any event, the Examining Attorney submitted numerous use-based third-party registrations for marks covering both types of goods.

Because they goods are closely related, the Board presumed that the travel in the same (normal?) channels of trade to the same classes of purchasers.

As to the marks, the Board found them to be similar in sound and appearance. Applicant attempted to limit the meaning of its mark by reference to registrant's website which purportedly attempts to "exploit the commercial impression of the Angry Little Girls cartoon characters (here). However, the website was not of record, and furthermore the identification of goods in the registration has no reference to the cartoon characters.

Citing the MR. CLEAN/MR. STAIN and the UPTOWNER/DOWNTOWNER cases, the Board found that the marks create similar commercial impressions:

Even though the words 'enchanted' and 'disenchanted' have opposite meanings, the marks as a whole, when used on closely related toys, evoke similar commercial impressions. The words are associative, and both marks engender similar overall commercial impressions, namely of princess-like toys marketed under a shared theme of fairytale magic and spells; the 'enchanted princess' is under a spell, and the 'disenchanted princess' is free from the spell.

The Board found that the similarities in sound, appearance, and commercial impression outweigh any dissimilarity in meaning, and it concluded that consumers "would likely believe, upon encountering applicant's mark ENCHANTED PRINCESS for toys, that the goods originated from or are associated with or sponsored by the same entity."

TTABlog comment: There was no dis-sent.

Text Copyright John L. Welch 2011.


At 10:22 AM, Anonymous Anonymous said...

Could the outcome have been different if the marks in the application and registration were reversed? That is, what if an application for DISENCHANTED PRINCESS had been refused based on a prior registration for ENCHANTED PRINCESS?

If the marks were switched, I think the weakness of ENCHANTED PRINCESS coupled with the clever incongruity of DISENCHANTED PRINCESS would merit reversing the refusal. Yet, I can't think of a reason legal justification for reaching a different outcome in such a case.

At 11:25 AM, Blogger Qoheleth said...

So it is now a matter of U.S. law that the average American is too stupid to tell the difference between precisely opposite ideas. God bless the American legal system.


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