Friday, August 02, 2013

Test Your TTAB Judge-Ability: Are NUTFFLES and P-NUTTLES Confusable for Candy?

Adams & Brooks petitioned for cancellation of a registration for the mark NUTFFLES for "chocolate and candy," claiming a likelihood of confusion with its registered mark P-NUTTLES for "nut candies" both marks in standard character form. The goods are, in part, legally identical, but what about the marks? Are they too close? Adams & Brooks, Inc. v. Morris National, Inc., Cancellation No. 92052158 (July 23, 2013) [not precedential].

Respondent moved to amend its identification of goods to read "chocolate, namely premium Belgian chocolate truffles," but the Board denied the motion, finding the amendment to be unhelpful. A truffle is a type of candy, and Respondent admitted that its truffles contain nuts, so the amended identification would still fall within Petitioner's "nut candies." The word "premium" adds nothing, since there was no evidence that premium chocolates travel in channels of trade different from "nut candies." "In short, respondent’s amendment does not reduce the similarity of the goods or affect the channels of trade in which the goods are offered."

Turning to the marks, because the goods are legally identical, in part, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion. The Board noted that:

[b]oth parties’ marks include the descriptive term “NUT”and end with the letters “LES”, which suggest a plurality. Significantly, the “NUTTLES” portion of petitioner’s mark and respondent’s “NUTFFLES” mark are similar in sound, differing in only the substation [substitution? - ed.] of an “F” sound in the middle of respondent’s mark for the second “T” in petitioner’s mark. The most significant difference between the marks is that petitioner’s mark begins with the letter “P”, which, when combined with the term, “NUT” suggests peanuts to the prospective consumer.
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The commercial impression created by petitioner’s mark suggests a product containing a plurality of peanuts. The commercial impression created by respondent’s mark suggests a plurality of nut truffles or a truffle containing a plurality of nuts. 

The Board concluded that the the marks "have a similar appearance, similar elements of sound, and similar connotation and commercial impression," and so this duPont factor favored Petitioner.

Respondent submitted 12 third-party registrations for marks containing “NUT” and/or “PEANUT,” claiming that these terms are “widespread in both the candy and snack industry to suggest an ingredient of the product.” [PEANUT CHEWS, PEANUT BUTTER CUPS, MR. PEANUT, P.NUTTY (for ice cream), PNUTTY (frozen confection on a stick), P-NUT BUTTER D-LITE, P-NUT POPS (dog treats), NUTRAGEOUS, NUTTER-BUTTER, NANTUCKET NUTS, NUTIBLES (two registrations)].

Respondent also provided two registrations for marks having the “LES” suffix (SKITTLES and TURTLES), asserting that these marks, along with NUTIBLES from its list of 12, indicate that the combination of NUT and LES is not unique, but at a minimum indicates that the product contains nuts.

The Board noted that three of the 12 registrations were for goods unrelated to candy, and further that the marks SKITTLES and TURTLES are very different from the marks at issue here. However, the Board recognized that NUT is descriptive, or even generic, for these candy goods, but there was no evidence that the terms P-NUTTLES or NUTTLES are in use. P-NUTTLES is a suggestive mark, said the Board, but it is still entitled to protection from likely confusion involving a similar mark for identical goods.

In short, "the limited third-party evidence and the suggestive nature of petitioner’s marks fall short in undermining the distinctiveness of petitioner’s mark to any significant degree, that is, to show that petitioner’s mark is weak. Accordingly, this factor is neutral."

Balancing the relevant duPont factors, and giving the prior registrant the benefit of any doubt, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comments here.

TTABlog comment: Petitioner also relied on a stylized, design version of P-NUTTLES, but that regsitration played almost no role in the analysis.  Anyway, do you agree with the decision?

Text Copyright John L. Welch 2013.


At 8:36 AM, Blogger Frank said...

I guess I am not suited to be a TTAB judge because I disagree with their decision here. I see no likelihood on confusion in the real world.

At 1:00 PM, Blogger David Menken said...

Seems confusing to me. What does John think?

At 1:07 PM, Anonymous Anonymous said...

IMHO, the decision is ridiculous and nutty.

At 1:35 PM, Blogger John L. Welch said...

John would have reversed. I think the P-NUT at the beginning of the cited mark and the awkwardness of the NUTFFLES pronunciation makes them different enough.

At 2:09 PM, Anonymous Anonymous said...

This decision is another joke from the TTAB. They and their mechanical application of the LoC test are an embarrassment. Sorry to be disrespectful of people who hold an esteemed position, but I have to call a spade a spade.

At 6:35 PM, Anonymous Anonymous said...

I'd be very confused, but I'm easily confused.

"Plurality." I think the TTAB judges have been hanging out too much with the PTAB judges!


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