Tuesday, January 12, 2016

WYHA? MAGIC SNOWBALL and SNOWBALL Confusable for Stuffed Toys, Says TTAB

The Board affirmed a refusal to register the mark MAGIC SNOWBALL for "plush toy which looks like a snowball and contains a motion-activated LED" [SNOWBALL disclaimed] finding the mark likely to cause confusion with the registered mark SNOWBALL for "plush toys." Applicant contended that MAGIC is the dominant, and distinguishing, part of its mark. Would You Have Appealed? In re Hallmark Licensing, LLC, Serial No. 86198536 (January 11, 2015) [not precedential].

Since registrant's good encompass those of applicant, the involved goods must be considered legally identical. They therefore presumably travel in the same normal channels of trade to the same classes of consumers. Moreover, when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the word MAGIC, Examining Attorney Toby E. Bulloff maintained that "The wording ‘MAGIC’ (or the related ‘MAGICAL’) is so commonly used within the toy industry, and specifically with respect to plush or stuffed toys, and ‘SNOWBALL’ is so rarely used, that applicant’s argument is unpersuasive." She submitted seven website excerpts showing plush toys offered under marks that include the word MAGIC, as well as six third-party registrations for marks containing the word MAGIC for plush toys. The Board was impressed.

The Federal Circuit has stated that evidence of third-party registrations is relevant to show that a segment of a mark “may have a ‘normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak,’ …” Jack Wolfskin Ausrustung FurDraussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015).

The Board found this evidence "sufficient to show that the term MAGIC has suggestive significance in the field of plush toys, thereby weakening the source-indicating power of that term." Therefore, even if MAGIC is considered to be dominant in applicant's mark, it does not sufficiently distinguish the involved mark.

Nor did the Board agree that MAGIC SNOWBALL and SNOWBALL have very different meanings, as applicant claimed. According to applicant, "the likely connotation of MAGIC SNOWBALL is not a traditional snowball. The connotation of MAGIC SNOWBALL in a consumer’s mind is something imaginary or fantastical." The Board was not persuaded that, in the context of plush toys, addition of the word MAGIC thoroughly transforms the meaning of SNOWBALL.

The Board therefore found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: This was a rather liberal application of Juice Generation and Jack Wolfskin, since there were only seven third-party uses and six third-party registrations. Seemingly, applicants seldom benefit from such a liberal approach to third-party evidence.

Text Copyright John L. Welch 2016.


At 11:30 AM, Anonymous Anonymous said...

"Seemingly, applicants seldom benefit from such a liberal approach to third-party evidence."

You got that right!

At 2:11 PM, Anonymous Anonymous said...

The real life issues are perhaps more interesting than the limited TTAB issues.

SNOWBALL as used by the applicant is arguably descriptive or generic becuase the goods are in fact intended to be a snowball shape. Applicant disclaimed the word "snowball." They even changed the goods to "plush toy which looks like a snowball".

The cited mark is a bird plush toy.

Applicant will not get a registration, but is there really anything the owner of the cited mark can do to stop the use by Hallmark?

Maybe Hallmark should have never have filed an application?

A WYHAITFP - Would you have applied in the first place?

At 2:47 PM, Anonymous Anonymous said...

Isn't "snowball" generic for toys in the shape of snowballs? Aside from the well established precedent that marks should be seen from their entirety, shouldn't this be seen as a comparison of "magic" compared to "snowballs"?

It is possible - if not probable - that the examiner would have accepted an application for "magic", and the applicant could simply add the generic element snowball to the specimen.

The situation seems equivalent to applying to register "magic thread" for thread and an examiner refusing registration on the ground that such an application is likely to cause confusion with a registration for "thread" for clothing.

At 6:56 PM, Blogger Ron Coleman said...

I'm with the Anonymous Brothers of 2:11 and 2:47.

SNOWBALL -- toys shaped like snowballs.

Nothing magic here, I think.


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