Wednesday, April 18, 2018

TTAB Test: Is KRANKY KOOKYS for Cookies Confusable With KRANKY for Chocolate Covered Corn Flakes?

The USPTO refused registration of KRANKY KOOKYS for "individually baked cookies decorated with icing showing an image of a frowning face and sold individually" [COOKIES disclaimed], finding the mark likely to cause confusion with the registered mark KRANKY for "chocolate covered corn flakes." Applicant Dwayne Roscoe argued that the unusual spelling of KOOKYS and the alliteration in his mark, coupled with the care with which consumers purchase desserts, require reversal of the refusal. How do you think this came out? In re Dwayne A. Roscoe, Serial No. 87047156 (April 13, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).

The Marks: The Board found KRANKY to be the dominant element of applicant's mark. KOOKYS is an alternative spelling for the disclaimed word "cookies." [It is? - ed.]. Applicant conceded that KOOKYS is descriptive of the goods but contended that it is a "highly colored term which draws attention of a particular group of consumers, and the intentional mis-spelling [sic] further draws attention to 'KOOKYS.'"

The Board agreed that consumers will give some weight to KOOKYS because of its alternative spelling and its alliteration with KRANKY. However, the Board found the overall impression of KRANKY KOOKYS to be very similar to the cited mark KRANKY. Therefore, the first du Pont points in favor of a finding of likely confusion.

The Goods: Examining Attorney Stefan M. Oehrlein submitted evidence demonstrating that cereal and packaged cookies may emanate from the same source under the same mark: e.g., ANNIE'S, Girl Scouts THIN MINTS, and KASHI. The Board concluded that the second du Pont favors a likelihood of confusion finding.

Consumer Sophistication: The Board found that cookies sold individually "are highly likely to be purchased on impulse." Applicant's specimen of use showed his goods displayed at a checkout counter, near candy and lottery tickets. Likewise, inexpensive sweetened cereal is likely to be purchase on impulse. There was no evidence that purchasers of these goods exercise particular care. [Personally, I always carefully check each cookie to make sure there are no raisins - ed.].

Applicant's Prior Registration: Applicant pointed to his prior registration for KRANKY KOOKYS for bakery goods, now cancelled due to an oversight. That registration, he argued, issued in 2009 and co-existed with the cited registration without confusion.

The Board was not moved, implying "that's the way the cookie crumbles." It pointed out that each case must be decided on its own facts and record. The Board made no mention was of the 13th du Pont factor, or of In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). There, the Board reversed a Section 2(d) refusal of ANYWEAR for clothing in light of the applicant's prior registration of ANYWEARS for footwear, the now-expired registration having co-existed with the cited registration for ANYWEAR BY JOSIE NATORI & Design for more than five years. [TTABlogged here].

Conclusion: And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment:What is an "individually baked cookie?" Baked by an individual? Baked one at a time in a tiny oven?

Text Copyright John L. Welch 2018.


At 12:25 PM, Anonymous John Egbert said...


At 5:16 PM, Anonymous Susmita G. said...

This case is an interesting analysis of the DuPont factors, and overall, I agree with the board when it comes to the relatedness of the goods and sophistication of consumers, but disagree on the similarity of the marks. I found it surprising that the board considered “KRANKY” to be the dominant part of the mark, and refused registration because another mark using that word was registered. Does this imply that all future marks beginning with “KRANKY” cannot be registered? Although, as the post indicates in the “Applicant’s Prior Registration” section, the board is not always consistent with itself, so maybe not. Furthermore, I found it confusing that there was no discussing of alternate meanings of “KOOKY” – namely the fact that it means “eccentric”, which could have been the message this brand was trying to get across.
However, the applicant’s argument about desserts making impulse purchases “impossible” strikes me as pretty far-fetched. I can see where this is true in some specific instances – for example, if you are purchasing a wedding cake or some sort of dessert display. But since his goods are ostensibly cheap (considering where they are sold), it does not strike me as something that a consumer would use a great deal of care in when purchasing.
On another note, the “individually baked cookie” question seems to imply that the “individually baked” is an unnecessary modifier, and I agree. Aren’t all cookies by definition individually baked – in contrast to desserts like brownies which are typically baked in trays? However, I think that this description may have been an oversight, and the “individually sold” in the description is the more crucial element. This would make more sense to me, considering the fact that cookies sold in stores are often sold in packages containing many cookies.
Lastly, I’m a little surprised that the mark was not rejected for being descriptive. Given that the cookies have sad faces (aka, are “cranky”), I would have guessed that would have been a good argument. This is especially true when you consider that misspellings are usually not enough to alter the descriptiveness of a mark, especially if the word phonetically still sounds like the original descriptive phrase. McCarthy on Trademarks and Unfair Competition, § 11:31. However, maybe this was precisely because of the other definition of the word “kooky” – but in that case, why was it not discussed more?


Post a Comment

<< Home