Wednesday, June 10, 2020

Disney's TINKERBELL Bests TEEN TINK In TTAB 2(d) Fairy Fracas

The Board sustained this Section 2(d) opposition to registration of TEEN TINKER BELL and TEEN TINK & Design for dolls, finding a likelihood of confusion with Disney's registered mark TINKER BELL for a variety of goods, including dolls, doll accessories, doll clothes, and doll playsets. Applicant argued that TINKERBELL is not inherently distinctive since it is based on the public domain character in J. M. Barrie's play and novel, Peter Pan. The Board noted, however, Disney's registration for dolls issued on the Principal Register without a Section 2(f) claim. Disney Enterprises, Inc. v. United Trademark Holdings, Inc., Opposition Nos. 91221648 and 91224985 (June 8, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

In 1939, Disney’s predecessors in interest acquired exclusive rights to “make, reproduce, and exhibit animated cartoon motion pictures and engage in merchandising activities related thereto,” based upon the play Peter Pan and related “Peter Pan” works originally created by J.M. Barrie. In 1953, the animated motion picture "Peter Pan" as released.

Applicant launched its Fairy Tale High collection of dolls in 2013, depicting “public domain characters from well-known fairy tales, including Snow White, Rapunzel, Belle, Sleeping Beauty, Little Mermaid, Alice in Wonderland, Tinker Bell and Cinderella."

The Board, not surprisingly, found the involved goods to be identical, and therefore presumed that they travel in the same trade channels to the same classes of consumers.Two strikes against applicant.

Disney relied on some thirty registrations for TINKER BELL marks, and the Board focused on one particular registration for dolls. As stated, that registration issued on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, and so the mark must be considered inherently distinctive.

As to the inherent strength of the Disney mark, applicant submitted a number of third-party registrations for marks that include the term TINK or TINKERBELL, but only five identified goods or services related to toys, and none identified dolls. And so that evidence had limited probative value.

There was no question, however, that TINKER BELL refers to a fairy originally created by J.M. Barrie in approximately 1904, reimagined by Disney’s predecessors in interest in 1953, and again by Disney in 2013. And there was no question that the dolls identified by Disney's mark TINKER BELL depict that character. The Board therefore found that Disney's TINKER BELL mark, although inherently distinctive, is "highly suggestive of the dolls identified thereby, primarily inasmuch as the dolls depict the character TINKER BELL."

As to commercial strength, applicant submitted what it claimed to be evidence of 20 thirty-party uses of TINKER BELL for dolls and toy products, but the evidence was not probative because some of the evidence referred to licensed Disney products and the rest was of dubious provenance or irrelevant. Disney's submissions regarding revenues, marketing, and media exposure failed to segregate which pertained to dolls. Although Disney claimed that its re-imagined Tinker Bell character has achieved notoriety, the record was unclear as to whether that notoriety extends to its dolls. Furthermore, its evidence failed to provide the context that would allow an assessment of the commercial impact of the mark vis-a-vis other character dolls.

Opposer’s testimony and evidence related to the notoriety and even iconic status of the character TINKER BELL does not, on this record, demonstrate that the mark TINKER BELL is iconic or “famous” as applied to dolls. Considering both inherent and commercial strength, we find Opposer’s mark TINKER BELL, as applied to dolls, is entitled to an ordinary scope of protection on the spectrum of “very strong to very weak.”

Turning to the marks, as to TEEN TINKER BELL, applicant acknowledged that its dolls depict Tinker Bell as a teenager or adolescent. Thus the term “TEEN” in TEEN TINKER BELL"is at best suggestive of a feature or characteristic of Applicant’s goods, "and reinforces that the wording TINKER BELL identifies a female character." [How does teen = female? - ed.].

As to the TEEN TINK design mark, the Board noted that "TINK” is shorthand for TINKER BELL. Applicant concede that “J.M. Barrie also interchangeably uses the names Tinker Bell and Tink throughout the novel to refer to Tinker Bell.” The presence of the tiara design reinforces the reference to the Tinker Bell character.

The Board pooh-poohed applicant's argument that consumers will interpret Opposer’s TINKER BELL mark to “directly refer to the well-known fairy tale character Tinker Bell and evoke classic
images of a small pixie fairy, covered in a green skeleton leaf and sprinkling fairy dust” and “will immediately be reminded of the public domain character who represents children’s imaginations and hope."

Opposer’s TINKER BELL dolls do not depict the fairy as imagined by J.M. Barrie, but rather Opposer’s reimagining of TINKER BELL as an attractive, feminine creature, a diminutive pin-up. We find that connotation to be closely related to the connotation created by Applicant’s TEEN TINKER BELL mark, evoking the same beautiful character in her adolescent, teen years.

Noting that when the involved goods overlap, a lesser degree of similarity between the marks is need to support a finding of likelihood of confusion, the Board concluded that the mark TEEN TINKER BELL is "more similar than dissimilar" to the Disney mark, and conveys "similar commercial impressions overall." Likewise, the TEEN TINK & Design mark is "more similar to than dissimilar from Opposer’s TINKER BELL mark in appearance, sound and connotation and, overall creates a similar commercial impression."

Invoking the ninth du Pont factor, which considers the variety of goods on which a mark is used, the Board found that consumers are accustomed to see the Disney TINKER BELL mark on a wide variety of goods and services, and are therefore likely to perceive applicant’s teen-themed dolls as additional products from the Disney line. Thus, this factor favored a finding of likelihood of confusion.

Finally, turning to the catch-all 13th du Pont factor, The Board rejected Disney's claim that applicant adopted its marks in bad faith, noting applicant's assertion that it was “merely attempting to make use of a public domain character in a different light, not trade off any alleged fame” of the Disney marks. The Board found that explanation plausible.

Conclusion: the Board sustained the opposition

Read comments and post your comment here.

TTABlogger comment: Maybe applicant should, in honor of this case, market a Don Quixote doll depicted as tilting at a windmill.

Text Copyright John L. Welch 2020.


At 12:58 PM, Blogger Stacey Friends said...

Great use of alliteration.


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