New York Trademark Attorney Blog
United Trademark Holdings, Inc. (Applicant) filed an application for the mark ZOMBIE CINDERELLA in standard character format for dolls. The Examining Attorney refused registration pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) based on a likelihood of confusion with the registration, WALT DISNEY’S CINDERELLA & Design owned by Disney Enterprises Inc. (Registrant). The Disney mark is registered in multiple international classes, most relevant for this analysis is International Class 28 for “toys, namely, plush toys, action figures, dolls, soft sculpture toys, and stuffed toys”. After a final refusal Applicant appealed to the Trademark Trial and Appeal Board (the “Board”). See In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014).
The Board noted that the goods of the Applicant and the Registrant were identical. Both parties used their trademark to brand dolls. Since the goods were identical the Board was entitled to presume that the Applicant’s and the Registrant’s goods moved in the same channels of trade and were offered to the same classes of consumers. This presumption is warranted even though there was no evidence presented by the parties in connection with trade channels. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). For information on the goods and services analysis see our webpage entitled, The Importance Of The Relatedness Of The Goods Or Services.
The Board then moved on to consider the similarities between the marks. For more details on the similarity analysis see our web page entitled Similarities In Trademarks. The Board reminded the parties of several general rules before analyzing the specific features of the marks. Since the goods are identical, the degree of similarity required to find a likelihood of confusion is not as great as where there are differences between the goods or services. If trademarks share common terms, then the additions or deletions made to the mark may be enough to avoid a likelihood of confusion. This may be the case, if the modifications to the mark convey a different commercial impression or if consumers are not likely to view the common term as distinguishing the source because the common term is descriptive or diluted. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), where it was held that CAPITAL CITY BANK would not be confused with CITIBANK due to the common use of “City Bank” in the banking industry.
Regarding the specific facts, the Board agreed with the Applicant’s argument that the term “Cinderella” is diluted by third party use and is commercially weak. Applicant bases its theory on the fact that the story of “Cinderella” is a well-known narrative going back to 1697 with a famous fairytale character of Cinderella. Upon hearing the name Cinderella consumers expect a product associated with the character Cinderella. The evidence showed that there was widespread recognition for the character Cinderella. The record demonstrated that based on third-party use of the term “Cinderella”, the mark will be entitled to a limited scope of protection. Applicant made of record multiple third-party registrations using the term “Cinderella” (but mostly for unrelated goods) and nine marketplace uses of the mark CINDERELLA in connection with dolls. Applicant’s evidence demonstrated that the term “Cinderella” was weak and diluted for dolls depicting the character Cinderella.
Further the Applicant argues that when comparing the two marks in their respective entireties, the commercial impressions are contrasting. The term “zombie” when paired with the term “Cinderella” conveys a totally different connotation than “Walt Disney’s Cinderella”. A zombie is commonly thought of as a monster in horror movies while Cinderella is a fairytale character. Zombies have become more familiar to consumers today through T.V. shows such as The Walking Dead or movies such as Night of the Living Dead. Zombie Cinderella conjures up an odd image in the consumer’s mind, while the Registrant’s mark creates the classic image of the fairytale portrayal of the character Cinderella (a pretty princess). Also, the well-known house mark “Walt Disney” and the related design image in the Registrant’s mark cannot be ignored. Registrant’s mark creates a different commercial impression from the irreconcilable image (innocence with horror) created by the pairing of two incongruous terms by the Applicant.
In the end, the Board relied heavily on the principle that where the marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a house mark or other terms may be sufficient to render the marks sufficiently distinguishable. See Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985). See also, Citigroup Inc. v. Capital City Bank Group, Inc., supra. The Board held that there was no likelihood of confusion between the Applicant’s mark and Registrant’s trademark and reversed the refusal to register. When dealing with a diluted term or a descriptive or highly suggestive common term, minor additions may be sufficient to allow the consumer to distinguish source and origin. If you have questions regarding whether a refusal based on a likelihood of confusion should be appealed, we would be happy to assist you, please contact our office for a courtesy consultation.