Dakin's Miniatures, Inc.

Trademark Trial and Appeal Board

Nov 8, 1999

EX (T.T.A.B. Nov. 8, 1999)

Paper No. 14
TEH

THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB NOV. 8,99

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dakin’s Miniatures, Inc.
________

Serial No. 74/706,577
Serial No. 74/706,610
_______

Stanley R. Jones for Dakin’s Miniatures, Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office 110
(Chris Pedersen, Managing Attorney).
_______

Before Simms, Hairston and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Dakin’s Miniatures, Inc. has filed applications to register
the marks DAKIN’S QUALITY CRAFTED MINIATURES (and design),1 and
DAKIN’S CIRCLE B (and design),2 for goods which were subsequently
identified as "young and teen-age figurine collectibles, namely,

1 Serial No. 74/706,577 filed July 27, 1995 claiming use in commerce
since February 15, 1995.

2 Serial No. 74/706,610 filed July 27, 1995 claiming use in commerce
since February 15, 1995.
Ser Nos. 74/706,577 and 74/706,610
wooden miniature horse stalls, barns and farm-yard related
accessories and supplies." The marks are reproduced below.

Serial No. 74/706,557 Serial No. 74/706,610

Registration has been refused in both applications under
Section 2(d) of the Trademark Act on the ground that applicant's
marks so resemble the marks shown below (all owned by the same
registrant) for a variety of toy products, as to be likely to
cause confusion, mistake or deception:3

Registration No. 1,770,192 for "house mark for a full line of
toys and Christmas ornaments":4

DAKIN

2

3 We additionally note that previously-cited Registration No. 1,567,317
was cancelled by the Office on May 28, 1996. In her appeal brief, the
Examining Attorney withdrew the refusals based on this registration. We
also note that Registration No. 1,103,516 expired on July 12, 1999.
Therefore, the refusals to register are considered moot as to this
registration as well.

4 Issued May 11, 1993.
Ser Nos. 74/706,577 and 74/706,610
Registration No. 1,533,375 for "a line of toys":5

Registration No.1,531,015 for "house mark for a line of
toys":6

Registration No. 1,296,550 for "plush stuffed toys":7

3

5 Issued April 4, 1989; combined affidavits under Sections 8 and 15
filed.

6 Issued March 21, 1989; combined affidavits under Sections 8 and 15
filed.

7 Issued September 18, 1984; combined affidavits under Sections 8 and 15
filed.

Ser Nos. 74/706,577 and 74/706,610
Registration No. 1,249,114 for "infant toys – namely, stuffed
toy animals, balls, stars, rings and squares":8

Applicant has appealed, and because the issues in both cases
are the same, the appeals have been consolidated and the cases
have been presented on the same briefs. An oral hearing was not
requested.

4

8 Issued August 23, 1983; combined affidavits under Sections 8 and 15
filed. The words "BABY" and "THINGS," and the representation of the
baby have been disclaimed.

Ser Nos. 74/706,577 and 74/706,610
5

We affirm the refusals to register for the reasons set forth
below.9
In any likelihood of confusion analysis, we look to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention

9 At this point, we find it necessary to address several examination
issues which remained unresolved at the time of appeal. First, we note
that applicant, in its appeal brief, does not refer to its goods using
its last amended identification, i.e., "young and teen-age figurine
collectibles, namely wooden miniature horse stalls, barns and farm-yard
related accessories and supplies," but rather uses a form of an earlier
amended identification, "miniature figurine collectibles, namely
miniature horse and farm related shelters, accessories and supplies."
This earlier identification, however, was found to be indefinite by the
Examining Attorney and was subsequently amended by applicant to the
present identification. Accordingly, we have considered applicant's
goods, in both applications, to be "young and teen-age figurine
collectibles, namely wooden miniature horse stalls, barns and farm-yard
related accessories and supplies."
Further, with respect to the ‘577 application, the Examining Attorney
indicates in her brief that applicant "submitted a disclaimer of
'QUALITY CRAFTED MINIATURES.'" This statement is misleading and does
not reflect the state of the application at the time of appeal. In
fact, applicant did submit a disclaimer of this entire three-word phrase
in response to the Examining Attorney's initial requirement for such a
disclaimer. However, applicant later withdrew this disclaimer and
substituted therefor a disclaimer of "QUALITY CRAFTED." While the
Examining Attorney made final the requirement for a disclaimer of the
entire phrase, "QUALITY CRAFTED MINIATURES," this requirement was not
addressed or even raised by the Examining Attorney in her brief on
appeal. Thus, the Board considers this requirement to have been waived
by the Examining Attorney.
Finally, we also note that during the prosecution of these
applications, applicant, in an apparent attempt to overcome the Section
2(d) refusal, submitted a disclaimer of "DAKIN'S" in both applications.
In each final refusal, the Examining Attorney states that she "cannot
enter the disclaimer" requested by applicant. In fact, the Examining
Attorney could have entered the disclaimer. See TMEP § 1213.01(c). The
Commissioner has ruled that an applicant may disclaim part of a mark,
regardless of whether or not a disclaimer has been required or would be
deemed necessary. See In re MCI Communications Corp., 21 USPQ2d 1534
(Comm'r 1991). Since the entry of such a disclaimer is permitted by the
Office, and because the Examining Attorney also did not address this
issue in her appeal brief, the disclaimer of "DAKIN'S" has been entered
into the record.

Ser Nos. 74/706,577 and 74/706,610
6
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods. See In
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999)
and In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998).
We turn first to a consideration of the goods. Applicant
emphasizes the asserted differences in textures of the respective
goods and focuses on what it calls the "plush" versus "wooden"
nature of the products. Applicant differentiates registrant's
"soft, stuffed crib toys and crib mobiles" from its own "young
teen collectibles." Applicant claims that its products are:
"distinctly different in appearance and nature"; directed to "a
more mature and separate customer base..."; and "more
properly...considered as collectibles rather than toys."
Notwithstanding applicant's arguments, we find that
applicant's figurine collectibles, on the one hand, and
registrant's Christmas ornaments and full line of toys, including
plush stuffed toys, on the other, are related products which, if
sold under the same or similar marks, would result in likelihood
of confusion. First, these products are sold in the same channels
of trade. According to Mr. Dakin's declaration, (see infra)
registrant's plush toys and applicant's figurines are even sold in
the same retail store.
Moreover, although applicant attempts to distinguish the
targeted age groups for the respective products, as well as the
Ser Nos. 74/706,577 and 74/706,610
7
specific nature of the products, the question of likelihood of
confusion must be determined on the basis of the goods as set
forth in the application and registration, without limitations or
restrictions that are not reflected therein. See CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Thus, the intended customers for applicant's products and
many of registrant's products must be deemed to be the same.
While applicant has restricted its goods to a "young and teen-age"
audience, the toys and Christmas ornaments identified in three of
the cited registrations are not limited to any particular age
group. Therefore, those products must be presumed to reach all
age groups and classes of customers, including those identified by
applicant. Moreover, it appears that applicant's figurine sets
and accessories are actually designed for use by a younger age
group than applicant claims. The product catalogs submitted as
specimens in the '577 application depict young children, not
teenagers (young or otherwise), playing with the figurine sets.
Furthermore, applicant's figurines must be considered to be
encompassed by registrant's broadly described "full line of toys,"
notwithstanding applicant's restriction of its own goods to wooden
figurines and its claim that the figurines are "collectibles
rather than toys." In addition, applicant's product catalogs make
it clear that the figurines are marketed as toys, that is,
intended to be played with, and not just as collectors' items.
Even the Christmas ornaments identified in one of the cited
Ser Nos. 74/706,577 and 74/706,610
8

registrations must be construed to include such items as wooden
toy figurines which would be suitable for hanging as Christmas
ornaments.
Finally, we note that applicant has not argued or established
that its figurines are expensive products which would only be
purchased after careful thought and consideration.
We turn next to a consideration of the marks. The Examining
Attorney argues, in this regard, that the marks create "highly
similar" commercial impressions. The Examining Attorney maintains
that the word "DAKIN" is the dominant portion of applicant's and
registrant's marks, that the accompanying design elements are not
sufficient to distinguish the respective marks, and that DAKIN is
an arbitrary term when used in connection with registrant's line
of toys.
It is applicant's position that "DAKIN," as applicant's
family name, is neither a dominant nor controlling feature, but
rather plays only an "incidental part" in the overall commercial
impression created by the mark.10 Applicant maintains that
registrant "does not have any exclusivity to the word Dakin alone"
(emphasis omitted) and that all of the cited registrations "are

10 Applicant indicates in its brief that it is focusing its argument on
its "primary" mark, the mark in the '577 application. Applicant has not
separately addressed or attempted to distinguish the mark in the '610
application from registrant's marks.

Ser Nos. 74/706,577 and 74/706,610
9
combination marks which merely include the word Dakin together
with some other identifying symbol(s)."
In this case, we find that applicant's marks and registrant's
marks create very similar commercial impressions. While marks
must be compared in their entireties, one feature of a mark may
have more significance than another, and in such a case there is
nothing improper in giving greater weight to the dominant feature.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). In the case of marks which consist of words and a
design, the words are normally accorded greater weight because
they would be used by purchasers to request the goods. See In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
Moreover, descriptive matter is generally viewed as a less
dominant or significant feature of a mark. See In re National
Data Corp., supra.
In this case, a prominent feature of all of the marks is the
word, "DAKIN." In fact, one of the cited registrations consists
solely of the typed word "DAKIN." The marks in two other
registrations (Registration Nos. 1,533,375 and 1,531,015) are
dominated by the word "DAKIN," the triangle design in the latter
registration functioning merely as an insignificant carrier for
the "DAKIN" portion of the mark. In addition, we find that the
wording "QUALITY CRAFTED MINIATURES" (in the '577 application) is
less significant than "DAKIN'S" in the impression it creates due
to the descriptive or informational nature of the phrase, the
Ser Nos. 74/706,577 and 74/706,610
10
smaller size of its lettering, and the placement of the wording
along the periphery of the design. Nor is the similarity overcome
by the inclusion of "CIRCLE B" in the mark depicted in the '610
application in view of applicant's equally prominent display of
"DAKIN'S" in that mark.
Moreover, the presence of various design elements in
applicant's and registrant's marks does not serve to distinguish
those marks. It is the word portion of the marks which is most
likely to be impressed upon a customer's memory as it is used by
prospective purchasers when asking for applicant's and
registrant's goods. See In re Appetito Provisions Co., supra. In
fact, the wide assortment of designs in these marks may actually
enhance a perception that the goods offered thereunder emanate
from the same source. A purchaser familiar with the different
forms and variations of the designs appearing in registrant's
"DAKIN" marks, particularly in view of the closely related nature
of the respective products, is more likely to mistakenly assume
that the figurines sold under applicant's "DAKIN'S" marks, each
with its own accompanying design, are just part of, or an
expansion of registrant's line of "DAKIN" toys.
We note applicant's argument that "DAKIN" is a "family name,"
and therefore apparently weak and not entitled to a broad scope of
protection. While "Dakin" may be applicant's family surname,
there is no evidence to indicate that the public would perceive
the term as a surname. Moreover, applicant's claim that
Ser Nos. 74/706,577 and 74/706,610
11

registrant "does not have any exclusivity to the word Dakin alone"
is not understood inasmuch as the word "DAKIN," without any
additional wording, design or stylization, is registered on the
Principal Register without resort to a claim of acquired
distinctiveness under Section 2(f). There is no evidence
suggesting that the registered "DAKIN" marks are anything but
strong and entitled to anything less than a broad scope of
protection.
In addition to the above factors, we note that applicant has
submitted a declaration by its President, Mr. Roy Dakin, claiming
that this declaration reflects a "consent agreement" between
himself and the registrant.11 The question remaining, then,

11 Mr. Dakin asserts in his (unsigned) declaration that he has been
using the family name "Dakin" in his business for over ten years; that
applicant's products are sold in over 700 stores nationwide; that in
applicant's store in Searsport, Maine, applicant "sell[s] Dakin Plush
products...without any confusion in the market place"; and that "at a
precise date not now known, but probably in 1988 – a lady attorney
representing [registrant] contacted me" and "inquired about my use of
the surname Dakin as an identifying mark on my wooden, miniature farm-
related collector-type products." Mr. Dakin proceeds to recount his
version of the alleged conversation which took place between himself and
the unnamed attorney, concluding with the statement that the attorney
"acknowledged that I had a right to use my family name and that because
of the soft versus hard nature of our respective products no customer
confusion was likely." Mr. Dakin further alleges that
"[r]epresentatives of the two companies have many times met together at
National and International toy shows, and through those many meetings
[registrant] has become fully aware of [Mr. Dakin's] decade long
business..."; that no actual customer confusion "to [Mr. Dakin's]
knowledge" has occurred; and that he "personally know[s] the
[registrant's] officers and they have no problem with my [m]arks."

Ser Nos. 74/706,577 and 74/706,610
12
concerns the effect, if any, of this declaration on our
determination of likelihood of confusion. Applicant maintains
that the declaration reflects a consent agreement, and as such
should be given great weight.
Obviously, in appropriate circumstances, consent agreements
are entitled to substantial weight in determining likelihood of
confusion. See Bongrain International (American) Corp. v. Delice
De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987).
However, this does not mean that the mere existence of a consent,
regardless of the type of consent or the circumstances surrounding
the consent, will automatically result in a finding of no
likelihood of confusion. See Gray v. Daffy Dan's Bargaintown, 823
F.2d 522, 3 USPQ2d 1306 (Fed. Cir. 1987) and In re Donnay
International, Societe Anonyme, 31 USPQ2d 1953 (TTAB 1994).
Here, we do not have a consent agreement. What we have is
applicant's representation that registrant has consented to its
use of the "DAKIN'S" marks. Even if we were to find that there
was an oral agreement between applicant and registrant, we note
that most (if not all) of the cases concerning consents involved
written consents of the owner of the prior registrations to the

Ser Nos. 74/706,577 and 74/706,610
13

registration of the applicant's mark.12 Those decisions have also
generally required the type of agreement which, because of its
terms, could convince a finder of fact that, despite the
similarity of the marks and relatedness of the goods, confusion is
not likely to occur. All we have before us is Mr. Dakin's
unsupported assertions of fact and his one-sided, unsubstantiated
version of asserted exchanges which allegedly took place at some
unidentified time and place with some unnamed attorney and
unidentified officers of registrant's company. We simply cannot
conclude from Mr. Dakin's declaration that registrant has no
objection to the registration of applicant's marks.

12 See, for example, In re Four Seasons Hotels Limited, 987 F.2d 1565,
26 USPQ2d 1071 (Fed. Cir. 1993); Amalgamated Bank v. Amalgamated Trust &
Sav. Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988); Bongrain
International (American) Corp., supra; In re E.I. du Pont de Nemours &
Co., supra; and In re N.A.D., Inc., 754 F.2d 996, 224 USPQ 969 (Fed.
Cir. 1985). See also, for example, In re Sunmarks, 32 USPQ2d 1470 (TTAB
1994) and In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992). In
the General Motors case, the Board was convinced by a "confluence of
facts" that confusion, in that case, was not likely to occur. In the
present case, we are confronted only with vague and uncorroborated
assertions of fact.
Applicant claims that "[c]onsent [having] been established, no written
agreement was believe[d] necessary, and since then corporate buy outs,
mergers[,] name-changes and the like concerning registrant and the
reference[d] marks have entered the picture." However, applicant has
submitted no documentation to support this claim and we note that Office
records show that ownership of even the two oldest (active)
registrations has only been transferred once over the course of their
15-year existence. Moreover, applicant's president himself has stated
that he personally "knows" registrant's officers. It is not understood,
if registrant has no objection to applicant's use and registration, why
a simple and straight-forward consent could not have been obtained.

Ser Nos. 74/706,577 and 74/706,610
14
We find, based on the foregoing, that applicant's use of its
marks DAKIN'S QUALITY CRAFTED MINIATURES (and design) and DAKIN'S
CIRCLE B (and design) in connection with figurine collectibles is
likely to cause confusion with registrant's "DAKIN" marks for toys
and Christmas ornaments.
Decision: The refusal to register is affirmed.

R. L. Simms

P. T. Hairston

T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board