Gi-Go Toys Factory, Ltd.

Trademark Trial and Appeal Board

Oct 8, 2002

No. 75851085 (T.T.A.B. Oct. 8, 2002)

Mailed: 10/8/2002
Paper No. 10
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gi-Go Toys Factory, Ltd.
________
Serial No. 75/851,085
_______
Anthony O. Cormier for Gi-Go Toys Factory, Ltd.
Patricia A. Horrall, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Gi-Go Toys Factory, Ltd. has appealed from the final
refusal of the Trademark Examining Attorney to register
BABY TUBBY, with the word “Tubby” disclaimed, for “dolls
and doll accessories.”1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1 Application Serial No. 75/851,085, filed November 18, 1999,
and asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/851,085
2
1052(d), on the ground that applicant’s mark so resembles
the mark TUBBY, in the stylized form shown below, which is
registered for, inter alia, “doll making kits,”2 that, if
used on applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
Before we discuss the substantive issue, we turn to
some evidentiary matters. With its response to the first
Office action applicant submitted a listing taken from the
USPTO’s electronic search system (TESS) which indicated 46
marks containing the term TUBBY. The listing shows only
the mark, its serial number or registration number, and
2 Registration No. 1,057,536, issued February 1, 1977; Section 8
affidavit accepted; Section 15 affidavit received; renewed. The
registration also lists, in the identification of goods, comics
magazines, coloring books and self-erasing writing pads in Class
16, and jigsaw puzzles in Class 28. However, because the
Examining Attorney has discussed only the doll-making kits, we
have assumed that this is the only item with which she contends a
likelihood of confusion exists.
Ser No. 75/851,085
3
whether it is alive or dead. Such a listing is ordinarily
insufficient to make the registrations of record. To make
a registration of record, a copy of the registration,
either of the paper USPTO record, or a copy taken from the
electronic records of the USPTO, should be submitted. See
In re Duofold Inc., 184 USPQ 638 (TTAB 1974); In re Volvo
Cars of North America Inc., 46 USPQ2d 1455, n. 2 (TTAB
1998). However, because the Examining Attorney did not
advise applicant of this deficiency at a point when
applicant could have corrected it, but instead discussed
the evidence, we will consider the listing for whatever
probative value it has. That value is limited, for several
reasons. First, the listing does not show the goods or
services for the particular marks. Second, almost half of
the marks are indicated to be for applications, and third-
party applications have no probative value other than as
evidence that the applications were filed. See In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, n. 4 (TTAB
2002). Third, of the marks which are indicated to have
been registered, half of them are listed as “dead.” Thus,
there are only eleven currently-existing third-party
registrations on this list.
The Examining Attorney has also pointed out that only
applicant’s application and the cited registration are for
Ser No. 75/851,085
4
dolls. The Examining Attorney has submitted, in support of
this statement, an “X-search 1.1 printout.” We note that
this printout has its own evidentiary deficiencies. It
appears to be a search strategy which lists “hits,” but,
frankly, would be readily intelligible only to those who
are familiar with the X-search system.3 We think it
incumbent upon Examining Attorneys, if they wish to submit
evidence of this type, to provide an explanation as to
their search strategy, and what the hits actually show,
rather than a mere conclusory statement.
However, in this case applicant does not dispute that
the only TUBBY marks relating to dolls are its own and that
shown in the cited registration. Therefore, we deem
3 The printout reads, in its entirety:
# Total
Marks
Dead
Marks
Live
Viewed
Docs
Live
Viewed
Images
Status/
Search
Duration
Search
01 44 N/A 0 0 0:01 “tubby” [bi,ti]
02 24748 N/A 0 0 P/0:01 “doll” [gs]
03 2 0 2 2 0:01 1 and 2
Session started 8/29/01 10:36:40 AM
Session finished 8/29/01 10:37:15 AM
Total search duration 0:03 minutes
Session Duration 0:35 minutes
Default NEAR limit= 1 ADJ limit= 1
Ser No. 75/851,085
5
applicant and the Examining Attorney to have stipulated
this point.
This brings us to the substantive issue of whether
applicant’s mark, if used on its identified goods, is
likely to cause confusion with the cited mark. Our
determination of this issue is based on an analysis of all
of the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Here, we have no doubt that the marks are very
similar. The slight stylization of the cited mark does not
distinguish it from applicant’s mark, and applicant does
not argue this point. The fact is, because applicant has
applied for BABY TUBBY as a typed drawing, if it were to
obtain a registration its protection would extend to use of
the mark in the same or a similar stylized font as the
registered mark. Nor does the addition of the descriptive
word BABY in applicant’s mark serve to distinguish it from
Ser No. 75/851,085
6
the cited mark.4 It is well established that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). Because BABY
describes applicant’s dolls, it is the word TUBBY that
consumers will look to as the major source-identifying
feature, and therefore it is the dominant element of
applicant’s mark. Further, because both marks otherwise
consist of the identical word TUBBY, they convey very
similar commercial impressions. Certainly if TUBBY and
BABY TUBBY were used on the same goods, dolls, they are
likely to be viewed as identifying goods emanating from the
same source, with TUBBY being considered as a shortened
form of BABY TUBBY, or BABY TUBBY being considered as an
incarnation of the TUBBY doll in a baby form.
4 In its response to the first Office action applicant argued
that BABY was not a descriptive term for its goods, although we
note that it complied with the Examining Attorney’s requirement
that the word be disclaimed. Applicant did not pursue this
argument in its appeal brief and, indeed, acknowledged that BABY
is descriptive. p. 3.
Ser No. 75/851,085
7
However, the marks are not both for dolls. Rather,
the cited registration identifies the goods as “doll making
kits.” Applicant asserts that there are significant
differences between dolls and doll-making kits in terms of
the customers for the products and the channels of trade in
which they are marketed. Specifically, applicant contends
that dolls are finished goods, purchased off-the-shelf, and
that they are found in the doll sections of department
stores and toy stores. On the other hand, applicant
asserts that doll-making kits “are sold to skilled craft
and hobbyist consumers who are primarily interested in the
process and challenge of constructing dolls from raw
materials or components.” Brief, p. 5. In support of this
contention, applicant has submitted materials obtained from
the Internet regarding doll making. For example, a
question-and-answer page which appears to relate to a
company called “Doll Express” contains the following:5
Q: What is included in the kit?
A: The kit includes a fired and
painted head with eyes and a body
pattern so that one can assemble it
themselves and dress it as they wish.
The wigs are available but are not
included in the price.
5 www.pape-ent.com/dollxprs/html/faq.html.
Ser No. 75/851,085
8
After reviewing the materials which are of record, we
find that there is evidence that the same companies which
sell doll-making kits also sell dolls. For example, a
general listing of websites turned up by a search for “doll
making kits” on CompuServe.com includes the following:
Daydream’s Window—dolls and miniatures
Fairies, dolls and kit sets made by
Millie winner Pam Jackson....
http://homepages.paradise.net.nz/~lands
bri
Doll Creations
High quality porcelain doll
reproductions, blank and unpainted
bisque, as well as ready to dress
assembled dolls.
http://www.dollcreations.com
Kistler Dolls
A seven year dealer for Apple Valley
Doll Works, and new distributor for The
Baby Makers vinyl dolls and kits.
http://www.homestead.com/kistlersdolls/
Untitled/...
Kimekomi and Japanese Crafts
Kimekomi and Japanese crafts: dolls
from Japan, Japanese dollmaking and
crafts.
http://www.japanesedollsandcrafts.com
Further, an advertisement for LaDonna’s Doll Emporium
features a “Sugar Britches” doll as both a kit, for $55, or
as a ready-to-dress completely assembled doll for $75.6 And
the website for “Doll Express,” cited above, states that
6 http://www.angelfire.com/biz/ladonnasdolls/prices.html.
Ser No. 75/851,085
9
“At this Web site you will find supplies for all your
porcelain Doll Making needs as well as completed Dolls.”
Thus, this evidence shows that doll-making kits and
dolls may be sold to the same purchasers through the same
channels of trade, and that the same companies may offer
both dolls and doll-making kits, and may offer them under
the same trademarks. In view thereof, we find that
applicant’s identified dolls and the doll-making kits
identified in the cited registration are related goods, and
that, if applicant were to use the mark BABY TUBBY on its
dolls, it is likely to cause confusion with TUBBY doll-
making kits.
In reaching this conclusion, we recognize that “tubby”
has a suggestive significance and, therefore, the cited
registration is entitled to a more limited scope of
protection than an arbitrary or invented term.7 However,
although the registered mark TUBBY is not entitled to a
7 Our finding of a suggestive significance is not based on the
third-party registrations submitted by applicant, discussed
previously. Because there is no evidence of third-party TUBBY
marks for dolls or doll-making kits, the third-party
registrations do not show that “tubby” has a particular
significance for those goods. However, just as third-party
registrations can be used in the manner of dictionary definitions
to show that a term has a particular meaning, so too, obviously,
can dictionary definitions themselves. And in this case, we take
judicial notice that one definition of “tubby” is “short and
fat.” The American Heritage Dictionary of the English Language,
© 1970.
Ser No. 75/851,085
10
broad scope of protection, even the limited ambit of
protection to be accorded the cited registration is broad
enough to preclude the use of such a similar mark as BABY
TUBBY for such closely related goods as dolls and doll
accessories.
We have also considered applicant’s contention that
doll-making kits are bought by specialized purchasers,
namely, skilled craft and hobbyist consumers. Even if we
were to consider such purchasers as being more
discriminating than other members of the public, because of
the strong similarities of the marks, and the evidence that
doll-making kits and dolls may be sold under the same marks
to this same class of purchasers through the same channels
of trade, we find that such purchasers, familiar with TUBBY
for doll making kits, are likely to be confused by the use
of BABY TUBBY for dolls and doll accessories.
Moreover, although applicant characterizes doll-making
kits as relating to a “detailed and highly artistic craft,”
brief, p. 5, the identification in the cited registration
is not so limited. The term “doll making kits” is broad
enough to encompass inexpensive craft items for use by
young children, the same children who would play with
dolls. These kits would be sold in the same toy stores
that sell dolls, and children, as well as the adults who
Ser No. 75/851,085
11
purchase items for them, are likely to assume that TUBBY
doll making kits and BABY TUBBY dolls and accessories come
from the same source.
Decision: The refusal of registration is affirmed.