Interlego AG, Lego Systems, Inc. and Kirkbi AGv.Abrams / Gentile Enter-tainment, Inc. and MJJ Multimedia LLC

Trademark Trial and Appeal Board

Mar 8, 2002

No. 91103612 (T.T.A.B. Mar. 8, 2002)

Hearing: Paper No. 45
November 1, 2001 EWH

Mailed: March 8, 2002
THIS DISPOSITION IS CITABLE PRECEDENT OF THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
___________

INTERLEGO AG and LEGO SYSTEMS, INC.
and KIRKBI AG, joined as party plaintiff

Opposers,

v.

ABRAMS/GENTILE ENTERTAINMENT, INC.
and MJJ MULTIMEDIA LLC joined as
party defendant

Applicants
____________

Opposition No. 103,612 to Application Ser. No.
75/011,293 filed on October 27, 1995.
____________

David Ehrlich of Fross, Zelnick, Lehrman & Zissu for
opposers.

James David Jacobs of Baker & McKenzie for applicants.
____________

Before Cissel, Hanak and Quinn, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Applicants seek to register MEGO in typed drawing
form

Opp. No. 103,612

for “children’s toys, namely, action figures, vehicles,
dolls and accessories therefore.” The intent-to-use
application was filed on October 27, 1995.
This application has been opposed on the basis that
long prior to October 1995, opposers both registered and
used in the United States the mark LEGO for a wide array
of toys, and that the contemporaneous use of the marks
MEGO and LEGO on toys is likely to cause confusion,
mistake or deception pursuant to Section 2(d) of the
Trademark Act.
Applicants filed an answer which denied the
pertinent allegations of the Notice of Opposition. Both
opposers and applicants filed briefs and were present at
a hearing held before this Board on November 1, 2001.
Priority is not an issue in this proceeding because
opposers have properly made of record certified status
and title copies of their four registrations of the mark
LEGO covering a wide array of toys. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Two of these four registrations are
particularly pertinent because they depict the mark LEGO
in typed drawing form without any background design. The
first of
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Opp. No. 103,612

these two registrations is Registration No. 1,018,875
issued August 26, 1975 for, among other goods, “doll
figures and vehicular toys.” The second registration is
Registration No. 2,245,652 and it encompasses, among
other goods, “toy figures, toy vehicles and dolls.” In
addition, the evidence of record demonstrates that
opposers have continuously used in the United States the
mark LEGO since 1975, if not much earlier, on a wide
array of toys. Indeed, at page 11 of their brief,
applicants state that opposers have used the LEGO mark in
the United States since at least 1961.
In any likelihood of confusion analysis two key,
although not exclusive, considerations are the
similarities of the goods and the similarities of the
marks. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”)
Considering first the goods, they are, at least in
part, legally identical. As previously noted, applicants
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Opp. No. 103,612

seek to register MEGO in typed drawing form for toy
action figures, toy vehicles and dolls. Opposers have
previously registered LEGO in typed drawing form for toy
figures, toy vehicles and dolls.
Considering next the marks, we note at the outset
that when the goods are at least in part legally
identical, as is the case here, “the degree of similarity
[of the marks] necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). Obviously, the marks LEGO and
MEGO are extremely similar in that they differ simply by
one letter. We believe that many adults would not notice
this very minor difference in the two marks. Moreover,
it is obvious that many purchasers of toys are children,
who are even less likely to notice this slight difference
in the two marks.
Applicants devote less than one page of their brief
to a discussion of the differences between the two marks.
With regard to visual appearance, applicants merely state
the obvious, namely, that their mark begins with the
letter “M” and that opposers’ mark begins with the letter
“L.”
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Opp. No. 103,612

(Applicants’ brief page 10).
With regard to the purported dissimilarities in
sound and connotation, applicants rely upon the testimony
of their chairman Martin Abrams who testified that the
mark MEGO was inspired by the fact that many years ago
his little brother, when the family was about to take a
trip, would state: “Me go too. Me go too.” (Abrams
deposition page 14). From this origination of the MEGO
mark applicants argue that their mark differs from the
LEGO mark in pronunciation in that their mark would be
pronounced as “me go” whereas opposers’ mark would be
pronounced in a manner that it sounds like the word
“lay.” There are two problems with applicants’ argument.
First, Mr. Abrams has conceded that applicants have made
no use whatsoever of the MEGO mark. (Abrams deposition
pages 35 and 78). Thus, applicants have certainly not
educated the public to pronounce their mark MEGO as “me
go.” A much more logical pronunciation of applicants’
mark MEGO is that it would be pronounced as a girl’s name
(Meg) followed by a long “O” sound. Likewise, the well
recognized pronunciation of opposers’ mark LEGO is the
word “leg” followed by a long
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Opp. No. 103,612

“O” sound. Obviously, the feminine name “Meg” and the
word “leg” are extremely similar in sound. Indeed, they
rhyme. Second, even if applicants had hypothetically
made some effort to educate the public to pronounce their
mark MEGO as “me go,” the fact remains “that there is no
correct pronunciation of a trademark.” In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). Even if
applicants were in the future to make efforts in
attempting to educate the public as to how to pronounce
their mark, we are of the firm belief that a significant
portion of the public would still pronounce applicants’
mark as “Meg O.” This is particularly true given the
great fame of opposers’ LEGO mark, which we will discuss
later in this opinion.
Finally, in terms of connotation, applicants argue
at page 10 of their brief that LEGO has no meaning
whereas their mark MEGO brings to mind “a child’s desire
to accompany another on a trip (‘me go’).” Once again,
the fallacy with applicants’ argument is that consumers
would know the derivation of the mark MEGO. Given the
fact that consumers do not know this derivation, both
marks are
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Opp. No. 103,612

similar in that they lack any connotation.
In sum, given the fact that applicants’ and
opposers’ goods are, in part, legally identical, and the
fact that the two marks are extremely similar, we find
that their use on toys is likely to result in confusion,
especially when one considers that many purchasers of
toys are children.
We are of the firm belief that there exists a strong
likelihood of confusion resulting from the
contemporaneous use of these two marks on toys. However,
if there were even the slightest doubt on the issue of
likelihood of confusion (which there is not), this doubt
is totally removed when one recognizes that oppposers’
mark LEGO is one of the most famous toy marks in the
United States. To elaborate, the Director of Marketing
for opposer Lego Systems, Inc. (Charles McLeish)
testified that in the ten year period preceding March
2000, opposers’ total United States sales of LEGO toys
exceeded 1 billion dollars. During that same time
period, opposers’ advertising expenditures for LEGO toys
in the United States exceeded 100 million dollars.
According to Mr. McLeish’s testimony, these sales figures
placed LEGO toys in the top five brands
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Opp. No. 103,612

of toys in the United States. Finally, Mr. McLeish
testified that market studies demonstrated that
approximately two-thirds of United States households with
children fourteen years of age and younger owned at least
one LEGO toy. (McLeish deposition pages 24 to 26).
Our primary reviewing Court has made it crystal
clear that famous trademarks enjoy a very broad scope of
protection. Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). Given the fact that opposers have
demonstrated that in the United States their LEGO
trademark is a very famous mark for toys, there is yet
another compelling reason supporting our finding that
there exists a likelihood of confusion resulting from the
contemporaneous use of LEGO and MEGO on identical toys.
One additional comment is in order. At pages 11 and
12 of their brief, applicants argue that the lack of
evidence of actual confusion “weighs heavily against
finding a likelihood of confusion.” Of course, as
previously noted, applicants have yet to even commence
use of their MEGO mark. Applicants’ unusual argument is
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Opp. No. 103,612

premised on the fact that prior to 1982, a company
unrelated to applicants made use of the mark MEGO on toys
and that purportedly there occurred no instances of
actual confusion involving opposers’ LEGO toys and the
MEGO toys of this unrelated company. Two comments are in
order. First, proof of actual confusion is not a
prerequisite to a finding of likelihood of confusion.
Second, given the fact that this unrelated company ceased
use of the mark MEGO approximately two decades ago, it is
highly unlikely that opposers would have retained
documentation of instances of actual confusion had they
existed. As for applicants’ argument that there still
exist old MEGO toys in the market today, applicants
acknowledge that this market is “fueled by collectors and
toy aficionados.” (Applicants’ brief page 12). In other
words, what few old MEGO toys exist today are not being
marketed to children, the normal consumers of toys, but
rather are being collected by toy aficionados. Even if
we assume purely for the sake of argument that toy
aficionados could distinguish between MEGO toys and LEGO
toys, these toy aficionados are but a tiny fraction of
the consumers of toys, namely, children and their
parents,
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Opp. No. 103,612

grandparents and friends.
Having found that there exists a likelihood of
confusion, we elect to sustain the opposition on this
basis alone. We will not consider opposers’ claim, which
was unpled but which was tried by the consent of the
parties, that the current applicants are bound by a 1985
settlement agreement entered into by opposers and Mego
Corp., the former owner of the old MEGO mark. See
American Paging Inc. v. American Mobilephone Inc., 13
USPQ2d 2036, 2039 (TTAB 1989), aff’d 17 USPQ2d 1726 (Fed.
Cir. 1990) and cases cited therein.
Decision: The opposition is sustained.

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