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A Reversal By The Board, Did The TTAB Reach The Right Decision?

Applicant sought to register the mark BUNGEE BLAST for a foam flying toy and hand-powered non-mechanical toy in class 28. The applicant applied for a standard character mark and disclaimed the term “BUNGEE”. The Examining Attorney refused the application citing a registration, BUNGEE GLIDERZ for toy airplanes, toy gliders, and toy sling planes in class 28 as a basis for a likelihood of confusion. The registrant disclaimed the term “GLIDERZ”. See In re Dennis Binkley,┬áSerial No. 86429294 (May 30, 2017) [not precedential].

The Board initiated the likelihood of confusion analysis with reviewing the relatedness of the goods. The Board held that applicant’s identification was broad enough to include the toys identified in the registration and was therefore legally identical. In light of the same goods and the lack of restrictions in the identifications, the Board was able to presume that the goods travelled in the same channels of trade (toy stores) and would be sold to the same purchasers. This factor weighs in favor of finding a likelihood of confusion between the sources of BUNGEE BLAST and BUNGEE GLIDERZ.

Next the Board evaluated the similarities and the differences between the marks. The following factors were examined, appearance, sound, connotation and commercial impression. The Board stated the general rule that consumers maintain a general rather than a specific impression. If purchasers would assume there is a connection between the sources when encountering the marks, then it can be said that confusion is likely. The term “Blast” has several meanings which include among them, a sudden loud sound or a violent effect of an explosion. Conversely, the term “Glider” means a light engineless aircraft designed to glide after being towed aloft. The Board held that the second terms in the respective marks were distinct and that due to the second terms the marks differed significantly in sight, sound, meaning and commercial impression.

It is interesting that the rationale used to decide this case is an exception to the general rule. Typically, the word in the first position is considered to be the dominant element of the trademark. Often, the first word is likely to be impressed on the consumer’s mind and remembered over other words in the mark. Also, it is common for disclaimed terms to be given less weight. However, in the case at bar, although the registrant disclaimed the term “GLIDERZ”, the Board considered it the more distinct part of the mark. In addition, the Board seemed to ignore another general rule that when the goods are considered legally identical or overlapping then less similarity is required between the marks. Instead, the Board justified its decision by stating that when the marks are different, use on even legally identical goods is permitted since confusion is not likely.

In the end, the Board held that the differences between the trademarks outweighed the other factors. For more details on the additional factors in a likelihood of confusion analysis, see our web page entitled, Likelihood Of Confusion Refusals, 2(d) Refusals. The Board cited the general proposition that one du Pont factor may be dispositive in a likelihood of confusion analysis, especially when the single factor is the dissimilarity between the marks. See Odom’s Tenn. Pride Sausage Inc. v. FF Acquisition, 600 F.3d 1343, 93 USPQ2d 2030 (Fed. Cir. 2010). See also, Champagne Louis Roederer S.A. v. Delicato Vineyards,148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998).

This decision in my opinion is a bit atypical because it contradicts several general rules that are often relied on for refusing trademark applications. However, the quirky aspect of trademark law is that although a significant amount of time is spent supporting the likelihood of confusion decision and in citing relevant case law to justify the result, more often than not the conclusion regarding confusion is made within minutes of the evaluation. The only thing that could have surprised me more was if this decision was cited as a precedent of the TTAB. In an area of the law that can be quite subjective, relying on experienced trademark counsel increases the likelihood of registering your mark. If you have questions involving likelihood of confusion, please feel free to contact our office for a courtesy consultation.