Disney Enterprises, Inc.v.United Trademark Holdings, Inc.

Trademark Trial and Appeal Board

Jun 8, 2020

91224985 (T.T.A.B. Jun. 8, 2020)

Hearing: September 25, 2019 Mailed: June 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Disney Enterprises, Inc.
v.
United Trademark Holdings, Inc.
_____

Opposition Nos. 91221648 and 912249851
_____

David M. Kelly, Linda K. McLeod and Kelu Sullivan of Kelly IP, LLP for Disney
Enterprises, Inc.

Erik M. Pelton of Erik M. Pelton & Associates PLLC for United Trademark Holdings,
Inc.
_____

Before Cataldo, Shaw and Dunn, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, United Trademark Holdings, Inc., applied for registration on the
Principal Register of the marks:

1 On March 10, 2016, the Board issued an order, 13 TTABVUE, granting Opposer’s February
9, 2016 motion to consolidate these proceedings. 12 TTABVUE. In this decision, we will refer
to the pleadings, trial record, briefs and other filings and orders in parent Opposition No.
91221648 unless otherwise noted.
This Opinion Is Not a
Precedent of the TTAB
Opposition Nos. 91221648 and 91224985

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2 and TEEN TINKER BELL (in standard characters),3 both
identifying “dolls” in International Class 28.
Opposer, Disney Enterprises, Inc., has opposed registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
priority and likelihood of confusion with its pleaded marks.4 Opposer pleaded
ownership of more than thirty registrations, including the following:
TINKER BELL (issued in standard characters on the Principal Register)
identifying, as amended, “dolls; mechanical toys” in Class 28;5

TINKERBELL (issued in typed form6 on the Principal Register) identifying
“dolls and doll accessories,” in Class 28;7

2 Application Serial No. 85833851 was filed on January 28, 2013 pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of use of the mark in
commerce in connection with the goods since January 1, 2013. The application includes the
following description of the mark and color claim: “The mark consists of the stylized text
‘Teen Tink’ with a design of a crown above it.” “Color is not claimed as a feature of the mark.”
3 Application Serial No. 86533016 was filed on February 12, 2015 pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s claim of a bona fide intent
to use the mark in commerce in connection with the goods.
4 1 TTABVUE.
Because the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that
citations to non-confidential parts of the record include the TTABVUE docket entry number
and the TTABVUE page number. For material or testimony that has been designated
confidential and which does not appear on TTABVUE, the TTABVUE docket entry number
where such material or testimony is located should be included in any citation. See Turdin v.
Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
5 Reg. No. 3636910 issued on June 9, 2009. First Renewal. 30 TTABVUE 17-19.
6 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’
marks formerly were known as ‘typed’ marks, but the preferred nomenclature was changed
in 2003 to conform to the Madrid Protocol … we do not see anything in the 2003 amendments
that substantively alters our interpretation of the scope of such marks.”).
7 Reg. No. 1736777 issued on December 1, 1992. Second Renewal. 30 TTABVUE 75-84.
Opposition Nos. 91221648 and 91224985

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TINK (issued in typed form on the Principal Register) identifying “hats; caps;
pajamas; sweat pants; shirts; t-shirts,” in Class 25;8

TINK (issued in standard characters on the Principal Register) identifying
various goods in Classes 16, 20, 21 and 30;9 and

TINK (issued in typed form on the Principal Register) identifying various goods
in Classes 14, 18 and 25.10

Applicant, in its answer, denied the salient allegations in the notice of
opposition.11 The Board presumes the parties’ familiarity with the procedural history
of this proceeding.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application files.
In addition, Opposer submitted the following testimony and evidence:
• Testimony Declaration of Katherine James, Director of Business Affairs for
Disney Parks, Experiences, and Consumer Products (formerly Director of
Business Affairs for Disney Consumer Products & Interactive Media)
(“James I”) and exhibits thereto.12

8 Reg. No. 3561526 issued on January 13, 2009. First Renewal. 30 TTABVUE 278-83.
9 Reg. No. 3851671 issued on September 21, 2010. Section 8 affidavit accepted; Section 15
affidavit acknowledged. (Section 9 reminder mailed September 21, 2019). 30 TTABVUE 285-
90.
10 Reg. No. 3734512 issued on January 5, 2010. Section 8 affidavit accepted; Section 15
affidavit acknowledged. (Section 9 reminder mailed January 5, 2019). 30 TTABVUE 292-99.
11 4 TTABVUE. On October 19, 2015, the Board issued an order, 9 TTABVUE, granting in
part Opposer’s motion to strike Applicant’s affirmative defenses, at 5 TTABVUE, and striking
the affirmative defenses raised in paragraphs 28-32 and 40-42 of Applicant’s answer. The
remainder of the “affirmative defenses” asserted in the answer serve as amplifications of
Applicant’s denials, and have been so construed.
12 40-42 TTABVUE; 44-49 TTABVUE; 51-59 TTABVUE. Unredacted versions of Ms. James’
testimony declaration and exhibits 10 and 19 thereto, containing confidential information,
are located at 39, 44 and 50 TTABVUE and are not visible to the public.
Opposition Nos. 91221648 and 91224985

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• Notice of Reliance No. 1, filed February 20, 2018, consisting of status and
title copies of U.S. Trademark Registrations for Opposer’s TINKER BELL
& TINK Marks.13

• Corrected Notice of Reliance No. 2, filed February 21, 2018, consisting of
representative samples of unsolicited media attention in national
publications and television transcripts available to the general public
showing, inter alia, the nature and extent of the public’s exposure to the
TINKER BELL & TINK Marks.14

• Notice of Reliance No. 3, filed February 21, 2018, consisting of various
internet printouts showing descriptive and generic use of “teen” and
“teenage” for dolls, and a book entitled Teen Dolls by Patricia R. Smith.15

• Notice of Reliance No. 4, filed February 20, 2018, consisting of the
application filings from trademark registrations owned by Applicant and
representative internet website pages identifying or referring to Applicant’s
goods as “Disney” products.16

• Notice of Reliance No. 5, filed February 21, 2018, consisting of copies of
books and plays entitled: Tinker Bell an Evolution; Disney A to Z: The
Official Encyclopedia; Peter and Wendy, and Peter Pan or The Boy Who
Would Not Grow Up (play).17

• Notice of Reliance No. 6, filed February 20, 2018, consisting of
representative samples from Internet websites for various retailers
displaying Applicant’s goods.18

Applicant submitted the following evidence:
• Notice of Reliance No. 1, dated May 18, 2018, consisting of third-party
registration certificates for trademarks that contain or comprise of the
terms TINKER, TINK or TINKER BELL for various goods and services,

13 30 TTABVUE. We do not rely upon Opposer’s pleaded registrations that have been
cancelled during the course of this proceeding.
14 33 TTABVUE.
15 34 TTABVUE.
16 31 TTABVUE.
17 35-38 TTABVUE.
18 32 TTABVUE.
Opposition Nos. 91221648 and 91224985

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and Applicant’s trademark registration certificates for various character
marks and TEEN marks.19

• Notice of Reliance No. 2, dated May 18, 2018, consisting of printed
publications of the following works: The Little White Bird by J.M. Barrie,
published in 1898; Peter Pan in Kensington Garden by J.M. Barrie,
published in 1906; Peter Pan (Peter and Wendy) by J.M. Barrie, published
in 1911 (see Exhibit 3C); Peter Pan by James M. Barrie, published in 1904;
and Peter Pan (A Bonnie Book) by Samuel Lowe Company; based on the
play by J.M. Barrie.20

• Notice of Reliance No. 3, dated May 18, 2018, consisting of internet
materials that depict goods and services containing the terms TINKER
BELL or TINK, excerpts from the book Peter and Wendy, and articles about
Peter Pan intellectual property rights.21

• Notice of Reliance No. 4, dated May 18, 2018, consisting of portions of
Disney’s pleaded registration files, namely the most recently filed
specimens of use provided by Disney in each of its pleaded registrations.22

• Notice of Reliance No. 5, dated May 18, 2018, consisting of final decisions
from courts in cases involving trademarks and public domain works.23

• Notice of Reliance No. 6, dated May 18, 2018, consisting of printed
publications that discuss trademarks in character names, public domain
works, and rights attached to copyrighted works that entered the public
domain.24

• Notice of Reliance No. 7, dated May 18, 2018, consisting of official records
of trademark registration certificates owned by Disney and specimens of
use submitted therewith.25

19 62 TTABVUE.
20 63 TTABVUE.
21 64 TTABVUE.
22 65 TTABVUE.
23 66 TTABVUE.
24 67 TTABVUE.
25 68 TTABVUE.
Opposition Nos. 91221648 and 91224985

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Opposer submitted the following rebuttal testimony and evidence:
• Rebuttal Declaration of Katherine James, Director of Business Affairs for
Disney Parks, Experiences, and Consumer Products (“James II”) and
exhibits thereto.26

• Rebuttal Notice of Reliance No. 1, filed December 3, 2018, consisting of the
complete application file history for Applicant’s U.S. Trademark
Application Serial No. 87690863 for the mark RAPUNZEL.27

II. Background
“Tinker Bell” originally appeared as a character in several works by J.M. Barrie,
including the play Peter Pan, and the novels Peter and Wendy, The Little White Bird
and Peter Pan in Kensington Gardens. 28 The play Peter Pan was first performed in
1904 and later published in 1928.29 As Walt Disney stated in 1953, “It couldn’t be
ignored that the play has earned its place among the world’s theatrical masterpieces
with steady patronage through half a century since its first showing at the Duke of
York Theatre in London in 1904.”30 In the original play, Tinker Bell was depicted as
a beam of light and musical bells and chimes.31 In the book Peter and Wendy, Tinker
Bell is described as a “fairy girl gowned in a skeleton leaf.”32

26 75 TTABVUE. Unredacted versions of Ms. James’ testimony declaration and exhibits
thereto, containing confidential information, are located at 74 TTABVUE and are not visible
to the public.
27 73 TTABVUE.
28 63 TTABVUE.
29 63 TTABVUE.
30 41 TTABVUE 254.
31 James Declaration, 40 TTABVUE 7.
32 40 TTABVUE 7.
Opposition Nos. 91221648 and 91224985

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In 1939, Opposer’s predecessors in interest acquired exclusive rights to “make,
reproduce, and exhibit animated cartoon motion pictures and engage in
merchandising activities related thereto,” based upon the play Peter Pan and related
“Peter Pan” works originally created by J.M. Barrie.33 In 1953, after twelve years of
development and numerous revisions, Opposer’s predecessors in interest released the
animated Peter Pan motion picture, featuring a revised Tinker Bell as a major
character.34 Again, in the words of Walt Disney:
Tiny Tinker Bell also is a definite transformation for the screen. She is
a completely feminine person, jealous and vixenish, in place of the
disembodied fairy she has always been on stage, represented only by a
beam of light. I believe you’re going to like Tinker Bell. We fell in love
with her here at the studio.35

Opposer’s predecessors in interest reimagined the character of Tinker Bell into a
“graceful and gorgeous” creature, the size of Peter Pan’s thumb but possessing “the
miniature proportions of a beauty contest winner and pin-up favorite.”36
In 2013, Applicant launched its Fairy Tale High collection of dolls depicting
“public domain characters from well-known fairy tales, including Snow White,
Rapunzel, Belle, Sleeping Beauty, Little Mermaid, Alice in Wonderland, Tinker Bell
and Cinderella.37 The dolls are reimagined as teenagers with cellphones,

33 40 TTABVUE 6.
34 40 TTABVUE 7.
35 41 TTABVUE 255.
36 41 TTABVUE 257.
37 Applicant’s brief, 82 TTABVUE 11.
Opposition Nos. 91221648 and 91224985

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contemporary hairstyles and designer clothing.38 Applicant “has kept some crucial,
defining elements of the public domain characters, but added trendy, marketable
features (i.e., non-traditional colored streaks in the hair, funky leggings, colorful
makeup, and fashion-forward accessories.)”39 Applicant asserts “[b]y re-imagining
and re-styling the public domain Tinker Bell as TEEN TINKER BELL and TEEN
TINK, [Applicant] has been able to create its own version of J.M Barrie’s Peter Pan’s
Tinker Bell.”40
III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). A belief in likely
damage can be shown by establishing a direct commercial interest. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Opposer’s standing in this proceeding is established by its live pleaded
registrations, which the record shows to be valid and subsisting, and owned by

38 82 TTABVUE 10.
39 82 TTABVUE 11.
40 82 TTABVUE 12.
Opposition Nos. 91221648 and 91224985

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Opposer.41 Cunningham, 55 USPQ2d at 1844; Otter Prods. LLC v. BaseOneLabs LLC,
105 USPQ2d 1252, 1254 (TTAB 2012).
IV. Priority
Because Opposer’s pleaded registrations are of record, priority is not an issue with
respect to the goods or services identified in those registrations. Penguin Books Ltd.
v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135
S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont
factor that is relevant or for which there is evidence of record. See M2 Software, Inc.
v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its
own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed).

41 30 TTABVUE.
Opposition Nos. 91221648 and 91224985

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In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 64 USPQ2d at 1375, 1380 (Fed. Cir. 2002)).
A. Focus on pleaded Registration No. 3636910.
We will focus our likelihood of confusion analysis on the mark TINKER BELL, in
Opposer’s pleaded Reg. No. 3636910 (’910 Reg.) identifying “dolls; mechanical toys,”
because when that mark is considered vis-à-vis the applied-for mark and identified
goods, it is that mark and goods that are most likely to support a finding of likelihood
of confusion. See, e.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
B. The nature and similarity or dissimilarity of the goods, the
established, likely-to-continue trade channels, and the classes of
purchasers.

We now consider the second and third DuPont factors, the similarity or
dissimilarity of the parties’ goods and the parties’ established, likely-to-continue
Opposition Nos. 91221648 and 91224985

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trade channels. The second DuPont factor concerns the “similarity or dissimilarity
and nature of the goods or services as described in an application or registration,”
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1159 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods, identified
as “dolls” in both involved applications, are identical to the “dolls” identified in
Opposer’s ’910 Reg. Put another way, the goods in Opposer’s ’910 Reg. subsume and
are identical in part to Applicant’s goods.
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the “dolls” identified in the
involved applications and the ’910 Reg. are identical, we must presume that the
channels of trade and classes of purchasers for these goods are the same. See In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); Am. Lebanese Syrian Associated Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
In view thereof, the DuPont factors regarding, in this case, the identity of the
goods, channels of trade, and classes of purchasers strongly favor a finding of a
likelihood of confusion.
Opposition Nos. 91221648 and 91224985

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C. The strength of Opposer’s TINKER BELL mark.

In determining the strength of a mark, we consider both its inherent or conceptual
strength based on the nature of the mark itself and its commercial strength, based
on the marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. North Atlantic Operating Co.,
Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined
by assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). Market strength is the
extent to which the relevant public recognizes a mark as denoting a single source.
Tea Bd. of India, 80 USPQ2d at 1899. For purposes of analysis of likelihood of
confusion, a mark’s renown “varies along a spectrum from very strong to very weak.”
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted). The proper
standard is the mark’s “renown within a specific product market,” id., and “is
determined from the viewpoint of consumers of like products,” id. at 1735, and not
from the viewpoint of the general public.
1. Inherent or Conceptual Strength of TINKER BELL
“In order to determine the conceptual strength of the cited mark, we evaluate its
intrinsic nature, that is, where it lies along the generic-descriptive-suggestive-
Opposition Nos. 91221648 and 91224985

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arbitrary (or fanciful) continuum of words.” In re Davia, 110 USPQ2d 1810, 1815
(TTAB 2014). Applicant argues:42
There is no evidence of record that the term TINKER BELL is inherently
distinctive. Longman Dictionary defines the term “TINKERBELL” as “a
fairy …who helps Peter Pan in the play and book Peter Pan by J.M.
Barrie,” and indicates that “[s]he talks to Peter Pan by making bell-like
sounds.”43 Similarly, Your Dictionary defines the term “TINKERBELL”
as “[a]nything whose existence of power depends on the faith of
believers,” and lists the origin of the term as “a fairy in J M Barrie’s
Peter Pan.”44 Macmillan Dictionary echoes a[n] analogous [sentiment]
that the term “TINKERBELL” is “used to refer to ideas that lack
substance or validity and require unquestioning support: named after
the character in J M Barrie’s Peter Pan who returned from near death
because of the audience’s belief in her.”45 Likewise, the term TINKER
BELL is not coined or arbitrary; in fact, its definition refers to the public
domain character featured in J.M. Barrie’s 1911 novel. Its presence in
scores of third-party registrations and third-party uses in the field of
dolls and other related toys demonstrates that it is highly suggestive of
a public domain character. In fact, for a doll that depicts the public
domain character Tinker Bell, the name TINKER BELL or TINK is
highly suggestive in that it names and describes the character
depicted.46

Applicant relies on a non-precedential ex parte decision by this tribunal involving
its application to register the mark ZOMBIE CINDERELLA for dolls in support of its
contention.47 See In re United Trademark Holdings, Inc., Serial No. 85706113 (“For
such goods [dolls], the term CINDERELLA in Registrant’s mark would be, at a

42 The Board grants Applicant’s request for judicial notice of the submitted dictionary
definitions, all retrieved by Applicant on May 15, 2019. See, e.g., In re S. Malhotra & Co. AG,
128 USPQ2d 1100, 1104 n.9 (TTAB 2018).
43 Definition retrieved from Longman Dictionary of Contemporary English, ldoceonline.com.
44 Definition retrieved from Your Dictionary, yourdictionary.com.
45 Definition retrieved MacMillan Dictionary, macmillandictionary.com.
46 82 TTABVUE 27.
47 Id.
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minimum, highly suggestive of the goods.”). Although parties may cite to non-
precedential decisions, the Board does not encourage the practice. Corporacion
Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011); see also In re
Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-
precedential decisions, but they are not binding on the Board and because they have
no precedential effect, the Board generally will not discuss them in other decisions).
We add, nonetheless, that the record in that case showed that numerous dolls
depicting the character CINDERELLA were offered in the market by entities
unrelated to the owner of the cited registration (Opposer herein). As discussed below,
the record in the case before us does not support such a finding.
The facts in this case may further be distinguished from the facts presented in In
re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017), in which the
Board affirmed the examining attorney’s refusal of registration of the applicant’s
(Applicant herein) mark LITTLE MERMAID for dolls on the basis of mere
descriptiveness. In that decision, the Board found:
[A] fictional public domain character like the Little Mermaid of the Hans
Christian Anderson fairy tale is not necessarily linked to a specific
commercial entity and may be presented in various embodiments
because prospective purchasers expect dolls labeled as LITTLE
MERMAID to represent the fairy tale character and, thus, describes the
purpose or function of the goods (i.e., to represent the Little Mermaid of
the fairy tale).

In re United Trademark Holdings, Inc., 122 USPQ2d at 1799. In the case before
us, as discussed above, Opposer secured acquired exclusive rights to “make,
reproduce, and exhibit animated cartoon motion pictures and engage in
Opposition Nos. 91221648 and 91224985

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merchandising activities related” to the works of J.M. Barrie, featuring the
character TINKER BELL.48 Thus, in this case Opposer has demonstrated a
proprietary interest in the theatrical and literary works from which TINKER
BELL is derived.
We note, however, that even in the event Opposer had not demonstrated such
an interest, the above decisions are ex parte determinations in which Opposer was
not a party. In the case before us, Opposer has pleaded and proven that it owns
approximately thirty registrations for TINKER BELL marks, including the ’910
Reg. Contrary to Applicant’s arguments, Opposer’s TINKER BELL mark in the
’910 Reg. is inherently distinctive as evidenced by its registration on the Principal
Register without a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act. Tea Bd. of India, 80 USPQ2d at 1889. Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate of registration on
the Principal Register shall be prima facie evidence of the validity of the
registrations, of Opposer’s ownership of the marks and its exclusive right to use
the marks in connection with the goods or services identified in the certificates.
Inasmuch as Applicant has not counterclaimed to cancel any of Opposer’s pleaded
registrations, the validity of Opposer’s ’910 Reg. remains unchallenged.49 Given

48 40 TTABVUE 6.
49 In its brief (82 TTABVUE 18 n.5, 24 n.6) Applicant asserts that it is not attempting to
collaterally attack the validity of the pleaded registrations, but merely argues that they are
“entitled to only a narrow scope of protection due to the highly suggestive and diluted nature
of the shared terms in connection with the relevant goods.” Id. We so construe Applicant’s
arguments.
Opposition Nos. 91221648 and 91224985

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our limited jurisdiction, we will consider Applicant’s arguments and evidence
regarding the presence of the character TINKER BELL in the public domain solely
in the context of Opposer’s claim of likelihood of confusion.
As discussed infra, there is no question on this record that TINKER BELL
refers to a fairy originally created by J.M. Barrie in approximately 1904,
reimagined by Opposer’s predecessors in interest in 1953 after twelve years of
revisions, and sought to be reimagined by Applicant in 2013. There is also no
question that the dolls identified by Opposer’s TINKER BELL mark depict the
character of the same name, as reimagined by Opposer and its predecessors in
interest. Cf. In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994)
(MARTHA WASHINGTON merely descriptive of dolls portraying the historical
individual Martha Washington.).
In addition, “evidence of third-party registrations [for the same or similar goods
or services] is relevant to ‘show the sense in which a mark is used in ordinary
parlance,’ ... that is, some segment that is common to both parties’ marks may have
‘a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak.’” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millenium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)
(the extent of third-party use or registrations may indicate that a term carries a
suggestive or descriptive connotation and is weak for that reason)); see also In re
Opposition Nos. 91221648 and 91224985

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I-Coat Co., LLC, 126 USPQ2d 1730, 1735 (TTAB 2018) (third-party registrations
can be used to demonstrate that a term may have a commonly accepted meaning);
Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1173 (TTAB 2011)
(third-party registrations indicate term CLASSIC has suggestive meaning as
applied to tobacco products).
Applicant introduced copies of third-party registrations printed from the
USPTO Trademark Status and Document Retrieval system (TSDR) for TINKER
BELL, TINKER and TINK marks applied to a variety of goods and services.50
These include:
1. Reg. No. 2479251 for the mark TINKERBELLE identifying live
plants, namely, lilacs;

2. Reg. No. 2529105 for the mark TINK identifying various computer
programs, educational and research services in the fields of
information and knowledge management;

3. Reg. No. 3982945 for the mark TINK’S identifying scent eliminating
laundry detergent, soap and dryer sheets for use with hunting and
outdoor activities;

4. Reg. No. 4547764 for the mark TINK’S identifying compact discs and
DVDs in the field of hunting;51

5. Reg. No. 4670408 for the mark TINK identifying live musical
performances by a performing artist;

6. Reg. No. 5425938 for the mark TINKERBELL identifying laboratory
apparatus;

50 62 TTABVUE 5-24. All marks are presented in typed or standard characters unless
otherwise shown.
51 Reg. Nos. 3982945 and 4547764 are owned by the same entity.
Opposition Nos. 91221648 and 91224985

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7. Reg. No. 3700023 for the mark TINKER identifying computer game
software;

8. Reg. No. 368132 for the mark PICKLED TINK identifying electronic
and mail order catalog services featuring maternity clothing and
adult jewelry;

9. Reg. No. 3741020 for the mark CAMP TINK identifying wellness
assessments, routines, maintenance schedules and counseling;

10. Reg. No. 3998707 for the mark TINKER identifying various
telecommunications services;

11. Reg. No. 3620842 for the mark SMITH & TINKER identifying video
game software, various media featuring fantasy characters and
handheld units for playing electronic games;

12. Reg. No. 3442528 for the mark TASK TINKERS identifying various
electronic media and entertainment services in the field of children’s
entertainment and education;

13. Reg. No. 3257957 for the mark WICKED TINKERS identifying
various audio and video media featuring music and visual
entertainment;

14. Reg. No. 4030966 for the mark TINKER TABLES identifying tables;

15. Reg. No. 4591304 for the mark TINKSKY identifying various items
of clothing;

16. Reg. No. 4514477 for the mark TINKERSPHERE identifying online
retail hobby store services;

17. Reg. No. 4710527 for the mark THE LAST TINKER identifying
various electronic and computer goods; toys including toy figurines;
and entertainment services featuring video games and information
related thereto; and
Opposition Nos. 91221648 and 91224985

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18. Reg. No. 4692373 for the mark TINKER TIN identifying travel
trailer rental.

The above registrations tend to show that third parties have registered marks
including the terms TINKER BELL, TINKER or TINK for various goods and services.
Only five of these registrations recite goods and services that are directed toward
children and include toys, but none identifies dolls. As a result, this evidence has
limited probative value in our consideration of the strength of Opposer’s TINKER
BELL mark. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-
party registrations relating to goods different from and unrelated to the goods at issue
“cannot be indicative of descriptive or suggestive connotations”).
On this record, we find Opposer’s inherently distinctive TINKER BELL mark to
be highly suggestive of the dolls identified thereby, primarily inasmuch as the dolls
depict the character TINKER BELL.
2. Commercial Strength of Opposer’s TINKER BELL Mark
Commercial strength is the extent to which the relevant public recognizes a mark
as denoting a single source. Tea Bd. of India, 80 USPQ2d at 1899. We consider the
extent of commercial strength or weakness in the marketplace under the fifth and
sixth DuPont factors, “fame of the prior mark (sales, advertising, length of use)” and
“the number and nature of similar marks in use on similar goods.” DuPont, 177 USPQ
at 567. The fifth DuPont factor (fame) examines the extent to which the public
perceives the mark as indicating a single source of origin. Conversely, the sixth factor,
“the number and nature of similar marks in use on similar goods,” mitigates against
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a mark’s potential recognition by considering whether, because of widespread third-
party use of similar marks in the marketplace, “customers have been educated to
distinguish between different such marks on the bases of minute distinctions.” Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005).
Commercial strength may be measured “by the volume of sales and advertising
expenditures of the goods traveling under the mark, and by the length of time those
indicia of commercial awareness have been evident.” Couch/Braunsdorf Affinity, Inc.
v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014). It is considered from
the perspective of “the class of customers and potential customers” of the relevant
goods, in this case purchasers and potential purchasers of dolls. Palm Bay, 73
USPQ2d at 1695 (The relevant consuming public consists of the “class of customers
and potential customers of a product or service, not the general public”); see also
Joseph Phelps, 122 USPQ2d at 1734 (focusing on “the class of customers and potential
customers of a product or service, and not the general public.”).
Opposer’s testimony and evidence establish that Opposer first released the
animated motion picture Peter Pan in 1953, reimagining TINKER BELL as a major
character and recasting her as a feminine figure with a distinct personality.52 Since
that time, Opposer has franchised TINKER BELL as a Disney Fairy and she has
appeared in eight additional movies, as well as a television broadcast and short film.53

52 James Decl. 40 TTABVUE 6-11.
53 40 TTABVUE 7-11.
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Opposer has featured TINKER BELL live at its resorts, and on numerous types of
merchandise, Opposer’s television programs and cable channels, website, physical
store locations and its TINKER BELL half marathon.54 Opposer further has
introduced examples of its marketing and advertising for goods under the TINKER
BELL mark and screenshots from the TINKER BELL Facebook page.55
Particularly with regard to dolls, Opposer’s testimony and evidence establishes
that Opposer has offered for sale TINKER BELL dolls since 1994.56 Opposer’s
“TINKER BELL is depicted as a fairy-like female figure with blond-hair, blue eyes,
green dress, wand, and often resembling a teen or with a teenage appearance and
physique”57 as shown below:58

54 40 TTABVUE 12-19.
55 40 TTABVUE 32; 57 TTABVUE 4-27.
56 40 TTABVUE 19.
57 Id.
58 46 TTABVUE 31-44.
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Opposer has introduced confidential testimony and evidence regarding its sales
related to various goods under its TINKER BELL mark. These numbers are
substantial. Opposer also introduced evidence of awards and unsolicited news articles
in various media discussing TINKER BELL and her status as a “famous” and “iconic”
brand and character, whose more recent accolades include a 2010 star on the
Hollywood Walk of Fame, a 2008 appearance in Madame Tussauds Wax Museum,
and selection in 2009 as an honorary United Nations Ambassador of Green to promote
environmental initiatives.59
Applicant, on the other hand, argues that Opposer’s TINKER BELL mark is
“commercially weak and diluted as a result of widespread third-party use in

59 40 TTABVUE 19; 33 TTABVUE 1-515.
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connection with various goods relating to the Tinker Bell character, including dolls
and comparable toy goods.”60 In support of this contention, Applicant submitted “20
third-party uses of the terms TINKER BELL and TINK in connection with dolls and
other related toy products.”61 However, Opposer counters that it
[E]stablished through the rebuttal testimony of Katherine James that 9
of UTH’s 20 Internet images (4(A), 4(D), 4(E), 4(G), 4(H), 4(I), 4(J), 4(K)
and 4(L)) identify products that are authorized or licensed by Disney. (75
TTABVUE 4-7.) Disney also showed that Internet image 4(Q) is no
longer accessible, so neither the Board nor consumers can access or
review the information on this page. (Id. at 8.) In addition, 5 of the
remaining 10 Internet images (4(B), 4(M), 4(R), 4(T), and 4(V)) show
unrelated goods and services, including a news article about a Saturday
Night Live skit, custom tapestries, adult party planning services,
candles, customizable bobbleheads with human faces, and crochet
patterns. (Id. at 9-13.) Internet image 4(S) displays a “collectible” doll
from 1991, which appears to be manufactured by a Chinese company
and there is no evidence that this product has been or is available in the
U.S. (Id. at 11.) Further, the remaining 3 Internet images 4(N), 4(O),
and 4(W) actually show two of the same doll costume and a figurine that
appears to show unauthorized use of copyrights owned by Disney. (Id.
at 11-13.)62

On this record, Applicant’s evidence does not support its contention that Opposer’s
TINKER BELL mark is subject to widespread third-party use in connection with dolls
and related toys. However, Opposer’s testimony and evidence of media exposure,
revenues and marketing for goods under its TINKER BELL mark fail to indicate the
extent to which these activities and revenues pertain to dolls. Opposer’s evidence
indicates that the character TINKER BELL as reimagined by Opposer and its

60 82 TTABVUE 34.
61 82 TTABVUE 34-37; 64 TTABVUE 1-104.
62 Opposer’s rebuttal brief, 87 TTABVUE 13; James Rebuttal Declaration, 75 TTABVUE 1-
151.
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predecessors enjoys widespread recognition and iconic status. However, the record is
unclear as to whether TINKER BELL’s notoriety extends to Opposer’s dolls. Further,
Opposer’s evidence lacks the context useful for us to determine the extent of the
commercial impact made by the impressions or whether the amounts stated are
significant in the industry compared to Opposer’s numerous other character dolls,
such as its Disney Princess dolls, or dolls produced by third parties. See Bose Corp. v.
QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002)
(“[S]ome context in which to place raw statistics is reasonable”); cf. Mini Melts, Inc.
v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016) (probative value of
sales revenue figures quantified as doses sold is diminished by the fact that the
amount is just a raw number without context as to applicant’s market share or
whether this amount is significant in the industry).
As discussed above, Opposer’s TINKER BELL mark is inherently distinctive,
albeit highly suggestive. Opposer’s testimony and evidence related to the notoriety
and even iconic status of the character TINKER BELL does not, on this record,
demonstrate that the mark TINKER BELL is iconic or “famous” as applied to dolls.
Considering both inherent and commercial strength, we find Opposer’s mark
TINKER BELL, as applied to dolls, is entitled to an ordinary scope of protection on
the spectrum of “very strong to very weak.” Joseph Phelps, 122 USPQ2d at 1734
(quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir.
2003)); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at 1059 (“The
commercial strength of Petitioner’s TAO mark outweighs any conceptual weakness.”).
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D. The similarity or dissimilarity of the marks in their entireties in terms
of appearance, sound, connotation, and commercial impression.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Davia, 110
USPQ2d at 1812; accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling
or sound alone is likely to cause confusion.”) (citation omitted). “The proper test is not
a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018)
(quoting Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721.
Opposer’s mark is TINKER BELL in standard characters. Applicant’s marks are
TEEN TINKER BELL in standard characters and .
To state the obvious, Applicant’s TEEN TINKER BELL mark fully encompasses
Opposer’s TINKER BELL mark. As a result the marks are highly similar in
appearance and sound. Likelihood of confusion is often found where the entirety of
one mark is incorporated within another. See e.g., Johnson Publ’g Co. v. Int’l Dev.
Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner). Applicant argues that its marks begin with the word
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“TEEN” which is most likely to be remembered due to its position as the first word
thereof. See, e.g., Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the most prominent part
of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the wine label.). Here, however, Applicant seeks to avoid
a finding of likelihood of confusion by appropriating the entirety of a registered mark
and adding a suggestive term to it. Cf. In re Denisi, 225 USPQ 624 (TTAB 1985); State
Historical Socy of Wis. v. Ringling Bros.-Barnum Bailey Combined Shows, Inc., 190
USPQ 25 (TTAB 1976). Applicant acknowledges that its dolls depict TINKER BELL
as a teenager or adolescent.63 As a result, the term “TEEN” in Applicant’s TEEN
TINKER BELL mark is at best suggestive of a feature or characteristic of Applicant’s
goods, and reinforces that the wording TINKER BELL identifies a female character.
The marks are also similar in connotation. Opposer’s TINKER BELL mark
connotes the character originally conceived by J.M. Barrie and reimagined by
Opposer. As applied to Opposer’s dolls, its TINKER BELL mark immediately
suggests the “graceful and gorgeous” creature, as sketched and re-sketched by
Opposer’s predecessors, the size of Peter Pan’s thumb but possessing “the miniature
proportions of a beauty contest winner and pin-up favorite.”64 We find no support for
Applicant’s argument that consumers will interpret Opposer’s TINKER BELL mark
to “directly refer to the well-known fairy tale character Tinker Bell and evoke classic
images of a small pixie fairy, covered in a green skeleton leaf and sprinkling fairy

63 82 TTABVUE 21.
64 41 TTABVUE 257.
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dust”65 and “will immediately be reminded of the public domain character who
represents children’s imaginations and hope.”66 As discussed above, Opposer’s
TINKER BELL dolls do not depict the fairy as imagined by J.M. Barrie, but rather
Opposer’s reimagining of TINKER BELL as an attractive, feminine creature, a
diminutive pin-up. We find that connotation to be closely related to the connotation
created by Applicant’s TEEN TINKER BELL mark, evoking the same beautiful
character in her adolescent, teen years. In other words, TEEN TINKER BELL
connotes Opposer’s TINKER BELL at a particular part of her life, namely, at
adolescence not unlike that experienced by a teenaged girl. As a result, we find the
marks to be more similar than dissimilar, and to convey similar commercial
impressions overall.
Applicant’s mark is only somewhat similar to Opposer’s
TINKER BELL mark in appearance and sound. However, because Opposer’s mark is
displayed in standard characters, it may appear in any size or font, including a
stylized font identical to that in which Applicant’s mark
appears. The rights associated with a mark in standard characters reside in the
wording and not in any particular display. In re Viterra Inc., 671 F.3d 1358, 101

65 82 TTABVUE 21.
66 82 TTABVUE 21.
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USPQ2d 1905, 1909-11 (Fed. Cir. 2012). We must consider all reasonable
presentations of Opposer’s TINKER BELL mark including in the same stylization
found in Applicant’s mark. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971); Cunningham, 55 USPQ2d at 1847-48.
The marks are more similar in meaning or connotation inasmuch as “TINK” refers
in shorthand to TINKER BELL. Applicant acknowledges that “J.M. Barrie also
interchangeably uses the names Tinker Bell and Tink throughout the novel to refer
to Tinker Bell.”67 As discussed above, Applicant’s mark connotes TINKER BELL as
an adolescent teenager, but nonetheless connotes the same character.
We further do not discount the presence of the tiara design in Applicant’s mark.
We note nonetheless that the tiara design is relatively small and less significant than
the wording in creating the overall commercial impression conveyed thereby. It is
settled that where, as here, a mark is comprised of both words and a design, the words
are normally accorded greater weight, in part because consumers are likely to
remember and use the word(s) to request the services. In re Viterra Inc., 101 USPQ2d
at 1911 (“[T]he verbal portion of a word and design mark likely will be the dominant
portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (“[I]f
one of the marks comprises both a word and a design, then the word is normally
accorded greater weight because it would be used by purchasers to request the goods
or services” and “because applicant’s mark shares with registrant’s mark that

67 82 TTABVUE 14; 63 TTABVUE 24, 25, 84.
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element responsible for creating its overall commercial impression, the marks are
confusingly similar”).
We find that this general principle is applicable here. In Applicant’s
mark, TEEN TINK is the only literal element, and appears
prominently below the design, essentially creating a frame for the wording and
drawing additional attention thereto. Those interested in Applicant’s dolls would rely
on the wording TEEN TINK which more clearly identifies a source of goods than the
tiara design and would also be used to refer to the mark when spoken.
Based upon the foregoing, we find Applicant’s mark is more
similar to than dissimilar from Opposer’s TINKER BELL mark in appearance, sound
and connotation and, overall creates a similar commercial impression. The marks
again appear to be variations of each other that nonetheless suggest a single source,
identifying dolls representing the character TINKER BELL.
Finally, we note that, “[w]hen marks would appear on virtually identical goods or
services, the degree of similarity [of the marks] necessary to support a conclusion of
likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034
(1994); see also ECI Division of E-Systems, Inc. v. Envtl. Commc’ns Inc., 207 USPQ
443, 449 (TTAB 1980).
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In view thereof, the DuPont factor regarding the similarity of the marks favors a
finding of a likelihood of confusion.
E. The variety of goods or services on which a mark is or is not used.
The ninth DuPont factor takes into account the variety of goods on which a mark
is or is not used. DuPont, 177 USPQ at 567. “If a party in the position of plaintiff uses
its mark on a wide variety of goods, then purchasers are more likely to view a
defendant’s related good under a similar mark as an extension of the plaintiff’s line.”
Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d 10153, *15 (TTAB 2020); See also,
e.g., In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014)
(“[C]onsumers who may be familiar with various products in the [Opposer’s] product
line, when confronted with applicant’s mark, would be likely to view the goods
marked therewith as additional products from [Opposer]. One of the circumstances
mentioned in the ninth DuPont factor is the variety of goods on which a prior mark
is used.”).
Opposer argues:
[I]t is undisputed that Disney has used and registered its TINKER
BELL & TINK Marks on a wide range of products and services,
including films, television programs, amusement parks, dolls, toys,
clothing, bags, jewelry, books, DVD and video recordings. … As shown
above, consumers understand and are accustomed to Disney’s long
history of offering and licensing a wide variety of products and services
tied to its famous films and character franchises. … Indeed, Disney owns
30+ trademark registrations for its TINKER BELL & TINK Marks
covering a wide variety of goods and services.68

68 79 TTABVUE 39. Internal citations omitted. Opposer presented these arguments in further
support of its position that the parties’ goods are related.
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[Opposer’s] witness testified that for decades the company has produced
films, television programs, and amusement park attractions launching
its character brands, including its TINKER BELL & TINK Marks. …
[Opposer] also engages in extensive licensing and merchandising under
its character brands, including for toys and dolls, to maximize and
reinforce public exposure to its character brands that originated from
films. … Thus, consumers are accustomed to and have an expectation
that dolls are a common type of licensed merchandise tied to characters
from films.69

Opposer has introduced evidence that it has re-released its animated Peter Pan
film in theaters on five occasions and on various media for personal purchase; and
has also released the sequel Peter Pan 2: Return to Neverland.70 Opposer’s website
includes excerpts from these films, character highlights, games and links to purchase
products bearing, inter alia, the TINKER BELL mark.71 In 2006, Opposer created a
new franchise featuring the TINKER BELL character and a new set of Disney
Fairies, and released numerous books, six full length films, a television special and
an additional short film all starring TINKER BELL.72 TINKER BELL also appears
in person at Opposer’s theme parks, at the TINKER BELL half-marathon, and in
Disney on Ice programs.73 The character and name TINKER BELL also appear on a
wide variety of children’s and adult clothing, jewelry, toys, glasses, mugs, figurines,
pictures and prints and other gift items in addition to dolls.74

69 79 TTABVUE 40.
70 40 TTABVUE 7.
71 40 TTABVUE 7; 42 TTABVUE 4-5.
72 42 TTABVUE 6, 36-41.
73 40 TTABVUE 8-17.
74 51 TTABVUE 4-145.
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We therefore find that consumers are accustomed to encounter Opposer’s TINKER
BELL mark on a wide variety of goods and services, and are likely to view Applicant’s
teen-themed dolls as additional products from Opposer’s line of products and services.
The ninth DuPont factor thus favors a finding of likelihood of confusion.
F. Conditions under which sales are made, that is, “impulse” vs. careful,
sophisticated purchasing.

This DuPont factor examines the conditions under which, and to whom, sales are
made. Purchaser sophistication may tend to minimize likelihood of confusion.
Conversely, impulse purchases of inexpensive items may tend to have the opposite
effect.
As identified, the parties’ “dolls” are not limited in any manner as to their
purchasers, conditions of sale or price. We therefore must presume that both parties’
dolls are available at all price points to all consumers, including ordinary consumers
who may purchase dolls on impulse or otherwise not exercise a great deal of care in
their purchasing decisions, in addition to more discerning purchasers and collectors.
See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351,
1357 (Fed. Cir. 2000) (must focus on identifications, regardless of any actual
marketplace evidence of “the particular channels of trade, or the class of purchasers
to which sales of the goods or services are directed”); In re Bay State Brewing Co.,
Inc., 117 USPQ2d 1958, 1960 (TTAB 2016); see also Stone Lion, 110 USPQ2d at 1163-
64 (recognizing Board precedent requiring consideration of the “least sophisticated
consumer in the class”).
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In addition, we must presume that the parties’ goods include dolls available at
modest prices that may be subject to casual purchase.75 “When products are relatively
low-priced and subject to impulse buying, the risk of likelihood of confusion is
increased because purchasers of such products are held to a lesser standard of
purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000) (citations omitted). Furthermore, there is nothing in the record to
suggest that purchasers of dolls are more discriminating than the average consumer.
The conditions of sale and nature of the prospective consumers therefore favor finding
a likelihood of confusion.
G. Actual confusion
The seventh DuPont factor is the “nature and extent of any actual confusion, while
the eighth DuPont factor considers the “length of time during and conditions under
which there has been concurrent use without evidence of actual confusion.” DuPont,
177 USPQ at 567.
In its decision on remand from the Federal Circuit’s decision in In re Guild Mortg.
Co., 129 USPQ2d 1160, the Board recently held that the eighth DuPont factor
“requires us to look at actual market conditions, to the extent there is evidence of
such conditions of record.” In re Guild Mortg., 2020 USPQ2d 10279, *15 (TTAB 2020).
Evidence of actual confusion “is too important to be established by means of an
inference, unsupported by corroborating evidence.” Toys “R” Us, Inc. v. Lamps R Us,

75 Evidence of record indicates that, at time of trial, Opposer’s dolls are available at $26.95
and Applicant’s dolls are available at $19.55-$37.59. 41 TTABVUE 162, 174; 32 TTABVUE
6-8.
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219 USPQ 340, 346 (TTAB 1983). It further is well-established that mere inquiry
regarding whether there is a relationship between the parties is not evidence of
confusion. See, e.g., Couch/Braunsdorf Affinity, 110 USPQ2d at 1479 (inquiry is not
evidence of confusion because the inquiry indicates that the prospective customer had
a reason to suspect that there were two different companies).
Opposer argues:
In this case, UTH’s bad-faith pattern of filing and using marks
encompassing Disney brands, including but not limited to UTH’s TEEN
TINKER BELL & TEEN TINK Marks, has resulted in actual confusion.
Disney submitted evidence that consumers and mainstream websites
have mistakenly identified and referred to UTH’s dolls, including those
offered under UTH’s TEEN TINKER BELL & TEEN TINK Marks, as
“Disney dolls” and “Disney” brands. [31 TTABVUE.] Further, at least
one major retailer used Disney’s logo on the same page offering UTH’s
dolls as shown below. [Id.] Among others, Pinterest, Facebook, eBay,
Kmart.com, and YahooShopping.com have similarly, mistakenly
referred to and identified UTH’s dolls as “Disney Dolls” or “Disney
Character,” including the representative examples below. [31
TTABVUE 81-118.]76

76 Opposer’s brief; 79 TTABVUE 54.
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77
Applicant argues:
Disney submitted a small number of documents, attempting to
demonstrate actual confusion. [79 TTABVUE 54-55.] The screenshots,
however, do not demonstrate sales confusion. Rather, the evidence
shows how Disney has attempted to take a character out of the public
domain. Moreover, the Facebook screenshot on page 47 of Disney’s Brief
does not indicate that the individual who posted the photograph was a
U.S. consumer or purchased the doll from the U.S. [79 TTABVUE 55.]
The screenshot from Pinterest also lacks any probative value as a U.S.
consumer cannot purchase anything from the website, and the K-Mart
screenshot does not show the price or indicate a way for a consumer to
purchase the product. Id. As a result, none of the screenshots show
actual confusion or are probative as they do not show sales confusion
and the seventh DuPont factor weighs against a finding of a likelihood
of confusion.78

77 31 TTABVUE 96; 79 TTABVUE 55.
78 82 TTABVUE 43.
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We find no support for Applicant’s contentions that Opposer’s evidence supporting
its claim of actual confusion shows that Opposer has attempted to take the character
of TINKER BELL out of the public domain. Nonetheless, the internet postings, while
admissible for what they show on their face, see Trademark Rule 2.122(e)(2), 37
C.F.R. § 2.122(e)(2), also constitute hearsay and may not be relied upon for the truth
of the matters asserted therein. Fed. R. Evid. 801(c); Safer, Inc. v. OMS Invs., Inc.,
94 USPQ2d 1031, 1040 (TTAB 2010); Trademark Trial and Appeal Board Manual of
Procedure (“TBMP”) § 704.08 (June 2019) (“Even if properly made of record, however
… internet printouts would only be probative of what they show on their face, not for
the truth of the matters contained therein, unless a competent witness has testified
to the truth of such matters.”).
On its face, this evidence shows a modest number of third-party vendors and re-
sellers on such internet platforms as eBay, Pinterest, K Mart, Sears and Yahoo have
referred to Applicant’s teen fairy tale princess dolls, including dolls under its involved
marks, as a “Disney Character” or “Disney Fairy Tale High” dolls or otherwise
indicated that they are Disney products or advertised them in connection with Disney
products.79 There is little evidence of record as to the extent to which Applicant has
advertised or promoted its marks at issue or how many customers it has attracted
since the launch of its Fairy Tale High line of dolls in 2013. The length of time during
which there has been concurrent use is also relatively short, i.e., approximately six
years at time of trial. Thus, the extent to which there has been an opportunity for

79 31 TTABVUE 82-83, 88-89, 96-97, 99-112, 115-116, 118.
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actual confusion to occur appears limited. DuPont, 177 USPQ at 567. Accordingly,
the seventh and eighth DuPont factors are neutral.80
H. Applicant’s intent in adopting its marks.

Under the thirteenth DuPont factor, evidence of an applicant’s bad faith adoption
of its mark is relevant to our likelihood of confusion analysis. Edom Labs., Inc. v.
Lichter, 102 USPQ2d 1546, 1553 (TTAB 2012); L.C. Licensing Inc. v. Cary Berman,
86 USPQ2d 1883, 1891 (TTAB 2008) (bad faith is strong evidence that confusion is
likely, as such an inference is drawn from the imitator’s expectation of confusion).
Establishing bad faith requires a showing, by a preponderance of the evidence, that
the applicant intentionally sought to trade on the goodwill or reputation associated
with an opposer’s mark. See also J & J Snack Foods Corp. v. McDonald’s Corp., 18
USPQ2d 1889, 1891 (Fed. Cir. 1991) (“Whether there is evidence of intent to trade on
the goodwill of another is a factor to be considered, but the absence of such evidence
does not avoid a ruling of likelihood of confusion.”); Tea Bd. of India, 80 USPQ2d at
1902.
Opposer argues:
UTH filed two applications to register the TEEN TINKER BELL &
TEEN TINK Marks—which encompass the entirety of Disney’s
TINKER BELL & TINK Marks and cover identical goods—after 65
years of development and investment in these marks by Disney. It is no
coincidence that UTH filed applications for both of Disney’s well-known
TINKER BELL & TINK Marks—UTH did so to take advantage of the
fame and brand-recognition of Disney’s iconic TINKER BELL & TINK
Marks. In fact, UTH has a bad-faith pattern of filing numerous

80 We note nonetheless that the test under Section 2(d) is not actual confusion but likelihood
of confusion. It is not necessary to show instances of actual confusion to establish likelihood
of confusion. Herbko Int’l. v. Kappa Books, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss
Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir. 1990).
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trademark applications and using marks encompassing Disney brands,
attempting to trade-off of the release of Disney’s popular films and
successful character merchandising. UTH has sought registration of
numerous marks following the release of Disney’s well-known films and
character franchises offered under the same brands.81

Applicant argues:

Such an assertion, however, lacks merit as UTH is not attempting to
‘take advantage of the fame and brand-recognition’ of Disney’s marks,
but rather is attempting to create an entirely new, protectable version
of a beloved public domain character by changing the storyline and
adding new traits and facts to the Tinker Bell character.82

Applicant further argues that by recasting TINKER BELL in her adolescence, it is
“merely attempting to make use of a public domain character in a different light, not
trade off any alleged fame”83 of Opposer’s marks.
After careful review of the evidence of record, we conclude that Opposer has not
provided sufficient support for its assertion that Applicant adopted its marks in bad
faith. The facts of this case are distinguishable from L.C. Licensing, upon which
Opposer relies in support of its position. In L.C. Licensing, the applicant’s principal
officer was unable to “explain why he has tried to register two urban lifestyle clothing
brands for custom automotive accessories,” Id. at 1891, leading the Board to conclude
that the applicant intended “to trade off of opposer’s ENCYE mark.” Id. In this case,
Applicant has explained its intention to base its line of dolls on fairy tale characters
assertedly from the public domain, reimagined as trendy, contemporary teenagers.

81 Opposer’s trial brief, 79 TTABVUE 52.
82 82 TTABVUE 42.
83 Id. at 43.
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This is a far more plausible explanation than “I don’t know” provided by the applicant
in L.C. Licensing, Id. Opposer further relies upon L’Oreal S.A. and L’Oreal USA, Inc.
v. Marcon, 102 USPQ2d 1434 (TTAB 2012), in which the Board found the “applicant
had a history and pattern of filing intent-to-use applications for a disparate range of
products for which he has no industry-relevant experience, and where the applied-for
marks are identical to some of the best known, previously registered marks in the
country.” L’Oreal, 102 USPQ2d at 1441. Again, in the case presently before us,
Applicant does not seek to wholly appropriate the trademarks of numerous third
parties for a variety of items. In short, Applicant has provided a plausible explanation
as to why it adopted involved marks. Certainly, Applicant was aware of Opposer and
its marks at the time it filed the involved applications, and its dolls are more evocative
of Opposer’s reimagining of TINKER BELL than the character originally created by
J.M. Barrie and depicted in his original play and stories. The record also reflects
Applicant’s filing of applications for other fairy tale characters whose names are also
subjects of Opposer’s marks.84 However, Opposer’s evidence falls short of
demonstrating Applicant’s bad faith adoption of the involved marks.
Accordingly, this DuPont factor is neutral.
I. Summary
Because the marks are similar, the goods are identical and we must presume that
the goods are offered in the same channels of trade and to the same classes of
consumers and may be subject to impulse purchase, we find that the applied-for mark

84 31 TTABVUE.
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used in connection with Applicant’s recited goods is likely to cause confusion with
Opposer’s previously used and registered mark. We find on this record that Opposer’s
TINKER BELL mark is entitled to a normal scope of protection, and that Opposer
has demonstrated that it offers a wide variety of goods and services under its TINKER
BELL mark such that Applicant’s goods may be viewed as an additional product line
of Opposer.
Decision: The notice of opposition is sustained on the ground of priority and
likelihood of confusion with the mark in Registration No. 3636910 and registration
to Applicant of both involved applications is refused.