Manhattan Group, LLCv.RMI Bratz, Inc.

Trademark Trial and Appeal Board

Nov 14, 2003

No. 91125296 (T.T.A.B. Nov. 14, 2003)

Mailed: November 14, 2003
Paper No. 3
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Manhattan Group, LLC
v.
RMI Bratz, Inc.
_____
Opposition No. 91125296
to application Serial No. 75676054
filed on April 6, 1999
_____
J. Thomas Vitt and Heather D. Redmond of Dorsey & Whitney
LLP for Manhattan Group, LLC.
Patrick N. Burkhart of Burkhart & Burkhart for RMI Bratz,
Inc.
______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
RMI Bratz, Inc. has filed an application to register
the mark MISTER SKWISH for “toys, namely plush toys for
children constructed from rectangular bed pillows.”1
Manhattan Group, LLC, d/b/a Manhattan Toy Co. has
1 Serial No. 75676054, filed on April 6, 1999, which alleges a
date of first use anywhere and a date of first use in commerce of
December 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91125296
2
opposed registration on the ground that it is the owner of a
family of SKWISH marks for toys; that it is the owner of
Registration No. 1,7333,286 issued November 17, 1992
(renewed) for the mark SKWISH for “children’s multiple
activity toys also used by special needs adults,”
Registration No. 2,271,570 issued August 24, 1999 for the
mark SKWISH BUNGEEBALL for “children’s multiple activity
toy,” and Registration No. 2,326,640 issued March 7, 2000
for the mark GROOVEY SKWISH for a “toy, namely a series of
grooved wooden rods anchored to each other by elastic cord
from end-to-end”; that opposer adopted and used these marks
prior to applicant’s date of first use; that opposer has
expended substantial amounts of money and time advertising
and promoting its marks; and that applicant’s mark, when
used on or in connection with applicant’s goods, so
resembles opposer’s previously used and registered marks
SKIWSH, SKWISH BUNGEEBALL and GROOVEY SKWISH, as to be
likely to cause confusion.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; the trial testimony, with related
exhibits, of opposer’s Director of Product Development and
Marketing, Kiki Foget; and opposer’s notice of reliance on
portions of the discovery deposition of applicant’s
Opposition No. 91125296
3
president, Susan Strauser, with related exhibits, and
applicant’s responses to opposer’s interrogatories.
Applicant did not take testimony or offer other
evidence. Only opposer filed a brief on the case.
The record shows that opposer is in the business of
designing and marketing a wide range of children’s toys,
including nursery collections, activity toys, plush toys,
and children’s books. Opposer wholesales its products to
specialty stores, gift stores, and department stores who
sell the products to the end consumer. Most of opposer’s
retailers are small independent book, toy, and gift shops.
Opposer’s products are sold in all fifty states.
According to the testimony of opposer’s witness, Kiki
Foget, in 1998, opposer acquired the company Pappa Geppetto,
including its line of activity toys marketed under the marks
SKWISH, SKWISH BUNGEEBALL, and GROOVEY SKWISH. Pappa
Geppetto first used the SKWISH mark in 1988, the GROOVEY
SKWISH mark in 1993, and the SKWISH BUNGEEBALL mark in 1997.
Ms. Foget testified that opposer and its predecessor have
continuously used the respective marks.
Opposer advertises and promotes its products by way of
product catalogs, sales promotions, and at opposer’s
website.
The information we have about applicant comes from the
discovery deposition of applicant’s president, Susan
Opposition No. 91125296
4
Strauser. According to Ms. Strauser, in November 1999 she
wrote and published a children’s book entitled Mister
Skwish, The Magic Dream Pillow. Along with the book,
applicant sells an audiotape of the story. Prior to
publishing the book, applicant began selling in November
1998, MISTER SKWISH pillows. The pillow is a plush toy
depicting the MISTER SKWISH character from the book.
Applicant sells its MISTER SKWISH books, audiotapes and
plush toys through specialty gift stores, toy stores and
book stores. The MISTER SKWISH plush toys have also been
advertised on and sold through at least one retailer’s
website. Applicant has marketed MISTER SKWISH products by
way of letters to retailers, and radio and television
advertising.
Opposer introduced status and title copies of its
pleaded registrations for the marks SKWISH, SWISH BUNGEEBALL
and GROOVEY SKWISH through the testimony of its witness,
Kiki Foget. Thus, there is no issue with respect to
opposer’s priority. King Candy Co., Inc. v. Eunice King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
We turn then to the issue of likelihood of confusion,
including whether opposer has a family of marks
characterized by the term SKWISH.
Opposition No. 91125296
5
The “family of marks” doctrine has applicability in
those situations where, prior to a defendant’s first use of
its challenged mark containing a particular feature, the
plaintiff had established a family of marks characterized by
that feature, so that the defendant’s subsequent use of its
mark containing the feature for goods or services which are
similar or related to plaintiff’s will cause the relevant
purchasing public to assume that defendant’s mark is yet
another member of the plaintiff’s family. See Blansett
Pharmaceutical Co. Inc. v. Carmrick Laboratories Inc., 25
USPQ2d 1473 (TTAB 1992); Econo-Travel Motor Hotel Corp. v.
Econ-O-tel of America, Inc., 199 USPQ 307 (TTAB 1978); and
Porta-Tool, Inc. v. DND Corp., 196 USPQ 643 (TTAB 1977).
It is well settled that merely adopting, using and
registering a group of marks having a feature in common for
similar or related goods or services is insufficient to
establish, as against a defendant, ownership of a family of
marks characterized by the feature. Rather, it must be
demonstrated that prior to the defendant’s first use of its
challenged mark, the various marks said to constitute the
plaintiff’s family, or at least a good number of them, were
used and promoted together in such a manner as to create
among purchasers an association of common ownership based
upon the family characteristic. See J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
Opposition No. 91125296
6
Cir. 1991); Hester Industries, Inc. v. Tyson Foods Inc., 2
USPQ2d 1646 (TTAB 1987); and Cambridge Filter Corp. v.
Servodyne Corp., 189 USPQ 99 (TTAB 1975).
In the present case, opposer has made of record a copy
of its 2002 product catalog and several advertisements for
its SKWISH activity toys. However, the advertisements are
undated and the catalog was issued subsequent to applicant’s
date of first use. Moreover, the evidence hardly shows that
opposer has used and promoted the marks SKWISH, SKWISH
BUNGEEBALL and GROOVEY SKWISH in such a manner as to create
among purchasers an association of common ownership based
upon the term SKWISH. These advertisements are for
opposer’s SKWISH activity toys only; they make no mention of
opposer’s SKWISH BUNGEEBALL or GROOVEY SKWISH activity toys.
As a result, we find that opposer has not established a
family of SKWISH marks.
Thus, the issue of likelihood of confusion must be
determined by comparing applicant’s mark with each of
opposer’s registered marks considered individually. Because
opposer’s SKWISH mark is the most similar to applicant’s
MISTER SKWISH mark, we turn to a determination of the issue
of likelihood of confusion with respect to these marks.
Our determination of likelihood of confusion under
Section 2(d) of the Trademark Act is based on an analysis of
all of the probative facts in evidence that are relevant to
Opposition No. 91125296
7
the factors bearing on the likelihood of confusion issue.
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). As indicated in Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the similarity of the goods and the
similarity of the marks.
We find that because of the similar commercial
impressions of opposer’s mark SKWISH and applicant’s mark
MISTER SKWISH and the close relationship between the
respective goods, applicant’s use of its mark is likely to
cause confusion with opposer’s mark.
With respect to the parties’ goods, we note that they
are both children’s toys. Such goods may be sold in toy
stores, gift shops and mass merchandisers and may be
purchased by the general public. In fact, the record shows
that both parties’ goods are sold in gift stores, toy stores
and book stores. Also, the children’s toys involved herein,
namely, activity toys and plush toys, are not very expensive
items and may be purchased on impulse, or at least without
careful consideration. Under the circumstances, we find
that children’s activity toys and children’s plush toys are
closely related, and if sold under the same or similar
marks, confusion would be likely to result.
Opposition No. 91125296
8
Our consideration of the marks is based on whether
applicant’s mark MISTER SKWISH and opposer’s mark SKWISH,
when viewed in their entireties, are similar in terms of
appearance, sound, connotation and commercial impression.
The test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impressions that confusion as to the source of
the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1057, 224 USPQ 749 (Fed. Cir.
1985).
We find that when the marks SKWISH and MISTER SKWISH
are considered in their entireties, they are similar in
sound, appearance, connotation and commercial impression due
to the shared term SKWISH. Obviously, applicant’s mark
incorporates opposer’s SKWISH mark in its entirety and
Opposition No. 91125296
9
merely adds the title MISTER. Because MISTER is a title, it
has less source-indicating significance than the term SKWISH
which is the dominant portion of applicant’s mark.
Consumers are likely to believe that MISTER SKWISH is a
variant of opposer’s mark SKWISH, and that both marks
identify children’s toys emanating from a single source.
Accordingly, we conclude that applicant’s mark MISTER
SKWISH, when applied to children’s plush toys, so resembles
opposer’s previously used and registered mark SKWISH for
activity toys, as to be likely to cause confusion, or to
cause mistake, or to deceive.
In view of our finding, we need not reach the issue of
likelihood of confusion between applicant’s mark MISTER
SKWISH and opposer’s marks SWISH BUNGEEBALL and GROOVEY
SKWISH.
Decision: The opposition is sustained.