Toy Concepts

Trademark Trial and Appeal Board

Sep 29, 2000

No. 75501025 (T.T.A.B. Sep. 29, 2000)

Paper No. 11
LKM
9/29/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Toy Concepts
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Serial No. 75/501,025
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Myron Amer of Myron Amer, P.C. for applicant.
Jennifer H. Dixon, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Holtzman and McLeod, Administrative
Trademark Judges.
Opinion by McLeod, Administrative Trademark Judge:
An application has been filed by Toy Concepts to
register the mark shown below for "stuffed toys, namely, a
pony, a monkey, a frog, and a zebra."1

1 Application Serial No. 75/501,025, filed June 12, 1998,
claiming dates of first use of January 15, 1997. The terms BEND &
POSE PETS are disclaimed apart from the mark as shown.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/501,025
2
The Examining Attorney issued a final refusal of
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant's mark, when
applied to the identified goods, so resembles the previously
registered mark BEND ‘N POSE for "dolls"2 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant does not seriously dispute the fact that the
word portions of the involved marks are similar. Indeed,
applicant stated during prosecution that “the marks
admittedly are very similar.” (Applicant’s Response, March
19, 1999). According to applicant, however, the common
words “bend and pose” are descriptive and therefore “weak”
as a source-identifier. Applicant argues that the design
element and term PETS add a visual difference and special
connotation to applicant’s mark. Applicant also maintains,
among other things, that the essential characteristics of
the applicant’s goods (“stuffed toy animals”) and the
registrant’s goods (“dolls”) are different.3 In support of

2 Registration No. 1,876,739 issued January 31, 1995, on the
Principal Register, and setting forth dates of first use of
February 1993.
3 We reject applicant’s contention that some of the arguments
raised in the Examining Attorney’s appeal brief are beyond the
Ser No. 75/501,025
3
its position, applicant submitted a copy of a patent, with
its appeal brief, presumably covering applicant’s identified
goods.4
The Examining Attorney, on the other hand, contends
that the involved marks are substantially similar in sound,
appearance, meaning and commercial impression. The
Examining Attorney maintains that both marks contain the
same dominant text portion “bend and pose.” The only
difference between the text portion of the involved marks,
according to the Examining Attorney, is the use of an
ampersand “&” in applicant’s mark versus “’N” in the
registered mark. The Examining Attorney argues that
applicant’s addition of the word PETS to the registered mark
BEND ‘N POSE does not distinguish the marks. The Examining
Attorney also contends, among other things, that the goods
are closely related. It is the Examining Attorney’s
position that “dolls” and “stuffed toy animals” are both

issues joined on appeal. There is no new ground of refusal, and
both the Examining Attorney and applicant may advance additional
arguments on brief. In fact, we note that applicant also raised
additional points in its appeal brief that were not raised during
prosecution.
4 Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the filing of an appeal,
and that if applicant wishes to introduce additional evidence
after an appeal is filed, it should file a request for remand.
See TBMP §§ 1207.01 & 1207.02. While applicant’s evidence was
untimely filed with applicant’s appeal brief, we have considered
the evidence in reaching our decision because the Examining
Attorney has treated the evidence as part of the record.
Ser No. 75/501,025
4
marketed in the same channels of trade and to the same class
of purchasers. In support of her position, the Examining
Attorney relies upon various third-party registrations
introduced during prosecution.
In determining whether there is likelihood of confusion
between two marks, we must consider all relevant factors as
set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis under Section 2(d), two of the most
important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
Because applicant and the Examining Attorney have focused on
these two factors, we have done the same.
Turning first to the goods, we agree with the Examining
Attorney that the goods are related for purposes of
likelihood of confusion. The third-party registrations
submitted by the Examining Attorney show that a particular
company may be the source of both “dolls” and “stuffed toy
Ser No. 75/501,025
5
animals,”5 and that it would sell such goods under the same
mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). Furthermore, it is obvious that “dolls” and
“stuffed toy animals” are sold in toy stores, and may be
purchased by or for the same class of consumers, i.e.,
children themselves or adults purchasing items for children.
The identified goods in both applicant’s application and the
cited registration would include products which are
relatively inexpensive, off-the-shelf toys which are the
subjects of impulse purchases.
With respect to the marks, we recognize that marks must
be viewed in their entireties. Nevertheless, as the
Examining Attorney points out, one feature or component of
the mark may have more source-identifying significance than
other elements which comprise the mark. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In the case of a mark combining words with a design, the
literal elements are often the dominant and most significant
features because consumers use words when they are ordering
or otherwise referring to the products. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).

5 We note that very few of the third-party registrations
submitted by the Examining Attorney are merchandising or house
marks, which are less probative on the issue of the relatedness of
the goods.
Ser No. 75/501,025
6
In this case, the words BEND & POSE PETS are the most
significant and predominant portion of applicant’s mark.
Both the applicant’s mark and the registrant’s mark contain
the phrase “bend and pose,” and thus share obvious
similarities in sound and appearance. Moreover, contrary to
applicant’s contention, we find that the marks offer the
same connotation, i.e. applicant’s “stuffed toy animals” and
registrant’s “dolls” bend at the joints and pose in
different positions. We recognize that the additional term
PETS and the design element in applicant’s mark present some
visual differences between the marks. However, the
descriptive term PETS and the design are simply not
sufficient to distinguish the marks, and we remain of the
view that the marks are similar in sound, appearance and
connotation.
It is true that the words BEND & POSE PETS have been
disclaimed as merely descriptive in applicant’s mark. In
contrast, the registered mark BEND ‘N POSE issued on the
Principal Register without a claim of acquired
distinctiveness under Section 2(f), indicating that the
Examining Attorney for that mark deemed it to be inherently
distinctive. Although the registered mark is, at the very
least, highly suggestive for “dolls,” it is nonetheless
entitled to some measure of protection. That protection
Ser No. 75/501,025
7
extends to this situation, where applicant is seeking to
register a very similar mark for closely related goods. See
In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340-41 (CCPA
1978).
In short, we conclude that consumers encountering
applicant’s mark BEND & POSE PETS and design on “stuffed toy
animals” are likely to believe that they emanate from, or
are associated with, the same source as the registrant’s
BEND ‘N POSE “dolls.”
Decision: The refusal to register is affirmed.
E. J. Seeherman
T. E. Holtzman
L. K. McLeod
Administrative Trademark
Judges, Trademark
Trial and Appeal Board