Walter Smith

Trademark Trial and Appeal Board

Sep 8, 2016

No. 86758392 (T.T.A.B. Sep. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Walter Smith
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Serial No. 86758392
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Gene Bolmarcich of Law Offices of Gene Bolmarcich
for Walter Smith.
Kimberly Frye, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Seeherman, Ritchie and Shaw,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Walter Smith, an individual (“Applicant”), has appealed from the final refusal of
the Trademark Examining Attorney to register BULA BUDDIES, in standard
characters, on the Principal Register for “children’s books” in Class 16 and “action
figure toys” in Class 28.1 The application includes the following translation
statement:
The English translation of the Fijian word “BULA” in the mark is
“LIFE” and the word is also commonly used as a greeting.

1 Application Serial No. 86758392 was filed on September 16, 2015, under Section 1(b) of the
Trademark Act (intent-to-use).
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Registration was refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark so resembles the registered mark
BULA in typed form for “stuffed toys,”2 that, if used in connection with Applicant’s
identified goods, it is likely to cause confusion or mistake or to deceive.
We affirm the refusal to register.
Our determination of the issue 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 the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We begin our analysis with a consideration of the second du Pont factor, the
similarity or dissimilarity and nature of the goods or services as described in an
application or registration. “It is not necessary that the goods or services be identical
or even competitive in nature in order to support a finding of likelihood of confusion,
it being sufficient that the goods or services are related in some manner and/or that
the circumstances surrounding their marketing are such that they would be likely to
be encountered by the same persons under circumstances that would give rise,
because of the marks employed thereon, to the mistaken belief that they originate

2 Registration No. 2583284, issued June 18, 2002; Section 8 affidavit accepted; Section 15
affidavit received; renewed. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R.
§ 2.52, was amended to replace the term “typed” drawing with “standard character” drawing.
A mark depicted as a typed drawing is the legal equivalent of a standard character mark. See
In re Brack, 114 USPQ2d 1338, 1339 n.2 (TTAB 2015).
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from or are in some way associated with the same producer.” In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). The Examining
Attorney has submitted a substantial amount of evidence showing the relatedness of
Applicant’s identified “children’s books” and “action figure toys” and Registrant’s
identified “stuffed toys.” For example, Minecraft action figures and plush toys are
featured on the same webpage of the ToyWiz.com website;3 and the Dora the Explorer
plush toy and Dora the Explorer stuffed animal appear on the amazon.com website
along with Dora the Explorer action figures.4 The Castlemere website shows
“Storybook plush toy characters from bestselling children’s books,” including Snow
White, Little Red Riding Hood and Goldilocks. This same website features plush dolls
of Babar, along with such books as “Babar and his Family” and “Babar and Father
Christmas,” and stuffed Paddington Bear toys and books about Paddington, including
“A Bear Called Paddington,” “Paddington and the Christmas Surprise” and
“Paddington.”5 In addition, the Examining Attorney has made of record webpages
from amazon.com which feature, on the same page, a Clifford the Big Red Dog stuffed
toy, and the book “Clifford The Big Red Dog.”6
There is also evidence that a single mark is used for all three items (children’s
books, action figure toys and stuffed toys). For example, there are FROZEN plush

3 March 7, 2016 Office action, p. 6.
4 January 6, 2016 Office action, pp. 20, 21 and 23.
5 March 7, 2016 Office action, p. 7-11.
6 January 6, 2-16 Office action, p. 15.
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toys, dolls/action figures and books, all sold on the ToysRUs website;7 and the
Amazon.com website shows Batman plush toys, Batman action figures and Batman
books,8 and shows INSIDE OUT plush toys, action figures and books.9
In addition, the Examining Attorney has made of record numerous third-party
registrations showing that a single mark has been registered for the goods identified
in Applicant’s application and the goods identified in Registrant’s registration,
including Registration No. 4242736 for MONKEY KUNG FU for, inter alia, children’s
books, action figure toys and plush toys; Registration No. 4296190 for
DREAMWORKS MADAGASCAR 3 for, inter alia, children’s storybooks, action
figures and plush toys; Registration No. 4573056 for MR. PEABODY & SHERMAN
for, inter alia, children’s storybooks, action figures, plush toys; Registration No.
4390601 for BARBAPAPA for, inter alia, children’s fiction book series, soft sculpture
toys and toy action figures; Registration No. 4200138 for ChocRocs for, inter alia,
children’s books, plastic action figures, stuffed dolls and animals; Registration No.
4781637 for JADE STARS for, inter alia, children’s books, plush toys and action
figures; and Registration No. 4880014 for CHICKEN ALASKA for, inter alia,
children’s books, plush toys and action figure toys.
Third-party registrations that individually cover a number of different items and
that are based on use in commerce serve to suggest that the listed goods and/or

7 March 7, 2016 Office action, pp. 3-5.
8 March 7, 2016 Office action, pp. 14-16.
9 March 7, 2016 Office action, pp. 18-20.
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services are of a type that may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The foregoing evidence is sufficient to show that Applicant’s identified children’s
books and action figure toys are related to the plush toys identified in the cited
registration. This du Pont factor thus favors a finding of likelihood of confusion. The
evidence also shows that these goods are sold through the same websites, and are
frequently featured together. The du Pont factor of the channels of trade therefore
also favors a finding of likelihood.
In addition, the involved goods are for children, and they would presumably be
purchased by the parents of the children or other adults in the children’s lives. These
purchasers are members of the general public, and cannot be viewed as having any
particular sophistication or expertise regarding the goods. In fact, the goods may well
be purchased on impulse, or at least without a great deal of consideration--
particularly if the adult is trying to control a child in a toy store! The du Pont factor
of the conditions under which and buyers to whom sales are made favors a finding of
likelihood of confusion.
With respect to the strength of the cited mark, and the number and nature of
similar marks in use on similar goods, there is no evidence of any third-party use or
registrations of marks comprising or containing the word. Further, although BULA
is the Fijian word for “life,” and is used in the manner of the Hawaiian word “aloha,”
most consumers will not know the meaning of the word, and will instead regard it as
an invented term. Even for those who know the Fijian word, it is an arbitrary term
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for stuffed toys. As a result, Registrant’s mark is a strong mark which is entitled to a
broad scope of protection. The fifth and sixth du Pont factors favor a finding of
likelihood of confusion.
This brings us to a consideration of the first du Pont factor, the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. The similarities between the marks BULA BUDDIES
and BULA are obvious; the first word of Applicant’s mark is identical to Registrant’s
mark, and Applicant’s mark differs only in that he has added the word BUDDIES.
We find that the additional word BUDDIES does not serve to distinguish the marks.
BULA is the first word in Applicant’s mark, and makes the strongest impression. See
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Consumers are likely to view the
additional word BUDDIES as an extension of the BULA line of stuffed toys, rather
than as indicating a different source for the goods. For example, an adult shopping
for a present, and knowing of a child’s love for his or her BULA stuffed toy, is likely
to believe, upon encountering BULA BUDDIES storybooks or action figures, that they
all emanate from a single source. Viewing the marks in their entireties, we find that
the similarities in appearance, pronunciation and meaning due to the inclusion of the
word BULA in both marks far outweigh the differences caused by the additional word
BUDDIES in Applicant’s mark. Overall, the marks convey the same commercial
impression.
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Applicant primarily argues that confusion is not likely because, he asserts, the
marks convey different commercial impressions due to the trade dress of the goods.
Applicant explains, based on the specimen in Registrant’s registration file, that
Registrant’s mark BULA is the name of a single stuffed toy, and that is how the mark
will be perceived. On the other hand, Applicant asserts that BULA BUDDIES will be
understood as the “characters in a series of books and a line of action figure toys”
because the mark “inherently refers to the characters that comprise the subject
matter of the books and toys, and that the goods “cannot be ‘source confused’ with
stuffed toys that cannot (by law) relate to those same copyrighted characters.” Brief,
4 TTABVUE 4. Applicant contends that it is appropriate to consider this extrinsic
evidence of the trade dress of the products “to shed light on how consumers would
perceive the marks at issue.” Id. According to Applicant, “the prohibition against
using extrinsic evidence is only relevant in the context of analyzing whether goods or
services are related.” Id. at 5.
Our primary reviewing court, the Court of Appeals for the Federal Circuit,
considered the impact of trade dress in analyzing the factor of the similarity of the
marks in Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ
1281, 1284 (Fed. Cir. 1984):
Ordinarily, for a word mark we do not look to the trade dress, which can
be changed at any time. But the trade dress may nevertheless provide
evidence of whether the word mark projects a confusingly similar
commercial impression. Applicant’s labels support rather than negate
that of which opposer complains: that SPICE VALLEY inherently
creates a commercial impression to that of SPICE ISLANDS.

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In other words, although a dissimilar trade dress will not avoid a finding of likelihood
of confusion if the marks themselves are confusingly similar because the trade dress
can be changed, trade dress may support a finding that the marks are likely to cause
confusion.
Applicant’s position appears to be that the trade dress of Registrant’s stuffed toy,
i.e., the way the toy looks, cannot be the same as the trade dress of the characters in
Applicant’s books or of Applicant’s action figures, because Registrant is prohibited by
copyright law from copying Applicant’s characters’ appearance. However, the issue is
not whether consumers will confuse the goods, but whether they will confuse the
source of the goods. Therefore, it is not necessary that Registrant’s BULA stuffed toy
looks like Applicant’s action figures or the characters as they are depicted in
Applicant’s books for us to find that confusion is likely. Further, Respondent’s
registration is prima facie evidence of its exclusive right to use the mark in commerce
on or in connection with the goods specified in the certificate of registration, namely,
“stuffed toys.” Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). Thus, even if
Registrant currently uses the mark BULA to identify a particular character stuffed
toy, Registrant is not limited to using its mark for such a character in the future, and
Applicant cannot use extrinsic evidence to limit Registrant’s trademark rights
conferred by Section 7(b). The same is true for Applicant; if Applicant were to get a
federal registration, his rights would be for “children’s books” and “action figure toys”
without limitation to particular characters or trade dress for such characters.
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The question before us is whether consumers are likely to believe that Registrant’s
identified “stuffed toys” (whatever they may look like) sold under the mark BULA
and Applicant’s action figures and storybooks (whatever they may look like) sold
under the mark BULA BUDDIES emanate from the same source. Because the
Examining Attorney’s evidence shows that action figures and storybooks may
emanate from the same source as stuffed toys, and because of the similarity of the
marks BULA and BULA BUDDIES (with the unusual and distinctive first term
BULA), we find that consumers are likely to believe that they have the same source,
and that Applicant’s use of the mark BULA BUDDIES for his identified goods is likely
to cause confusion with the mark in the cited registration.
Decision: The refusal to register Applicant’s mark BULA BUDDIES is affirmed.