Tuesday, October 02, 2012

TTAB Sustains BARBIE Opposition, Finds BARBIE GRIFFIN for Entertainment Services Confusingly Similar

In a rather anticlimactic finish to this closely-watched TTAB tussle, the Board sustained a Section 2(d) opposition to registration of the mark BARBIE GRIFFIN for "entertainment services, namely, providing a web site featuring photographs, video presentations, and information about a model; adult entertainment services, namely, providing a web site featuring photographs, video presentations and information about a model; entertainment services, namely, live appearances by a model." The Board found the applied-for mark likely to cause confusion with the famous mark BARBIE, registered for, inter alia, informational and entertainment websites featuring games and stories, and for “entertainment services, namely, live appearances by a costumed character.” Mattel. Inc. v. S.W. Fantasies, Inc., Opposition No. 91170977 (September 26, 2012) [not precedential].

The Board first dealt with several procedural skirmishes, denying Applicant's motion to strike certain evidence. Applicant Fantasies argued that Opposer Mattel should not be allowed to introduce documents that were not produced in response to pertinent document requests, but the Board pointed out that Opposer had objected to those requests on various grounds and never said that it did not have documents. If Mattel failed to produce any documents in response to a request, it was up to Fantasies to move to compel if it thought the objections were improper. [Doesn't this hands-off approach by the Board lead to more objections and more motions to compel, more paperwork and more wasted time? - ed.].

Turning to the substantive issue, strong evidence of sales and notoriety convinced the Board that BARBIE is a famous mark for Section 2(d) purposes. 

As to the goods/services, the Board focused on three BARBIE registrations (out of 70) for services that were most similar to those of the opposed application.

Fantasies asserted that "there is no evidence that adult modeling services and toy doll related goods and services are sold under circumstances likely to give rise to a mistaken belief that the products emanate from the same source." Unfortunately for Fantasies, however, its application is not limited to "adult entertainment services."

Both Opposer's and Applicant's websites "appear to provide information regarding the person or character named in the mark." "Although those characters may in fact have very different attributes and audiences, any such differences are not reflected in the identification of services." Therefore the Board found these services to be closely related.

The Board also found the entertainment services comprising live appearances by a "costumed character" or "model" to be closely related. Indeed, BARBIE is a "'fashion icon' known for modeling clothes and representing any number of female roles."

As to the marks, both would be perceived as names. Consumers would likely see these two marks "as the same name with one being the shortened form of the other." This is especially true if consumers "do not know that BARBIE has a last name." None of the BARBIE registrations include a surname with BARBIE.

Put another way, if consumers are not used to seeing opposer's BARBIE linked to a last name, these consumers, upon seeing advertisements for live appearances for BARBIE GRIFFIN might assume that the performances featured opposer’s BARBIE.[LOL - ed.]

Comparing the marks as to appearance, sound, connotation, and commercial impression, the Board found them to be similar. The additional word GRIFFIN is not sufficient to distinguish the marks when used with related services.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition on that ground. It declined to reach the issue of dilution by tarnishment.

TTABlog comment: Leaving TTAB-land and returning to the real world, do you think these marks are confusingly similar? Is anyone going to think that there's a connection between Barbie and Barbie Griffin? Of course, that's not the question the Board faced. Applicant's overly-broad recitation of services was the source of its problem.

Unfortunately, the Board declined to reach the dilution-by-tarnishment issue.We could use some TTAB law on that subject.

Text Copyright John L. Welch 2012.


At 10:55 AM, Anonymous Anonymous said...

Regarding the TTAB's hands-off approach to opposer's use of documents that it had objected to producing, there is no meaningful discussion of the application of the objections to particular requests. But at least two of the objections cited and relied on by the TTAB are clearly improper--the disputed registrations were not irrelevant or privileged. And what about Mattel's obligation to disclose, in its initial disclosures, all documents that it "may use to support its claims and defenses"? Did applicant fail to raise this issue, or did the TTAB simply ignore it?

At 11:39 AM, Anonymous Paul Reidl said...

John, I agree that the Board's "hands off" approach is counterproductive. It allows litigants to run up the cost of a proceeding by being unreasonable in responding to discovery requests without any consequences at all unless the other side spends the money to prepare a motion to compel AND the Board grants it. If someone pulled that crap in Federal court they would be slapped down hard. It just invites discovery abuse.

At 2:46 PM, Anonymous Anonymous said...

Does this mean these cases just move from TTAB into USDC?

Would Mattel really want to be in USDC in this case?

Maybe they just want to prevent a registration?

At 2:48 PM, Anonymous Anonymous said...

Interesting fact. Mattel owns BarbieGriffin.com

Would that be cybersquatting?

Did they buy it?

At 5:05 PM, Anonymous Anonymous said...

I'll give a prize to anyone who quotes John's comparison of "TTAB-land" to the real world, in a future brief to the TTAB!


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