In In re United Trademark Holdings Inc (Serial No 85706113, October 9 2014, not precedential), the Trademark Trial and Appeal Board (TTAB) has found that there was no likelihood of confusion between the marks ZOMBIE CINDERELLA and WALT DISNEY’S CINDERELLA.
The applicant sought to register ZOMBIE CINDERELLA for dolls. The examining attorney refused the application as confusingly similar to the earlier registered mark WALT DISNEY’S CINDERELLA, also for dolls.
On appeal, the Trademark Trial and Appeal Board (TTAB) found that, although the goods are identical, and thus are presumed to move in the same trade channels and to be offered to the same classes of consumers, there was no likelihood of confusion.
The TTAB found that ‘Cinderella’, as used with a doll, is a weak term and entitled to a limited scope of protection, in that it names the fairy tale character depicted by the doll. The story of Cinderella has been around since 1697 and the TTAB agreed that the character had widespread public recognition. The TTAB also found the term ‘Cinderella’ to have limited source-identifying power in the marketplace after reviewing evidence of numerous Cinderella dolls sold by different companies.
Comparing the marks directly, the TTAB found that the ‘Walt Disney’s’ portion of the cited registration, in the possessive form, indicates that the dolls are the registrant’s version of the character as opposed to another’s version. Finally, it was the combination of the terms ‘zombie’ and ‘Cinderella’ in the applicant’s mark that tipped the scales against a finding of likelihood of confusion. The TTAB found that the combined terms created a unitary mark with an incongruous impression; an “uneasy mixture of innocence and horror.”
Diane M Reed, Knobbe Martens Olson & Bear LLP, Orange County
This article first appeared on WTR Daily, part of World Trademark Review, in December 2014. For further information, please go to www.worldtrademarkreview.com