Published 03/04/2022 by CIONCA IP TEAM (SE)
In 1939, Disney Enterprises, Inc. (“The Respondent”) acquired exclusive rights to make, reproduce and exhibit animated cartoons. The exclusive rights applied to a trademark named TINKER BELL.
In 2013, United Trademark Holdings, Inc. (“The Appellant”) applied to the United States Patent and Trademark Office (“PTO”) to register its trademarks. The first trademark was TEEN TINKER BELL, registered in standard characters, while the other trademark TEEN TINK was registered in stylized characters.
The Appellant brought the trademark application under section 1(a) of the Lanham Act and 15 U.S.C section 1051(a). Consequently, the PTO approved the trademark for publication on its principal register.
In 2015, the Respondent opposed the registration of the Appellant’s trademarks. The ground of the opposition is that there would be confusion with approximately 30 of the Respondent’s trademarks.
The dispute was referred to the PTO, Trademark Trial and Appeal Board (“The Board”). The Board issued a decision in favour of the Respondent on the ground that there was a likelihood of confusion.
The Appellant appealed to the United States Court of Appeal (“The Federal Circuit”). The Appellant challenged the Board’s analysis regarding the several DuPont factors in support of its findings. Particularly, the strength and the attendant scope of protection of the Respondent’s trademark. The Appellant also challenged the similarity between the Respondent’s and the Appellant’s trademarks.
The Federal Circuit concluded that substantial evidence supported the Board’s findings on the contested factors. Accordingly, on this basis, the Federal Circuit affirmed the Board’s conclusion on the contested findings and the likelihood of confusion.
On the strength of the Respondent’s trademark, the Appellant argued that the Respondent’s trademark was substantially weak. However, the Federal Circuit held that the Respondent’s trademark was inherently distinctive and depicted a character. Hence, the Respondent’s trademark was entitled to an ordinary scope of protection. Moreover, the Respondent’s commercial strength overwhelmed the conceptual weakness.
On the issue of similarity and dissimilarity, the Federal Circuit held that the Board was right to hold that there was a similarity between the sound and appearance of the trademarks. The Federal Circuit gave reasons for upholding the Board’s decision on the similarity of the Trademarks.
The Federal Circuit stated that the mere addition of TEEN by the Appellant did not distinguish it from the Respondent’s trademark. The appearance, sound, connotation and commercial impression were taken into consideration.
The Federal Circuit further stated that the contraction of the Respondent’s TINKER BELL to the Appellant’s TINK did not have any material effect, as TINK had often been the common nickname used for the Respondent’s TINKER BELL.
Therefore, the Appellant’s trademarks did not provide a different result. Accordingly, the Federal Circuit also addressed the Appellant’s copyright-rooted argument. It stated that the Appellant failed to explain how its copyright-rooted argument could disrupt the Board’s decision. The reason being that the Appellant asserted no counterclaims, as the only issue in contest was the Board’s rejection of the Appellant’s trademark.
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CIONCA IP TEAM (SE)3/4/2022 4:54:18 PM
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.
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