Toy Figures and Plush Toys are Similar Goods

"Pint Size Heroes toy figures and plush toys similar goods"

Intuitively, toy figures and plush toys appear to be similar goods. Whether they are in fact similar goods is what the Trademark Trial and Appeal Board had to decide. The similar goods likelihood of confusion factor was the deciding factor in the In re Funko, LLC case. In disputes before the Trademark Office, the 13 factor DuPont test is applied. The Trademark Office will consider each DuPont factor for which there is evidence or argument. However, it is important to highlight that of the 13 DuPont factors, only two are considered to be dispositive of the likelihood of confusion finding. Those two DuPont factors are:  (1) the similarity of the marks; and (2) the similarity of the goods or services. Because these two factors can be dispositive, it is imperative that both are included in a trademark search.

Funko, LLC applied to register the mark PINT SIZE HEROES (Stylized) for “collectable toy figures.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals.” The Trademark Trial and Appeal Board had to decide the marks were being used in connection with similar goods. Pint Size Productions does not sell a branded stuffed animal. Instead, it is an online retailer that sells stuffed animals associated with the Boynton children’s book series.  It does not sell any brand of toy figure.

The Trademark Trial and Appeal Board focused on the evidence in the record that showed toy manufacturers selling both a plush toy and toy figure under the same mark. What was lacking from the record was any evidence that online or brick and mortar retailers not only sell other branded plush toys and toy figures, but also plush toys and toy figures branded with the store’s name. And it does not appear that Funko made this argument.

Instead, the Trademark Office went back to the well for its standard line that the determination of relatedness must be based on the descriptions contained in the application and registration at issue. Where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein. In this case, the Board found that “collectable toy figures” can encompass plush toys. Therefore, all the Board waded into the real world marketplace waters, its decision was based on the tried and true presumptions that apply to broad identification of goods descriptions.

Who is the Reasonable Person in Trademark Infringement Cases?

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Who is the reasonable person in trademark infringement cases? When the similarity of the marks is being determined, the Trademark Trial and Appeal Board will sometimes mention that when comparing the marks “the proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” The Board will then go on to say “the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.” If you are a defendant in a case before the Trademark Trial and Appeal Board and see these paragraphs, it is probably time to brace yourself for a decision that is not going in your favor (that’s assuming you didn’t skip to the end of the decision the minute you received it).

Who is this “average purchaser” that the Trademark Trial and Appeal Board references? In one of its most recent decisions In re Spy Tec International, Inc., the Board never defines who this person is and we must assume that the applicant did not offer any evidence to demonstrate who is this person. The “average purchaser” is a concept that is critical to any trademark dispute, yet more often than not who this person is is assumed without any evidence identifying who is the average purchaser of particular goods and services.

Laura A. Heymann of the College of William & Mary Law School discussed this “reasonable person” or “average purchaser.” Although not of much comfort to those of us dealing with trademarks on a daily basis, Ms. Heymann concludes that the “reasonable person” or “average purchaser” is the whoever the judge decides it is, which is usually a product of the judges own bias. The Trademark Trial Appeal Board has said that the “average purchaser” is the least sophisticated of a particular class of consumers.

5 Good Record Keeping Tips when Searching Trademarks

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Good record keeping practices should be followed when searching trademarks, and there are a few reasons why this is the case. The first reason is simple and self-interested. As a trademark searcher for others, you want a CYA (i.e., cover-your-ass) file in the event a trademark dispute occurs. And you especially want this CYA file in the event your client choses a name that has a questionable, clearance report. As an aside, under no circumstances should a naming firm or trademark searcher indemnify a client for trademark infringement. You are not a trademark lawyer, and should not put yourself in the position as insurance company for your clients.

But we digress. The second reason to follow good record keeping practices is because plausible deniability is not going to be a defendant’s friend in a trademark dispute. The lack of documentation surrounding a defendant’s trademark search always get’s the plaintiff’s attorneys worked up. Any testimony given about the search including its details is always met with arguments of bias and self-interest. As a trademark searcher, if your documents and notes as a lay person corroborate the trademark attorney’s legal review, then you remove one distraction a plaintiff’s attorney can make to a jury.

The third reason is for historical reference. As a trademark owner, you hope to be in business for a long time, maybe even generations. Invariably, your brand will have to modernize over time. Having a record of why the trademark was selected in the first place and what existed at the time is helpful information to have when deciding how to rebrand. Not too often when more information was unhelpful.

Here are some practices to follow when searching trademarks:

  1. Save your search equations, including those that you ultimately did not use;
  2. Save your search results. If you use a trademark search engine like BOB, you can download your search results in a PDF or Word format. If you are manually searching the USPTO database, print the TESS search results and any notable individual records;
  3. Save any additional investigation taken on a particular individual mark;
  4. Save any notes taken about the search or about the mark in terms of the meaning or inspiration for the mark; and
  5. Save the ultimate, lay opinion on the availability of the mark.

Keep in mind that all of these documents are discoverable in a lawsuit and will not be protected by the attorney client privilege. Keep this in mind as you preparing any documents, but don’t let that discourage you from employing good record keeping practices.