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.