963 F.2d 350 (Fed. Cir. 1992), 91-1399, Kenner Parker Toys Inc. v. Rose Art Industries, Inc.

Docket Nº:91-1399.
Citation:963 F.2d 350
Party Name:22 U.S.P.Q.2d 1453 KENNER PARKER TOYS INC., Appellant, v. ROSE ART INDUSTRIES, INC., Appellee.
Case Date:April 15, 1992
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 350

963 F.2d 350 (Fed. Cir. 1992)

22 U.S.P.Q.2d 1453

KENNER PARKER TOYS INC., Appellant,

v.

ROSE ART INDUSTRIES, INC., Appellee.

No. 91-1399.

United States Court of Appeals, Federal Circuit

April 15, 1992

Steven M. Weinberg, Weiss, Dawid, Fross, Zelnick & Lehrman, P.C., New York City, argued for appellant. With him on the brief was Carol F. Simkin.

Robert L. Epstein, James & Franklin, New York City, argued for appellee. With him on the brief was Harold James.

Page 351

Before MAYER, CLEVENGER, and RADER, Circuit Judges.

RADER, Circuit Judge.

Kenner Parker Toys Inc. opposed Rose Art Industries's registration of the mark FUNDOUGH for modeling compound and related accessories. The Trademark Trial and Appeal Board dismissed the opposition discerning little, if any, likelihood that consumers would confuse FUNDOUGH with Kenner's PLAY-DOH mark. Because the Board treated the fame of Kenner's mark as a liability and otherwise improperly weighed the factors showing confusing similarity, this court reverses.

Background

Rainbow Crafts, one of Kenner's predecessors, first used the trademark PLAY-DOH for a modeling compound over thirty years ago. Kenner owns five federal registrations of the PLAY-DOH mark, four of which are incontestable. In Registration No. 650,035, Kenner's mark for modeling compound appears as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In Registration No. 1,221,942, Kenner's mark for modeling compound and associated toys appears as follows:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Kenner now sells PLAY-DOH modeling compound nationwide in toy stores, school supply stores, grocery stores, drug stores, department stores, hobby shops, and other retail outlets. PLAY-DOH products comprised 10-15% of Kenner's total sales. In 1988, sales of PLAY-DOH products exceeded $30 million. Kenner spent over $2 million that year in advertising and promotion for products with the PLAY-DOH mark. At one time the toy industry's most advertised products, PLAY-DOH toys comprised 60-70% of the modeling compound market.

In the two- to seven-year-old age group, one in every two children currently owns a PLAY-DOH product. A survey showed that 60% of mothers named PLAY-DOH for modeling compound without any prompting. One witness characterized PLAY-DOH as a "piece of gold" which has lasted over thirty years as a successful toy--a very unusual occurrence in the toy business.

Kenner sells PLAY-DOH modeling compound in a 4-pack assortment, an 8-can RAINBOW PACK, and a 3-pound tub. Kenner also sells a variety of accessories, like molds and extruders, for use with PLAY-DOH modeling compound. In the early 1960's, Kenner's packaging began to include a fanciful character known as the PLAY-DOH boy.

The applicant, Rose Art, sells children's art and craft supplies--crayons, paints, chalkboards, stationery, and the like. In the mid-1980's, Rose Art decided to develop a water-based modeling compound. In January 1986, Rose Art adopted and began using the following mark on its modeling compound:

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NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE


MRose Art sells its goods to many of the same retail outlets as Kenner--discount and chain toy stores, supermarkets, hobby shops, and schools. Rose Art promotes its products in catalogs and at trade shows. Rose Art does no television or print advertising of FUNDOUGH products. Although Rose Art did no widescale advertising, FUNDOUGH modeling compound sales rose from $50,000 in 1987 to over $500,000 in 1988.

Rose Art sells FUNDOUGH modeling compound in 2, 3, and 4-pack assortments. Rose Art also sells a variety of accessories, molds and extruders, similar to the PLAY-DOH products. The 1988-89 product line marked the introduction of a full line of FUNDOUGH products in connection with a bird mascot MR. DOUGH DOUGH.

In March 1986, Rose Art sought registration of its FUNDOUGH mark. Kenner opposed the mark as likely to cause confusion with PLAY-DOH. The Board dismissed Kenner's opposition. Kenner appealed.

Analysis

I.

Though accepting the Board's factual findings unless clearly erroneous, Stock Pot Restaurant v. Stockpot, Inc., 737 F.2d 1576, 1578, 222 USPQ 665, 666-67 (Fed.Cir.1984), this court reviews the Board's ultimate conclusions about confusing similarity as questions of law. Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 1565, 4 USPQ2d 1793, 1797 (Fed.Cir.1987); Specialty Brands v. Coffee Bean Distribs., 748 F.2d 669, 671, 223 USPQ 1281, 1282 (Fed.Cir.1984); Giant Food v. Nation's Foodservice, 710 F.2d 1565, 1569, 218 USPQ 390, 394 (Fed.Cir.1983).

A trademark owner may oppose the...

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