2010 Heo 3677 Trademark refusal
[Principles of Judgment]
Similarity is assessed by considering the marks' appearance, pronunciation and concept as a whole. A distinctive part of a composite mark may be considered separately where its elements are not inseparably combined.
| Earlier registered mark | Applied for trademark | |
| Mark |  |  |
| Designated Goods | Class 18: riding saddles. Class 28: balloons, stuffed toys, plastic toys, toy sets, mascot dolls, wooden toys, vaulting horses, children's rocking horses and toys. | Classes 16, 25 and 28: stationery, clothing, and dolls and accessories, among other goods. |
[Similarity of the marks]
1. Appearance
The applied-for mark consists of “UGLYDOLL” in uppercase letters. The earlier mark combines a gorilla device with the handwritten word “ugly”. They differ in their devices, letter count and lettering.
2. Pronunciation and concept
The applied-for mark uses double-line lettering, with the “O”
stylized to resemble an eye.
Viewed as a whole, consumers would still recognize the stylized character as the “O” in “DOLL”. The mark may be read as “UGLYDOLL”, but “DOLL” is generic or weakly distinctive for dolls and accessories. “UGLY” can therefore function as its distinctive component.
stylized to resemble an eye.Viewed as a whole, consumers would still recognize the stylized character as the “O” in “DOLL”. The mark may be read as “UGLYDOLL”, but “DOLL” is generic or weakly distinctive for dolls and accessories. “UGLY” can therefore function as its distinctive component.The earlier mark combines a gorilla with a small “ugly” inscription. It may be perceived as “ugly gorilla” or simply “ugly”. The word remains distinctive despite its smaller size, and the device and wording do not form an inseparable new concept. Consumers may refer to the mark by “ugly” alone.
If the applied-for mark is shortened to “UGLY”, it has the same pronunciation and concept as the earlier mark's “ugly” element.
[Designated goods]
The applied-for mark's dolls and accessories and the earlier mark's mascot dolls are identical or similar goods.
[Decisions]
Despite their different appearances, the marks have similar pronunciations and concepts. The court found the marks similar.
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