The Trademark Trial and Appeal Board (TTAB) recently concluded that the mark HOUSEBOAT BLOB was merely descriptive of the identified goods – water toys – and was likely to cause confusion with the registered mark THE BLOB for legally identical goods.
Fat Boys Water Sports LLC sells inflatable water toys, such as water trampolines or 'launch pads'. Fat Boys filed an application to register the mark HOUSEBOAT BLOB for "inflatable float mattresses or pads for recreational use namely, mattresses and pads from which the user may be launched into the air and onto a body of water", disclaiming the exclusive right to use 'Blob' apart from the mark. On its website, Fat Boys describes its "Houseboat Blob" product as "a version of [its] launch pad that will accommodate Houseboats and Yachts" which "fits well alongside [a] houseboat and has [an] extra protective pad for protection between BLOB and houseboat".
Three other pertinent marks containing the term 'blob' were registered on the Principal Register by SSP Acquisition, LLC:
- THE BLOB – covering "giant inflatable, floating air bags… for use by… businesses as a component of their aquatic recreational facilities… such that patrons can jump from a diving platform onto, and be launched off of, such floating air bags and into the water";
- THE BLOB – covering "retail services by telephone, online ordering, and direct solicitation by sales agents in the field" of the inflatable, floating air bags described in the previous registration; and
- WATERBLOB – covering "inflatable mattresses for recreational use".
The trademark examining attorney refused registration of the HOUSEBOAT BLOB mark on the grounds that the mark was merely descriptive and likely to cause confusion in light of the marks in SSP's pre-existing registrations. Fat Boys appealed to the TTAB, which affirmed the refusal to register.(1)
On the issue of mere descriptiveness, a mark is merely descriptive of goods under Section 2(e)(1) of the Trademark Act if it "forthwith conveys an immediate idea of an ingredient, quality, characteristic feature, function, purpose, or use of the goods". Fat Boys argued that HOUSEBOAT BLOB was not merely descriptive under the following three-part test set forth in No Nonsense Fashions, Inc v Consol Foods Corp(2):
- degree of imagination test;
- competitors' use test; and
- competitors' need test.
The TTAB rejected this test, stating that it has been superseded by subsequent rulings of the Court of Appeals for the Federal Circuit and TTAB, and reiterated that the correct test is the test set out in Section 2(e)(1). However, the TTAB noted that elements of the No Nonsense test – such as the fact that others have used the mark at issue or need to use the mark – may be highly relevant when conducting the descriptiveness analysis under Section 2(e)(1).
Under this clarified standard, and in light of the evidence of record (which included descriptive references to both 'Houseboat Blob' and 'The Blob' from Amazon and Wikipedia), the TTAB found that HOUSEBOAT BLOB would be immediately understood to mean a blob-type inflatable launch pad for use in association with a houseboat. The fact that Fat Boys was the first and indeed the only one to use the mark was not persuasive from a descriptiveness perspective. So long as a mark meets the Section 2(e)(1) test set forth above, it is descriptive. Accordingly, the TTAB found the mark to be merely descriptive of the goods because it conveyed an immediate idea of the nature and purpose of the goods themselves.
Turning to the issue of likelihood of confusion with SSP's registered marks, the TTAB decided to focus on only one of the marks – THE BLOB – reasoning that if refusal were not affirmed on the basis of this mark, it would not be affirmed for the other registered marks. The TTAB utilised the relevant factors from In re EI du Pont de Nemours & Co to determine likelihood of confusion, focusing specifically on the similarity or dissimilarity of the marks and goods.(3)
Looking at the marks themselves, the TTAB found no evidentiary support for Fat Boys' argument that SSP's THE BLOB was fundamentally different in that it functioned as a double entendre, utilising both the fame of the classic movie The Blob and the descriptive, generic meaning of the term 'blob'. Rather, the TTAB concluded that the evidence demonstrated that customers were more likely to perceive the mark's meaning to be an inflatable floating launch pad. In a similar vein, the TTAB found that consumers would perceive HOUSEBOAT BLOB to be a special type of inflatable launch pad for use with a houseboat. Despite some differences in sound, appearance and meaning, the two marks created commercial impressions that were sufficiently similar to be likely to give rise to confusion.
Furthermore, the goods themselves were legally identical. They were both inflatable floating recreational devices designed to launch a person into a body of water. This similarity of goods led the TTAB to conclude that both would likely move in the same channels of trade and be offered to the same consumers. When taken with the commercial impressions of the marks, these findings weighed in favour of a likelihood of confusion between HOUSEBOAT BLOB and THE BLOB.
The TTAB found HOUSEBOAT BLOB both merely descriptive and likely to cause confusion. It will be interesting to see whether this case is appealed, as the double entendre issue did not appear to be resolved by the TTAB's explanation. For now, at least, Fat Boys' registration remains refused.
For further information on this topic please contact Timothy J Kelly, Rachael Million-Perez or Kathryn E Easterling by telephone (+1 212 218 2100) or email (firstname.lastname@example.org, email@example.com or firstname.lastname@example.org). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.
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