TTABlog Test: Is PRINCE KONG for Games and Toys Confusable with KING KONG & Design for Toys and KING KONG (Stylized) for Bicycles?

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] Examining Attorney Alison Keeley refused registration of the mark PRINCE KONG (in standard characters) for, inter alia, games, toys, and elbow pads and guards, finding the mark likely to cause confusion with the registered marks KING KONG & Design (below left) and KING KONG (Stylized) (below right) for toys and for bicycles and body protectors for bicycle sports, respectively. On appeal, Applicant contended that the registered KING KONG marks are weak and deserved a narrow scope of protection, and that “PRINCE” and “KING” have distinct enough meanings that consumers would be readily able to differentiate between them. Do you think the Board was convinced by these arguments? In re Shin-Kyu Choi, Serial No. 87386932 (June 7, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).

Similarity of the Goods, Channels of Trade, and Classes of Customers:

The Board determined that Applicant’s goods are “identical or legally identical to the goods in the registrations” and therefore it quickly presumed that the channels of trade and classes of purchasers are the same. Applicant did not appear to challenge this issue. This factor weighed in favor of finding for confusion.

Strength of the Registered Marks:

Applicant strongly disputed the strength of the registered marks, alleging that the terms KING KONG and KONG are extensively used in the marketplace and are thus are diluted and weak terms. As evidence, Applicant cited third-party registrations and also pointed to statements made by the First Registrant during prosecution which alluded to the weakness of KING KONG. The Board rejected both of these arguments. Firstly, Applicant fell short of a successful “crowded field” argument: “[i]n this case there is no evidence of third-party usage, there is only a handful of third-party registrations – only two of which contain the full literal element of the cited mark [and] [t]hose two third-party registrations are not for the same goods identified in either cited registration.” Secondly, the Board noted that a “party’s earlier contrary opinion may be considered relevant and competent” to a limited extent, but that it is no substitute for the Board reaching its own ultimate conclusion. See Interstate Brands, Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Accordingly, the Board found this factor to be neutral.

Similarity of the Marks:

Applicant did not dispute the assertion that the words “KING KONG” are the dominant element of each mark. However, it did argue that “PRINCE” and “KING” have separate meanings and are consequently dissimilar. The Board rejected this argument, maintaining that: “[t]he marks have the same structure: two words, the second being KONG . . . they share the commonly placed second word KONG which is preceded by the title of a royal male (i.e., either KING or PRINCE) . . . [and] the marks share not only a royal connotation but a direct familial relationship.”

Applicant conceded that KING KONG is a famous and iconic character featured in the film of that name and in many sequels. The Board noted that in “Son of Kong,” “the character King Kong had a son – known as a prince.”

Finding more similarities than differences between the marks, the Board found that this factor weighed in favor of finding of likely confusion.

Conclusion:

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlog comment: The stylized version seems like an optical illusion. Sometimes I see it as KING KONG, sometimes not.