Reversing a Section 2(d) Refusal Through Cultural Connotation and Commercial Impression

This decision serves as a vital reminder that the first DuPont factor, the similarity or dissimilarity of the marks, is not a mechanical comparison of shared words. Instead, it is a comprehensive analysis of the mark as perceived by the consumer.

Background

NBCUniversal Media, LLC (the Applicant) filed an application seeking registration of the standard character mark DUNDER MIFFLIN on the Principal Register. The application covered a wide array of Class 16 goods, including paper party decorations, paper napkins, gift wrapping paper, ribbons, bows, notebooks, journals, and stationery items.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the registered mark MIFFLIN (Registration No. 6106662). The cited registration covers paper labels and tags in Class 16, luggage tags in Class 18, replacement plastic sheets for picture frames in Class 20, and plastic ornamental bows for decoration and gift wrapping in Class 26.

After the refusal was made final, the Applicant sought reconsideration, which was denied. The Applicant then proceeded with an appeal to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

The Board’s analysis focused on a few DuPont factors: the similarity or dissimilarity of the goods and their channels of trade, and the similarity or dissimilarity of the marks in terms of appearance, sound, meaning, and commercial impression.

DuPont #2: Similarity or Dissimilarity and Nature of the Goods

In analyzing the relatedness of the goods, the Board looked strictly at the identifications in the application and the cited registration. The Board noted that for a finding of likelihood of confusion, it is sufficient if relatedness is established for any single item encompassed by the identification of goods within a particular class.

The Board found a "close inherent relationship" between the Applicant’s "paper gift wrap bows" and the Registrant’s "plastic ornamental bows for decoration and gift wrapping." The Board reasoned that these are essentially the same item used for the identical purpose of gift wrapping, differing only in their material composition (paper versus plastic).

Furthermore, the Board found that the goods were complementary. The Applicant’s "gift wrapping paper and paper gift wrapping ribbons" are used in combination with the Registrant’s "plastic ornamental bows." To establish this, the Board looked for evidence that customers would seek out both types of goods for the same purpose, comparing the relationship to "making an outfit by matching shoes and clothing, or making a sandwich by combining bread and cheese." In this instance, bows, ribbons, and paper were deemed intrinsically related because they are all used together to wrap gifts.

To solidify this finding, the Board reviewed webpage excerpts from various specialty online retail sources. This evidence demonstrated that paper labels, tags, bows, wrapping paper, and greeting cards are frequently available under the same mark from the same sources. Consequently, the Board concluded that the similarity and nature of the goods weighed in favor of a likelihood of confusion.

The Board only briefly mentioned trade channels in a footnote as it dismissed Applicant's argument that the goods in actual use are more specialized than the goods listed in the registration, quoting Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990):

"...the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed."

DuPont #1: Similarity or Dissimilarity of the Marks

The Board then turned to the first DuPont factor, which requires an assessment of the marks in their entireties. The Board emphasized that the test is not a side-by-side comparison but an evaluation of the overall commercial impression.

Dominant Term

The registered mark is MIFFLIN. The record established that MIFFLIN is a surname, as well as the name of a county in Pennsylvania, a township in Ohio, and a street in Wisconsin. There was no evidence that the term had any descriptive significance for the goods involved.

The Examining Attorney argued that "MIFFLIN" was the dominant part of the DUNDER MIFFLIN mark, suggesting that "MIFFLIN" could be seen as a shortened version of the Applicant’s mark. The Examining Attorney further argued that "DUNDER" might be perceived by consumers as suggestive of "dunderhead," a colloquial term for an idiot, thereby acting as a modifier that evokes "humorous buffoonery."

The Board rejected this speculative theory. It found no evidence that the term "DUNDER" is a dictionary term or has any descriptive significance in this context. Instead, the Board classified "DUNDER" as a fanciful term, which is typically a strong trademark element. Because "DUNDER" is a non-dictionary word and occupies the first position in the mark, the Board found it to be slightly dominant in creating the commercial impression.

Commercial impression

In fact, the Board found that the mark DUNDER MIFFLIN creates a different commercial impression than the one created by the mark MIFFLIN alone. To corroborate this, the Board relied on Applicant's evidence including a variety of records from Google search results. The evidence uniformly refer to the fictional paper supply company which is the setting for the television show ‘The Office.’"

The Examining Attorney contended that Applican'ts position was akin to argument argument the comparative fame of the two marks, which is generally not considered in ex parte appeals. The Board disagreed, stating that while the relative lack of fame of a cited mark might be irrelevant, evidence of how the public encounters a mark is directly relevant to the Board's assessment of the term’s connotation and commercial impression.

The Board also dismissed the Examining Attorney’s doubt that a general consumer would recognize the reference to "The Office." Given that the show centered on a paper company and was widely available via network television and streaming, the Board found it highly likely that consumers of paper labels, tags, and gift wrap would recognize the DUNDER MIFFLIN reference.

In conclusion, the Board concluded that the fanciful prefatory term "DUNDER" altered the overall commercial impression enough to outweigh the similarities in sound and appearance caused by the shared word "MIFFLIN."

Board’s Decision

The TTAB reversed the refusal to register the mark DUNDER MIFFLIN. While the Board acknowledged that the second DuPont factor weighed in favor of a likelihood of confusion due to the inherent and complementary relationship between the party and gift-wrap supplies, this was ultimately outweighed by the first DuPont factor. The Board determined that the marks MIFFLIN and DUNDER MIFFLIN create significantly different commercial impressions. The inclusion of the fanciful and dominant term "DUNDER" in the first position, combined with the strong cultural connotation of "The Office," ensured that the marks were not similar in the minds of the purchasing public. Therefore, the Board concluded there was no likelihood of confusion.

I’ll admit, I wasn’t an avid follower of The Office during its original run, but every now and then I fall down a YouTube rabbit hole binge-watching old clips. Reading this case naturally brought back those hilarious vignettes.

Turning to the legal gymnastics, I love it when the Board dismantles an Examining Attorney’s position. Here, the EA relied on a predictable formula: if the shared word isn’t the first word, find a tactic to explain why the first word doesn’t matter. The EA essentially asked the Board to ignore a completely fanciful, prominent first word ("DUNDER") by arguing that consumers would just "shorten" the mark to "MIFFLIN" in casual conversation. They even speculated that "DUNDER" would merely evoke a "dunderhead." Talk about a stretch to make a rejection stick. It was

The Board didn't buy it, refusing to ignore the prefatory term and accepting DUNDER MIFFLIN exactly as it exists in the real/tv world.

What I find most satisfying is how the Board respected the pop-cultural reality of consumer perception. Seeing the specific evidence accepted here, relying on Google search results, streaming data, and marketplace listings to establish commercial impression, gives me great inspiration for evidentiary strategies to tuck away for my own practice.

It also leaves me with a fun piece of trademark homework for us: what other fictional brands from hit shows have been registered? Please drop them in the comments!