TTAB Test: Is BON BON & Design Confusable With BON O BON for Candy?

Arcor S.A.I.C. opposed an application to register the mark BON BON in the design form shown below, for "Confectionery made of sugar, namely, candy, sweets, caramels" [BON BON disclaimed] in view of its registered mark BON O BON in standard character form, for "Chocolates, pastries filled with sweet fillings, alfojores, and wafers." Applicant "ROT FRONT" argued that consumers will distinguish the marks due to the "extreme weakness of the term 'BON BON.'" How do you think this came out? Arcor S.A.I.C. v. "ROT FRONT" Open-Type Joint Stock Co., Opposition No. 91222153 (August 15, 2017) [not precedential]. (Opinion by Judge Peter W. Cataldo).

After the Board denied cross-motions for summary judgment, the parties agreed to proceed under the ACR regime, streamlining procedures and stipulating to certain facts: that the goods are closely related and travel through similar channels of trade. Applicant introduced dictionary definitions of "bon bon" as candy, third-party registrations for candy with BON BON disclaimed, and screenshots of various websites advertising candies identified as "bonbons" or "bon bons." Opposer submitted third-party registrations and website pages showing the use of purple backgrounds in packaging and advertisements for candy.

The Board had no doubt that "bonbon" or "bon bon" is, at best, highly descriptive of the involved goods, if not generic. Thus the wording "BON BON" in applicant's mark has little, if any, source-identifying significance. The evidence showed that the highly descriptive term BON BON, combined with a purple background, is "quite weak."

Opposer's mark BON O BON has no recognized meaning, other than a suggestion of "good." Applicant pointed to ten registrations and numerous third-party uses of BON BON in connection with candies. In particular BON BON BON for chocolates is quite similar to opposer's mark. Accordingly, the Board found, BON O BON is entitled to "a narrower scope of protection than would be accorded an arbitrary mark."

As to the marks, the Board found that, because BON BON is at least highly descriptive of the goods, consumers are likely to look to the stylized font and the purple background as the distinguishing features of applicant's mark.

Since opposer's standard character mark could be displayed in a fond identical to that of applicant's mark, the Board considered the marks to be similar in appearance. The meaning of applicant's mark is a chocolate-covered candy, while BOB O BON has no known meaning, but it suggests that the goods are "good." Thus the marks differ in connotation.

"[W]hile there are similarities between the marks, differences in appearance and connotation leads the marks to convey overall commercial impressions that are more dissimilar than similar." Therefore the Board found that confusion is not likely between the involved marks, and it dismissed the opposition.

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TTABlog comment: What do you think? Should Arcor have opposed on the ground of mere descriptiveness?

Text Copyright John L. Welch 2017.