Hasbro, Inc.v.Andre Keith Williams

Trademark Trial and Appeal Board

Oct 27, 1999

No. 91106373 (T.T.A.B. Oct. 27, 1999)

Hearing: Paper No. 28
April 27, 1999 HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Hasbro, Inc.
v.
Andre Keith Williams
_____
Opposition No. 106,373
to application Serial No. 75/142,636
filed on July 31, 1996
_____
Michael J. Bevilacqua and Donald R. Steinberg
of Hale and Dorr LLP for Hasbro, Inc.
Douglas J. McEvoy of Gifford, Krass, Groh, Sprinkle,
Patmore, Anderson & Citkowski, P.C. for
Andre Keith Williams.
______
Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Andre Keith Williams filed an application to register
the mark CLUCHÉ for “equipment for use in playing a board
game.”1

1 Serial No. 75/142,636, filed July 31, 1996, based on an
assertion of an intent to use the mark in commerce.
Opposition No. 106,373
2
Hasbro, Inc. filed an opposition to registration of the
mark under Section 2(d) of the Trademark Act. Opposer
alleges use, through its predecessors in interest, of the
mark CLUE in connection with Class 28 goods since as early
as December 1948; ownership of registrations for the same;2
the acquisition of fame by the CLUE mark; licensing of the
mark for use on a variety of other goods, including a movie,
puzzles, and video and computer games; and the likelihood of
confusion if applicant uses its mark CLUCHÉ on the goods
specified in the opposed application.
Applicant, in his answer, denied the salient
allegations of the notice of opposition. As “affirmative
defenses,” applicant set forth several arguments with
respect to likelihood of confusion, contending that the lack
of any incidents of actual confusion despite applicant’s use
of its mark for almost a year, and distinctions in the
nature of the games to which the marks CLUE and CLUCHÉ are
applied, make confusion unlikely.
The Record
The record consists of the file of the involved
application; the trial testimony depositions, with exhibits,

2 The pleaded registrations are:
Reg. No. 526,059 for CLUE for a board game, issued June 6,
1950; Sections 8 & 15 affidavits accepted and acknowledged,
respectively; second renewal June 6, 1990; and Reg. No.
1,362,172 for CLUE for equipment sold as a unit for playing
a video game, issued September 24, 1985; Sections 8 & 15
affidavits accepted and acknowledged, respectively.
Opposition No. 106,373
3
taken by opposer of applicant, Andre Williams; Holly Riehl,
the Director of Global Marketing for opposer; and Philip
Orbanes, President of Winning Moves, Inc.; opposer’s notice
of reliance upon opposer’s first set of requests for
admissions and applicant’s responses thereto and upon
opposer’s Interrogatory Nos. 1, 5, 8, and 12 and applicant’s
responses thereto; the trial testimony depositions taken by
applicant of Michelle Littman and Nancy Renick, toy store
owners in Michigan, and of Matthew Kulaga and Dennis
Goldsmith, managers of Media Play outlets; and applicant’s
notice of reliance upon applicant’s first request for
admissions and opposer’s responses thereto and upon
opposer’s responses to applicant’s corrected first set of
interrogatories. Both parties filed briefs and participated
in the oral hearing.
Opposer has set forth a full recitation of the facts
in its brief and applicant has stated that he is
substantially in agreement with this recitation.
Accordingly, and because we find the recitation to be
consistent with the evidence of record, we adopt the same
for purposes of determining this case.
The Opposition
Priority is not an issue here, in view of opposer’s
introduction of status and title copies of several
registrations during the deposition of Holly Riehl, proving
Opposition No. 106,373
4
ownership of valid and subsisting registrations for the mark
CLUE and variations thereof.3 King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Thus, we turn to the issue of likelihood of confusion
and to the factors which are most relevant to the
circumstances at hand. See In re du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
A major factor in this case is the fame of opposer’s
CLUE mark. Opposer has clearly established by sales and
advertising figures, as well as proof of recognition of its
mark by 80% of U.S. households, the fame of its CLUE mark,
as used in connection with board games and related items.
Applicant has specifically stated that he does not contest
the fame of opposer’s mark. (Brief p. 3). Accordingly, we
are guided in our determination of likelihood of confusion
by the general principle enunciated by our chief reviewing

3 In addition to the two pleaded registrations, opposer
introduced status and title copies of the following:
Reg. No. 1,644,488 for CLUE and game board design for
board games, issued May 14, 1991, Section 2(f), Sections 8 &
15 affidavits accepted and acknowledged, respectively;
Reg. No. 1,853,187 for CLUE THE GREAT MUSEUM CAPER GAME for
board game, issued September 6, 1994;
Reg. No. 1,915,192 for CLUE for computer game software and
video game software; issued August 29, 1995;
Reg. No. 2,044,400 for CLUE for interactive mystery
storybooks, issued March 11, 1997;
Reg. No. 2,093,295 for CLUE for entertainment services in
the nature of live theater productions, issued September 2,
1997; and
Reg. No. 2,127,856 for CLUE FOR KIDS for jigsaw puzzles,
issued January 6, 1998.
Opposition No. 106,373
5
court in Kenner Parker Toys Inc. v. Rose Art Industries
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992),
cert. denied, 506 US 862 (1992), that the “Lanham Act’s
tolerance for similarity between competing marks varies
inversely with the fame of the prior mark.” See also
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506
US 1034 (1992).
First, we consider the degree of similarity of the
marks CLUE and CLUCHÉ. Applicant has testified that his
mark CLUCHÉ is intended to be a combination of the words
“clue” and “cliché” and to be pronounced as two syllables,
the first one being the same as the word “clue.” The
exhibits of record show the word CLUCHE being used with two
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as would lead to a pronunciation by purchasers in the manner
suggested by applicant. Moreover, the game is described as
“the game of clues and clichés” and involves the guessing of
clichés from oral or mimed clues given by teammates.
Opposer contends that the identical initial sound and
similar connotation of having a relationship to clues is
sufficient to lead to a likelihood of confusion between CLUE
and CLUCHÉ, particularly when consideration is given to the
fact that both marks are used on board games. Applicant

Opposition No. 106,373
6
insists that if the marks are considered in their
entireties, there are differences in appearance, sound and
meaning, and thus in overall commercial impression, which
distinguish the marks.
There obviously are differences in appearance and sound
between the marks CLUE and CLUCHÉ. When we turn to
connotation or overall commercial impression, however, these
distinctions fade. In applicant’s mark CLUCHÉ the emphasis
is on the prefix CLU (or “clue”), which is identical to
opposer’s famous mark. The connotation is the same, namely,
that this is a game involving clues. Furthermore, opposer
has introduced evidence that it has used variations of its
CLUE mark for different versions or formats of its basic
game in the past and that it has plans for expansion into
new themed editions of CLUE. Thus, it would be reasonable
for purchasers to view CLUCHÉ as a modification of opposer’s
basic mark CLUE for one more offshoot from the original
game. In addition, opposer has introduced testimony to the
effect that it is unaware of any other game presently on the
market having the word “clue” as part of its name. Thus,
purchasers would have even more reason to associate CLUCHÉ
with opposer.
In summary, we find that applicant’s mark CLUCHÉ
creates the overall commercial impression of being a variant
of opposer’s mark CLUE, and that the fame of the mark CLUE
Opposition No. 106,373
7
in the game industry clearly increases the likelihood for
this association being made by the purchasing public. See
Century 21 Real Estate Corp. v. Century Life of American,
supra.
We next consider the similarity or dissimilarity of the
goods upon which the marks are being used. As pointed out
by opposer, the goods which are relevant to our
determination of likelihood of confusion are the goods
identified in applicant’s application and in opposer’s
registrations and these goods are identical, namely, board
games. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
While applicant may argue that his board game is an adult
party game whereas opposer’s board game is directed to
younger players, and that his game is a guessing game and
opposer’s is a mystery solving game, such distinctions are
irrelevant. Neither opposer nor applicant is restricted by
the respective registration or application to any particular
format for the board game upon which the marks CLUCHÉ and
CLUE are used. Either party may change any aspect of its
game at any time; the present differences could be
eliminated.
Because of this identity of the goods, the channels of
trade and potential purchasers must be considered to be the
same. Furthermore, the evidence of record indicates that
Opposition No. 106,373
8
both applicant’s CLUCHÉ game and opposer’s CLUE game are
currently sold in specialty toy stores and department
stores, and that applicant plans to expand to the mass
merchandisers through which opposer’s game is sold. While
the evidence shows that applicant’s game may be shelved with
the adult games and opposer’s with the family or children’s
games, there is the distinct possibility that both games
will be found in the same alphabetical arrangement and thus
in extremely close proximity (as, for example, at Toys R Us
stores). Moreover, games are typically purchased quickly
and without prolonged contemplation, being priced in the $15
to $35 range. Although the evidence shows that purchase of
the CLUE game is likely to be based on a prior familiarity
with the game, such as a mother buying for her family the
game she played as a child, this does not eliminate the
potential for confusion with the CLUCHÉ game, whether from
haste of purchase or from being confused by the CLUCHÉ mark.
That opposer offers various forms of its basic game, as well
as related products such as puzzles and story books, or even
licensed products such as a movie and musical, under its
CLUE mark or variations thereof, only increases the
likelihood of confusion between CLUCHÉ and opposer’s famous
mark CLUE.
The factor upon which applicant places its strongest
reliance is the lack of evidence of any actual confusion,
Opposition No. 106,373
9
despite the fact that applicant has been actively using its
mark in the same channels of trade as opposer since November
1996. Applicant points not only to opposer’s admission that
it is unaware of any instances of actual confusion (Request
for Admission No. 6) and the testimony of opposer’s
witnesses to this effect, but also to the testimony taken by
applicant (in July 1998) of two toy store owners and two
managers as to the absence of any known confusion in their
particular stores in Michigan.
This latter evidence is of limited value. Only three
of the stores stocked both games, and only two stores had
carried the CLUCHÉ game for over a year. The highest number
of CLUCHÉ games sold at any of these stores was less than
100, the smallest less than 10. In one store guidance was
usually provided in the purchase of CLUCHÉ game, the game
“not [being] an easy sell.” [Littman deposition at 19].
The lack of any incidents of actual confusion in this
restricted exposure of purchasers to both marks can hardly
be deemed convincing evidence that the marks can coexist in
the general marketplace without a likelihood of confusion.
See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768
(TTAB 1992).
Applicant has presented no evidence with respect to any
other factor which might weigh in his favor. In view of the
wide latitude of protection which must be accorded opposer’s
Opposition No. 106,373
10
famous mark CLUE; the use by applicant of the mark CLUCHÉ on
goods identical to opposer’s; and the similarity of
commercial impressions created by the marks CLUE and CLUCHÉ,
we find the balance to fall in favor of opposer. There is a
strong likelihood of confusion as to source when applicant
uses his mark CLUCHÉ on board games.
Decision: The opposition is sustained and registration
is refused to applicant.
R. F. Cissel
B. A. Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board