Kabushiki Kaisha Square Enix (also trading as Square Enix Co., Ltd.)

Trademark Trial and Appeal Board

Aug 3, 2012

No. 77711320 (T.T.A.B. Aug. 3, 2012)

Mailed:
August 3, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kabushiki Kaisha Square Enix
(also trading as Square Enix Co., Ltd.)
________

Serial No. 77711320
_______

Keith E. Danish of Hiscock & Barclay, LLP for Kabushiki
Kaisha Square Enix (also trading as Square Enix Co., Ltd.)

William Breckenfeld, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Holtzman and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Kabushiki Kaisha Square Enix (also trading as Square
Enix Co., Ltd.) (“applicant”) filed an application to
register the standard character mark VANGUARD STORM on the
Principal Register for goods amended to “computer game
software; video game software” in International Class 9.
Applicant claims an intent to use its mark in commerce
pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77711320
2
The assigned examining attorney refused registration
of applicant’s mark under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant's
mark for applicant’s identified goods so resembles the
following registered marks, as to be likely to cause
confusion or mistake or to deceive:
VANGUARD (Registration No. 3278058, standard
character form mark) for “Software and electronic
games, namely, software games recorded on CD-ROMs
and DVDs for computers; software games that are
downloadable from a remote computer site;
interactive video games of virtual reality
comprised of computer software; user
documentation sold as a unit therewith” in
International Class 9;

VANGUARD (Registration No. 3427986, standard
character form mark) for “software games recorded
on CD-ROMs and DVDs for console and portable
gaming systems; software games for mobile phones,
personal digital assistants, and handheld
computers recorded on computer media;
downloadable software games for mobile phones,
personal digital assistants, and handheld
computers; game machines sold as a unit for
playing software games recorded on CD-ROMs and
DVDs for use with televisions and computers; pre-
recorded CD-ROMs and DVDs featuring action and
adventure productions; downloadable electronic
publications in the nature of newsletters and
magazines featuring action and adventure games”
in International Class 9; and

(Registration No. 3439216) for “Software and
electronic games, namely, software games recorded
on CD-ROMs and DVDs for computers; software games
that are downloadable from a remote computer
Ser. No. 77711320
3
site; virtual reality game software, namely,
interactive video games of virtual reality
comprised of computer software; user
documentation sold as a unit therewith” in
International Class 9.

Each registration issued to the same registrant.
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
We concentrate our analysis on whether there is a
likelihood of confusion between applicant’s mark and
Ser. No. 77711320
4
registrant’s mark VANGUARD. If we affirm the refusal of
registration with respect to registrant’s VANGUARD mark,
then registration to applicant will be refused. However,
if there is no likelihood of confusion between applicant’s
mark and registrant’s mark VANGUARD, confusion will not be
likely between applicant’s mark and registrant’s VANGUARD
SAGA OF HEROES mark in view of the additional wording SAGA
OF HEROES. See Colony Foods, Inc. v. Sagemark, Ltd., 222
USPQ 185, 187 (Fed. Cir. 1984) ("[T]he board's resolution
of the claim of likelihood of confusion on the basis of
[plaintiff's] most similar mark, HOBO JOE'S, was
appropriate."); In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010) (“Because the design element in the
cited MAX and design mark arguably contains an additional
point of difference with applicant's mark, we confine our
analysis to the issue of likelihood of confusion between
applicant's mark and the cited registration for MAX in
typed drawing form.”)
Goods and Trade Channels
We first consider the du Pont factors regarding the
similarity of the goods and their trade channels. Both
applicant and registrant identify software for computer
games in their identifications of goods, and, indeed,
applicant has conceded that the goods overlap. Brief at 3
Ser. No. 77711320
5
(“Applicant concedes that its goods and the Registrant’s
good … are ‘overlapping’ ….”). Because the goods overlap,
we must presume that the trade channels and purchasers for
the goods also overlap. See In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers.”).
Strength and Scope of Protection of Registrant’s Mark
Part of our consideration of whether the marks are
similar is the strength of registrant’s VANGUARD mark.
Applicant has made a number of arguments regarding the
strength of and scope of protection to be accorded to
VANGUARD, which we address below.
According to applicant, registrant’s mark is the title
of a computer game, and the Office has previously
recognized that computer game titles are not strong
trademarks:
[T]he U.S. Trademark Office, in recognizing the
inherent weakness of game titles, has accepted
the coexistence of many titles which feature
similar words. … This may very well be because a
computer game is so similar to a ‘single creative
work’ in that it combines music, a storyline, and
dramatic animated action, all of which may be
present in films and cartoons, which are treated
as “creative works”. Since the content of the
work does change with each “performance” (as a
result of the interactive inputs by the game-
Ser. No. 77711320
6
player), the computer game program does not fall
strictly within the definition of a “single work”
… but there is much continuity in each
performance of the game. Also, the high level of
creativity that often goes into a computer game
may even exceed that found in many a “grade B”
movie or a “potboiler” novel, and with
traditional books migrating to e-readers and
computer screens, on which computer games are
also played, there is a convergence of the
traditional “creative work” and the computer game
(the latter having progressed far beyond the
primitive “Pong” and “Space Invaders” genres).
The computer game program is at least a “hybrid”
of a creative work and an item of merchandise,
but is much closer in nature to a creative work
than to a toy, a bar of soap or a can of peas.
Accordingly, while the U.S. Trademark Office has
not excluded protection for computer game titles
by treating them like book, movie or song titles,
it appears to have limited their scope of
protection, being mindful of the similarity to
“literary” titles.

We disagree that the Office has a policy that treats
marks that are used as computer game titles as inherently
weak. Applicant has not pointed to any authority that
supports the argument that the Office limits protection to
marks depending on the particular goods or services in
connection with which they are used. This is not to say
that certain marks may be given a lesser scope of
protection than other marks, but that determination is made
in the context of whether marks are strong or weak, e.g.,
the marks are arbitrary terms, or suggestive, or contain a
particular element that is descriptive or so highly
suggestive that the inclusion of that element in several
Ser. No. 77711320
7
marks is not a sufficient basis on which to find likelihood
of confusion.
In its argument, applicant analogizes the title of a
computer and video game to the title of a single creative
work. We are not persuaded by applicant’s analogy. A
title of a single creative work serves to identify the
creative work but does not function to identify the source
of that work, so that a title of a work cannot be
registered as a trademark. See In re Cooper, 254 F.2d 611,
117 USPQ 396 (CCPA 1958). In contrast to the treatment of
titles of single creative works, titles of computer games –
even titles of single computer games - function as
trademarks and are registrable. Registrant obtained a
trademark registration for what applicant asserts is the
title of a computer game, and applicant itself is
attempting to register a computer game title as a trademark
for computer games. In addition, Section 1202.08(b) of the
Trademark Manual of Examining Procedure (8th ed. 2011)
specifically states that computer games are not treated as
single creative works. Clearly, it is Office policy that
titles of computer games may be registered as trademarks.
In connection with its assertion that the cited
registration is entitled to a limited scope of protection,
applicant relies on a number of registrations owned by
Ser. No. 77711320
8
different entities for marks which share a common term, and
maintains that they are evidence of an Office policy
regarding computer and video game software marks. For
example, the record includes the following sets of
registrations for computer software and/or video games
owned by different entities:
BLADES OF STEEL (Registration No. 2924256) and
EGGS OF STEEL (Registration No. 2255851);

LORD OF DESTRUCTION (Registration No. 2640728),
PLAYGROUND OF DESTRUCTION (Registration No.
3140206) and RESHEF OF DESTRUCTION (Registration
No. 2921750);

WAY OF THE SAMURAI (Registration No. 2846660) and
SOUL OF THE SAMURAI (Registration No. 3350058);
and

THE DAWN OF DESTINY (Registration No. 2931994),
THORN OF DESTINY (Registration No. 3096685),
SPEAR OF DESTINY (Registration No. 31134811),
SHADOWS OF DESTINY (Registration No. 2592686) and
TALES OF DESTINY (Registration No. 2249989).

We cannot ascertain, from the registrations
themselves, why the registrations which form the sets were
allowed by the respective examining attorneys. The
registrations may have registered for a number of reasons.
For example, the applicants may have demonstrated that the
common elements in the sets are weak by submitting evidence
of multiple uses of the common element or of third-party
registrations for related goods that included the common
element. Alternatively, the applicants may have obtained
Ser. No. 77711320
9
consent agreements from the registrant(s). In any event,
the co-existence of these other marks on the register has
no bearing on the question of whether the marks and goods
in this case are likely to cause confusion, and the Board
is not bound by the decisions of examining attorneys in
allowing those marks for registration. It has been said
many times that each case must be decided on its own facts.
See In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (“Even if prior registrations had
some characteristics similar to [applicant's] application,
the PTO's allowance of such prior registrations does not
bind the Board or this court.”).
We must determine the scope of protection to be
accorded registrant’s registration based on the record
before us. Applicant introduced into the record the
following definitions of VANGUARD from dictionary.com
(accessed December 10, 2009):
Vanguard: (noun) the foremost division or the
front part of an army; advance guard.1

Vanguard: (noun) those occupying a foremost
position.2

1 From the Random House Dictionary, Random House, Inc., (2009).
2 From The American Heritage Dictionary of the English Language,
Houghton Mifflin Co, (4TH ed. 2008)
Ser. No. 77711320
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According to applicant, the goods are “martial” in
nature, and the “inclusion of the word ‘vanguard’ in the
title is laudatory because it suggests something that is
military in nature, i.e., the foremost division or the
front part of an army, the advance guard, as well as a
leading or first-rank product.” The Federal Circuit has
held that “[l]audatory marks that describe the alleged
merit of the goods are descriptive because they simply
describe the characteristics or quality of the goods in a
condensed form.” Nett Designs, 57 USPQ2d at 1566 (THE
ULTIMATE BIKE RACK is a laudatory descriptive phrase). See
also Burmel Handkerchief Corp. v. Cluett, Peabody & Co.,
Inc., 127 F.2d 318, 53 USPQ 369, 372 (CCPA 1942)
(HANDKERCHIEFS OF THE YEAR is a laudatory descriptive
phrase). We assume that applicant’s argument that the
registered mark is “laudatory” is actually an argument that
the mark is “laudatorily suggestive,” since to assert that
the mark is laudatorily descriptive would be an
impermissible collateral attack on the cited registration.
In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d
1795 (TTAB 1992). Because “vanguard” is defined as “the
foremost division or the front part of an army; advance
guard,” and because the identification of goods encompasses
Ser. No. 77711320
11
computer and video games with a “martial” theme, we find
the mark to be suggestive of a feature of registrant’s
goods to the extent that the goods involve battles
concerning “martial” vanguards. For computer and video
game software that does not have a “martial” theme,
“vanguard” has the connotation of “occupying a foremost
position” which suggests a laudatory characteristic of the
goods. We therefore find registrant’s mark to be
suggestive in both the military and non-military contexts.3
Applicant also argues that there is third-party use of
VANGUARD marks, relying on pages from wikepedia.org stating
that “‘vanguard’ may also refer to,” and then listing,
inter alia, a number of games and toys containing the term
“vanguard.” Other than for applicant’s and registrant’s
games, there is no evidence in the record that these names
of games are in use. These wikipedia.org webpages
therefore have no probative value.

3 Applicant has made of record two registrations, owned by a
single entity, for VANGUARD and VANGUARD RECORDS and design for
pre-recorded compact discs featuring entertainment (Reg. No.
1529455) and pre-recorded discs, audio cassettes and records
bearing music (Reg. No. 2520986). While third-party
registrations may be used in the same manner as dictionaries, to
show that a term has significance in a particular industry, these
two registrations for goods different from those of the
registrant are insufficient to show the significance of VANGUARD
for computer games. Nonetheless, as we have discussed above, the
dictionary definitions of VANGUARD show that VANGUARD has a
suggestive significance for registrant’s goods.
Ser. No. 77711320
12
Thus, in light of the suggestive nature of
registrant’s mark, it is not entitled to the broad scope of
protection that would be accorded an arbitrary mark.
First Amendment
Applicant also argues that the First Amendment must be
considered in determining the strength of registrant’s
mark, stating, “First Amendment values must also be
considered in evaluating the scope of protection for
computer game titles as well as for traditional categories
of ‘creative works,’” citing Rogers v. Grimaldi, 875 F.2d
994, 10 USPQ2d 1825 (2d Cir. 1989). Brief at 9. In
particular, applicant points to the following passage in
Rogers:
Though First Amendment concerns do not
insulate titles of artistic works from all Lanham
Act claims, such concerns must nonetheless inform
our consideration of the scope of the Act as
applied to claims involving such titles. Titles,
like the artistic works they identify, are of a
hybrid nature, combining artistic expression and
commercial promotion. The title of a movie may
be both an integral element of the film-maker's
expression as well as a significant means of
marketing the film to the public. The artistic
and commercial elements of titles are
inextricably intertwined. Film-makers and
authors frequently rely on word-play, ambiguity,
irony, and allusion in titling their works.
Furthermore, their interest in freedom of
artistic expression is shared by their audience.
The subtleties of a title can enrich a reader's
or a viewer's understanding of a work. Consumers
of artistic works thus have a dual interest:
They have an interest in not being misled and
Ser. No. 77711320
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they also have an interest in enjoying the
results of the author's freedom of expression.
For all these reasons, the expressive element of
titles requires more protection than the labeling
of ordinary commercial products.

Because overextension of Lanham Act
restrictions in the area of titles might intrude
on First Amendment values, we must construe the
Act narrowly to avoid such a conflict.

Rogers, 10 USPQ2d at 1827-28.

Rogers involved claims brought in connection with the
use of a film title, and had nothing to do with the
registration of a mark, or the scope of protection to be
accorded a registered mark. In this case, we must decide
only whether applicant has a right to register its mark.
As the Board stated in In re Heeb Media LLC, 89 USPQ2d
1071, 1077 (TTAB 2008):
With regard to applicant's argument based on the
First Amendment's proscription against
restrictions on expression, this decision only
pertains to applicant's right to register the
term and “it is clear that the PTO's refusal to
register [applicant's] mark does not affect [its]
right to use it. No conduct is proscribed, and
no tangible form of expression is suppressed.
Consequently, [applicant's] First Amendment
rights would not be abridged by the refusal to
register [its] mark.” In re McGinley, 211 USPQ
at 672, citing Holiday Inn v. Holiday Inn, Inc.,
534 F.2d 312, 189 USPQ 630, 635 n.6 (CCPA 1976).
See also Mavety, 31 USPQ2d at 1928.

Because we are not concerned with applicant’s right to
use the mark, but only registration thereof, applicant’s
First Amendment argument is not persuasive.
Ser. No. 77711320
14
The Marks
We turn then to a consideration of the marks, keeping
in mind that when marks would appear on overlapping goods,
as we have here, the degree of similarity between the marks
necessary to support a finding of likelihood of confusion
declines. See Century 21 Real Estate v. Century Life, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692.
Applicant argues that the presence of STORM in
applicant’s mark creates a different visual and aural
impression when the marks are compared in their entireties.
With regard to the meaning of each mark, as mentioned
earlier in this opinion, the record includes dictionary
definitions of “vanguard.” Applicant also introduced into
the record a definition of “storm” from dictionary.com
(accessed December 10, 2009); “a violent military assault
on a fortified place, strong position, or the like.”
Applicant acknowledges that the word “vanguard” has
the same meaning in both marks, brief at 5, and appears to
concede that applicant’s mark has a similar military
meaning to that of the cited mark:
Ser. No. 77711320
15
The Applicant’s mark contains two words
(“VANGUARD” AND “STORM”) each having well-known
definition in the English language. A “vanguard”
is the front part of an army, and advance guard.
The word “storm,” although having several
meanings, in the instant context means “to
deliver a violent attack or fire, as with
artillery.” When viewed as a whole, the
Applicant’s Mark conveys the overall connotation
of the forefront of an army violently attacking
enemy forces. This is evident in the description
of the underlying game, where “[p]layers must
strategically position units within various
formations in order to prevent encroaching
monster hordes from breaking through the front
lines and stealing the army’s crystals”. The
word “STORM” must be taken into account when
comparing Applicant’s mark with Registrant’s
marks. (Citations omitted).

Brief at 6 – 7.
We find that applicant’s mark is similar in sound and
appearance to registrant’s mark VANGUARD because of the
shared term VANGUARD. As the first word of applicant’s
mark, it is likely to draw greater attention than the word
STORM.
The marks are also similar in meaning. We agree with
applicant that consumers will likely perceive applicant’s
VANGUARD STORM mark, as used in the context of combat-
themed computer and video game software (which are
encompassed within applicant’s identification of goods),4 as
suggesting that the goods involve a game where the

4 We do not consider the goods to be limited to combat-themed
games because applicant’s webpage refers to such games; we
Ser. No. 77711320
16
forefront of an army is being attacked by, or attacking, an
enemy force.5 Registrant’s mark VANGUARD, also used in the
context of combat-themed computer or video games (which are
encompassed within registrant’s identification of goods),
has the same meaning as VANGUARD in applicant’s mark,
namely, “the foremost division or the front part of an
army; advance guard.” Applicant does not disagree. The
additional word STORM in applicant’s mark does not change
the connotation of VANGUARD in applicant’s mark, and in
fact can be viewed as imparting a particular activity that
faces a “vanguard,” namely, an assault by a military force.
In the context of non-combat computer and video game
software, such as educational game software, VANGUARD has a
different meaning; consumers will apply the “those
occupying a foremost position” definition of “vanguard” to
each mark. The addition of “storm” does not alter this
definition. Overall, the marks also convey similar
commercial impressions.
Earlier in this decision, we stated that part of our
consideration of whether the marks are similar is the
strength of registrant’s VANGUARD mark. We determined that

consider the identification of goods to include combat-themed
games.
5 Applicant’s webpage in the record characterizes the game as
“prevent[ing] encroaching monster hordes from breaking through
the front lines and stealing the army’s crystals.”
Ser. No. 77711320
17
the mark is suggestive, and should not be accorded the
broad scope of protection that would be given to a
stronger, more arbitrary mark. However, registrant’s and
applicant’s marks are suggestive in the same way, so that
they have the same connotation. Further, the marks are so
similar that, even though the registered mark is entitled
to a lesser scope of protection than an arbitrary mark,
that protection still extends to prevent the registration
of such a similar mark for identical goods. Even weak
marks are entitled to protection. King Foods, Inc. v. Town
& Country Food Co., Inc., 159 USPQ 44 (TTAB 1968).
In view of the foregoing, we find applicant’s mark to
be similar to registrant’s mark in sound, appearance,
meaning and commercial impression.
Conditions Under Which and Buyers to Whom Sales Are Made
According to applicant, “computer and video game
software purchasers are careful, sophisticated consumers
because they must consider many factors during the
purchasing process, and they come to the ‘store’ with a
history of experience with games and (usually) with
definite preferences as to games and their developers.”
Applicant relies on an article in the record from
shopwiki.com entitled “Video Game Buying Guide” which,
inter alia, provides a “basic breakdown of what
Ser. No. 77711320
18
classifications of games there are, plus a brief
explanation of what they are like ….” The article includes
headings such as “Adventure,” “Planning/Strategy,”
“Fighting,” and Driving/Racing.” The “Sports” category
advises that such games are “Suitable for all ages since
they don’t feature any violence and often allow gamers to
play alongside their favorite sport stars.” The “Fighting”
category advises that “Some may find these games too
violent and are probably for an older audience … Discretion
should be used when buying for children.” Applicant also
points out that consumers must consider the compatibility
of games for various platforms, such as Sony PlayStation
and Xbox 360.
This information does not establish the level of
sophistication and purchaser care of consumers of computer
and video game software. At best, it establishes that
adults take care in considering the content of the game
when shopping for children when “fighting” is a theme of
the video game. However, even if we accept that consumers
take care in making their computer and video game software
purchases, and as a result they will note the additional
word STORM in applicant’s mark, this is not likely to avoid
confusion. Because of the similarity of the marks as a
whole, consumers are likely to believe that the marks
Ser. No. 77711320
19
identify computer games emanating from a single source. In
short, we do not treat the du Pont factor regarding
conditions under which and buyers to whom sales are made as
favoring applicant’s position.
Conclusion
In this situation, where applicant’s and registrant’s
goods, trade channels and purchasers are overlapping, and
the marks are similar, even if the scope of protection of
registrant’s mark is restricted, we find that applicant’s
mark for its goods is likely to cause confusion with the
cited registrations for VANGUARD.
Decision: The refusal to register applicant’s mark
under Trademark Act §2(d) is affirmed.