K&D Interactive, Inc.

Trademark Trial and Appeal BoardOct 14, 2016

No. 86718874 (T.T.A.B. Oct. 14, 2016)

This Opinion is not a Precedent of the TTAB Mailed: October 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re K&D Interactive, Inc. _____ Serial No. 86718874 _____ K&D Interactive, Inc., appearing pro se.1 Erin M. Falk, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Wellington, Kuczma, and Heasley, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: K&D Interactive, Inc. (“Applicant”) has appealed the Trademark Examining Attorney’s refusal to register the standard character mark AMIGAME for “providing a web-based system and on-line portal for customers to participate in on- 1 Makis Tracend, Applicant’s president, has represented Applicant throughout the prosecution of the application, including filing its appeal brief. Serial No. 86718874 - 2 - line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes” services in International Class 41.2 The Trademark Examining Attorney refused registration of the mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), finding a likelihood of confusion between Applicant’s mark and the following registered marks: (Reg. No. 4246387); AMI ENTERTAINMENT (Reg. No. 4258058); and AMI (Reg. No. 4258059).3 The three registrations are owned by the same entity and each covers the following goods and services: “digital entertainment devices comprising hardware and computer software for receiving and playing entertainment content in the form of downloadable prerecorded music, videos and computer games; downloadable musical sound recordings provided to businesses for use in commercial environments; downloadable computer games,” in International Class 9; and “entertainment services, namely, providing entertainment content to businesses in the form of non-downloadable prerecorded music for use in commercial environments and providing entertainment content in the form of computer games to users of communications networks, digital jukeboxes, or electronic communications hardware; providing information in the fields of entertainment, music, arts, and cultural and civic events via communications networks,” in International Class 41. When the Examining Attorney made the refusal final, Applicant requested reconsideration and simultaneously appealed to this Board. The Examining Attorney 2 Application Serial No. 86718874 was filed on August 7, 2015, under Section 1(a) of the Trademark Act, based on an allegation of first use anywhere on March 14, 2010 and in commerce on October 20, 2012. 3 The first listed registration issued on November 20, 2012, and the latter two issued on December 11, 2012. Serial No. 86718874 - 3 - denied the request for reconsideration and this appeal proceeded. Applicant and the Examining Attorney have filed their briefs. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. The similarity or dissimilarity and nature of the goods and services, the channels of trade, and the class of customers. We begin our analysis with the second and third du Pont factors, involving the similarity of the services, the channels of trade, and the class of customers. When determining the relationship between the services and the goods, “[i]t is well settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods [and services] as they are identified in the involved application and cited registration, rather than on what any evidence may show as to the actual nature of the goods [and services], their channels of trade and/or classes of purchasers.” In re Total Quality Group Inc., 51 Serial No. 86718874 - 4 - USPQ2d 1474, 1476 (TTAB 1999). See also Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317,110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014). We cannot emphasize enough the aforementioned legal concept and its relevance to this proceeding. Applicant repeatedly makes the argument in its brief that its services are significantly different from the goods and services of Registrant. Applicant asserts that its “business model is unique and it is clear from supplied evidence that it operates in a very custom and independent fashion” and chastises the Examining Attorney for failing to take this into consideration or “include[] evidence of the Registr[ant’s] actual business or elaborate on scenarios how a member of the consumer audience will be deceived or confused by the Applicant’s products.”4 While in certain situations extrinsic evidence of use of either an applicant’s or registrant’s mark may be useful, we find no such need here, since the nature of Applicant’s services, as identified in the application, as well as the nature of Registrant’s goods and services, as identified in the registrations, are clear. Cf. In re Trackmobile Inc., 15 USPQ2d 1152, 1153 (TTAB 1990) (when the nature of the goods is unclear, e.g., “mobile railcar movers” versus “light railway motor tractors,” extrinsic evidence may be used to ascertain what specific terms mean in an industry and whether one is encompassed by the other). More importantly, we point out that the Board cannot consider evidence of an applicant's or registrant's actual use to narrow the scope of the identified services or goods, their usual channels of trade, or their prospective purchasers, as Applicant urges us to do here. Id. (“It is clear that in 4 7 TTABVUE 10. Serial No. 86718874 - 5 - determining the issue of likelihood of confusion in ex parte cases, this Board must compare applicant’s goods as set forth in its application with the goods as set forth in the cited registration.”). In this case, the services of Applicant and Registrant are described in a very similar or overlapping manner. In particular, Applicant’s “providing a web-based system and on-line portal for customers to participate in on-line gaming” service is clearly related to Registrant’s “providing entertainment content in the form of computer games to users of communications networks, digital jukeboxes, or electronic communications hardware” service. Registrant’s use of the term “communications networks” includes the Internet and thus, as described and on their face, Applicant’s and Registrant’s services essentially enable consumers to play computer games online. Although the services may in actuality differ, their descriptions overlap. With respect to Applicant’s services vis-à-vis Registrant’s goods, the Examining Attorney submitted evidence showing there is a relationship, particularly between Registrant’s “hardware and computer software for receiving and playing entertainment content in the form of … computer games” and Applicant’s service of “providing a web-based system and on-line portal for customers to participate in on- line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes.” The Examining Attorney submitted internet printouts demonstrating third parties using the same mark, e.g., Xbox and Playstation, on computer game hardware and software as well as in connection with Serial No. 86718874 - 6 - playing games online and connecting with other game players.5 Applicant attempts to rebut this evidence by asserting that “Registrant is NOT like Playstation or Xbox.”6 However, the unfortunate fact for Applicant is that Registrant’s identification of goods encompasses products like the Playstation- and Xbox-branded goods exhibited in the internet evidence. Applicant also argues that the trade channels are different because Registrant “creates entertainment machines distributed in bars/clubs while [Applicant’s trade channel] is an online destination, visited from a computer browser.”7 However, we point out again that we cannot rely on how the marks are actually being used, but must consider the full spectrum of possible services encompassed by the recitations of services in the involved application and cited registrations. To the extent that the services described in the application and the cited registrations are overlapping, we must presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods [and services] are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); American Lebanese Syrian 5 See Office Action issued January 27, 2016, pp. 8-50. 6 10 TTABVUE 2. 7 7 TTABVUE 11. Serial No. 86718874 - 7 - Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, the du Pont factor involving the similarity of the goods and services favors a finding of a likelihood of confusion. With respect to Applicant’s and Registrant’s services, the factor involving their channels of trade also favors a finding of a likelihood of confusion. B. The similarity or dissimilarity of the marks. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567; see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In a particular case, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”)). Of the three registered marks, we focus on the standard-character, registered mark, AMI (Reg. No. 4258059), for purposes of comparison to Applicant’s mark. In Serial No. 86718874 - 8 - comparison to the other two registered marks, it bears the strongest resemblance to Applicant’s mark given it lacks stylization or any additional term. Upon comparing Registrant’s AMI mark with Applicant’s AMIGAME mark, we initially note that Applicant has essentially taken Registrant’s mark and added the term “Game.” Viewing Applicant’s mark in the context of services involving online gaming and game tournaments, consumers will immediately recognize and understand the term “game” as used in the mark and, as the Examining Attorney pointed out, this term has little source-identifying value in light of its descriptive nature. Applicant complains that during the prosecution of the application, the Examining Attorney acknowledged that it is improper to dissect a mark, but “proceeded to do exactly that, in every case, bringing forward a personal impression based solely on the occurrence that AMIGAME starts with AMI.”8 While Applicant is correct that the similarity or dissimilarity of the marks must be based on the marks in their entireties, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We have long held that it is rational that consumers may be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the dominant source- indicating feature of the mark. See, In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming TTAB’s finding that “DELTA,” not the 8 10 TTABVUE 2. Serial No. 86718874 - 9 - disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). That is the situation here. The GAME portion of the mark does very little to distinguish the mark. Rather, consumers are likely to focus on the AMI element of Applicant’s mark. It not only appears first but it also has more source-identifying value, given it has no demonstrated meaning in connection with online gaming services. The commercial impression of the Applicant’s mark, and certainly Registrant’s mark, is heavily influenced by AMI. Applicant also argues that the letters “A,M,and I” will be pronounced differently in the two marks. Specifically, Applicant asserts that is mark is “the singular genitive form of the root words ‘am’, ‘I’ and ‘game,’ producing a new word with its own pronunciation.”9 While it is possible that a consumer may decipher that phrase in Applicant’s mark, we remain unconvinced that the letters AMI, in Applicant’s or Registrant’s mark, will pronounced or understood in any one specific manner. “[T]here is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” In re Viterra, 101 USPQ2d at 1912. In other words, it is equally likely that consumers may pronounce the letters individually or as a single term in either mark; in either case, the two marks would sound substantially similar. Applicant downplays the significance of its mark incorporating the registered AMI mark because “there’s an increasing number of trademarks that have ‘AMI’ as a part 9 7 TTABVUE 13. Serial No. 86718874 - 10 - of their wording” and “AMI lacks exclusivity as it has multiple owners.”10 In support, Applicant submitted copies of third-party registrations for marks consisting of or containing the term AMI; however, none involved online gaming or computer games.11 Indeed, there is no evidence showing AMI (or an AMI-formative) mark being used in connection the involved goods or services. Thus, Applicant has failed to demonstrate that there are so many trademarks with the AMI element being used in connection with these goods and services that consumers are conditioned to distinguish the marks based on slight differences. In sum, we find the marks are overall very similar in sound, appearance, and commercial impression. Accordingly, this factor also weighs in favor of finding a likelihood of confusion. D. Balancing the factors. Because the marks are similar, Applicant’s services are closely related, if not overlapping, with Registrant’s goods and services, and, where overlapping, are presumed to move in the same channels of trade and to the same customers, we find that Applicant's mark AMIGAME is likely to cause confusion with the registered mark AMI. 10 7 TTABVUE 13. 11 For example, Applicant submitted copies of the following registered marks: AMI (stylized with a design), Reg. no. 4524729, for “digital to analog converters”; and AMI, Reg. no. 4817391, for “business process productivity software.” We further note that Applicant submitted copies of applications; these have no evidentiary value other than to show that the applications were filed. Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1494 (TTAB 2007). Serial No. 86718874 - 11 - Decision: The refusal to register Applicant’s mark is affirmed.