Microsoft Corporation

Trademark Trial and Appeal Board

Sep 30, 2005

No. 78144053 (T.T.A.B. Sep. 30, 2005)

Mailed: September 30, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Microsoft Corporation
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Serial No. 78144053
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William O. Ferron, Jr. of Seed Intellectual Property Law Group
PLLC for Microsoft Corporation.

Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Meryl L. Hershkowitz, Managing Attorney).
_______

Before Chapman, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Microsoft Corporation, has filed an application
to register the mark BRUTE FORCE for goods ultimately identified
as "action figures in the nature of science fiction and military
characters, marketed in connection with computer and video games
and other media" in International Class 28.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Serial No. 78144053, filed July 15, 2002, based on an allegation of a
bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78144053
2
applicant's mark, when applied to applicant's goods, so resembles
the registered mark BRUTE FORCE for "toys, namely, toy cars,
model kits, die cast toy cars, and toy helmets" as to be likely
to cause confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was requested, but the request
was subsequently withdrawn by applicant.
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 likelihood of confusion issue,
including the similarities of the marks and the similarities of
the goods. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
We turn first to the marks. Applicant's mark BRUTE FORCE
and registrant's mark BRUTE FORCE are identical word marks
displayed in identical (standard character) form. Applicant,
however, argues that in relation to the respective goods the two
marks convey different commercial impressions.
In particular, applicant argues that registrant, who
applicant identifies as John Force, is a "funny car" race driver

2 Registration No. 2270312; issued August 17, 1999 to John Harold Force
and Laurie A. Force; Section 8 affidavit accepted, Section 15 affidavit
acknowledged. The examining attorney also initially referenced pending
application Serial No. 76032651 as a potential cite against the present
application. Applicant advised the examining attorney that applicant
was the owner, by assignment, of the application and, accordingly, the
reference was withdrawn. That application was abandoned on November
16, 2003.
Serial No. 78144053
3
who has won 12 national championships; that he is well known in
the race car community; and that BRUTE FORCE toy cars are actual
replicas of the funny cars Mr. Force raced in the 1970s which are
"apparently called 'Brute Force' to play off John Force's
surname." (Response filed May 22, 2003 at 2.) Applicant has
submitted pages from a third-party website (www.dancys.com)
which, according to applicant show various toy car replicas of
those race cars including the "BRUTE FORCE" models. Applicant
concludes that "in the context of the goods, as recited in the
registration" the consumers of registrant's goods "will
immediately make a connection between the toy car and helmet and
the famous racecar and its driver, both widely known to racing
fans by the 'Brute Force' nickname." (Req. for Recon. at 2.)
Applicant argues that, in contrast to the association evoked
by registrant's mark, applicant's action figures in the nature of
science fiction and military characters will be associated with
applicant's video games. Applicant points to its ownership of a
registered mark (Registration No. 2832923) for BRUTE FORCE for
video games which, as described by applicant, is "an action-
packed sci-fi, quad-based shooter game." Applicant concludes
that in view of the differences in the goods "the consumer will
come away with a completely different commercial impression" of
each mark. (Req. for Recon at 2.)

Serial No. 78144053
4
Applicant's arguments and evidence are not persuasive.
While John Force, who is only one of the two joint owners of the
cited registration, may be a "funny car" race driver, the
evidence fails to show how or why consumers would associate toy
cars with his name. The website, which appears to be that of a
gift shop, does not explain who John Force is, let alone prove
that he is well-known or that purchasers of toy cars are aware of
him. We also note that the pages displaying the "BRUTE FORCE"
model cars do not contain a website name or any other information
identifying their source. Nor is there any information on these
pages which would connect these cars to John Force, and moreover
nothing is displayed on the cars themselves which would evoke an
association with his name or persona.
We find that when viewed in relation to the goods as
identified in the application and registration, the term BRUTE
FORCE projects the same suggestive image in connection with toy
action figures as it does in connection with toy cars, that is,
toys with imaginary attributes of great strength and power, and
that the commercial impression is the same.
Thus, applicant's mark is identical in all respects to
registrant's mark.
It is applicant's contention that registrant's mark is
entitled to only a narrow scope of protection and that
registrant's rights "only extend to the toy cars and related
Serial No. 78144053
5
goods listed in the registration." (Brief at 8.) In support of
its position, applicant has submitted printouts of two third-
party registrations for BRUTE FORCE (owned by different entities)
in International Class 28 -- Registration No. 2215425 for
"fishing tackle and fishing floats" and Registration No. 1949588
for "multi-station exercise machines."3 Applicant argues that
"with two additional registered marks in Class 28, there can be
no claim that Registrant's mark is a strong mark in this class";
that third-party registrations can be relevant to show that a
mark is descriptive, suggestive, or so commonly used that the
public will look to other elements to distinguish the source of
the goods or services; and that "by using all three registrations
[including the cited registration] as a dictionary for the term
BRUTE FORCE, it is evident that the term is in common use, and
that it is capable of different meanings by different consumers."
(Reply Brief at 5,6.)
There are a number of problems with applicant's arguments.
To begin with, the classification of goods is purely an
administrative matter and, in and of itself, is of no
significance in determining the relative strength or weakness of
a mark. See Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d

3 These printouts are not copies of official USPTO records but rather
were obtained from a private Internet website. However, because the
examining attorney did not object to the evidence, it is considered of
record.
Serial No. 78144053
6
1771 (Fed. Cir. 1993). Further, the factor to be considered in
determining likelihood of confusion under du Pont is the "number
and nature of similar marks in use on similar goods." (Emphasis
added.) See In re E. I. du Pont de Nemours & Co., supra at 567.
Thus, third-party registrations of BRUTE FORCE for fishing tackle
and exercise machines, goods completely dissimilar to action
figures and toy cars, are irrelevant to the question of whether
the marks applied to the goods involved herein are likely to
cause confusion. In addition, it is well settled that third-
party registrations are not evidence of use. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973); and Charrette Corp. v. Bowater Communication Papers
Inc., 13 USPQ2d 2040 (TTAB 1989).
While it is true that third-party registrations can be
relevant to show that a commonly registered term has a suggestive
meaning for particular goods such that differences in other
portions of the marks may be sufficient to distinguish them, in
this case the marks are identical. There are no other portions
to distinguish them.
We recognize that BRUTE FORCE is a somewhat suggestive mark,
and as such perhaps not entitled to the broadest scope of
protection. However, the mark would at least be entitled to
protection from registration of applicant's identical mark for
related goods. See, e.g., King Candy Co. v. Eunice King's
Serial No. 78144053
7
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between weak
marks as between strong marks).
We turn to a consideration of the goods, keeping in mind
that where the marks are identical, less similarity is required
of the products on which they are used in order to support a
finding of likelihood of confusion. See Helene Curtis Industries
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
We find that applicant's "action figures in the nature of
science fiction and military characters" with or without a
connection to video games, and registrant's goods which include
toy cars and toy helmets are closely related, complementary toys
that are likely to be used by children of the same age group and
for the same play activity. We also note that the examining
attorney has submitted numerous use-based, third-party
registrations showing that, in each instance, a single entity has
adopted the same mark for action figures on the one hand, and for
toy cars and accessories on the other. Although the third-party
registrations are not evidence of use of the marks in commerce,
the registrations have probative value to the extent that they
suggest that the respective goods are of a type which may emanate
from the same source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard
Co., 6 USPQ2d 1467 (TTAB 1988).
Serial No. 78144053
8
Applicant argues that the respective goods are sold to
different customers contending that registrant's toy cars are
sold to race car enthusiasts familiar with John Force's funny car
racing antics whereas applicant's toys are designed to appeal to
consumers who are fans of applicant's BRUTE FORCE video game, an
"action-packed sci-fi, quad-based shooter game." (Brief at 4.)
Applicant also argues that that the goods will be offered in
different channels of trade and in particular that applicant's
goods will be sold through science fiction and fantasy websites,
video game websites, and the action figure sections of toy
stores, whereas registrant's toy cars are sold on websites for
race car fans and in different sections of toy stores. Relying
on In re The Shoe Works Inc., 6 USPQ2d 1890 (TTAB 1988) which
applicant claims is "analogous to the current facts," applicant
maintains that the restriction of the marketing and trade
channels in its identification of goods eliminates a likelihood
of confusion. In this regard, applicant refers to its ownership
of Registration No. 2832923 for BRUTE FORCE for goods, described
in part by applicant as "computer and video game programs" and a
published application (Serial No. 78116214) for BRUTE FORCE for
goods including, according to applicant, comic books in the field
Serial No. 78144053
9
of computer games.4 Based on this evidence, applicant concludes
that its toy action figures are a natural expansion of
applicant's use of BRUTE FORCE in connection with its video games
and that "consumers viewing the Applicant's action figure toys,
marketed in connection with Applicant's BRUTE FORCE video game,
will understand that Applicant is the owner of the action
figures." (Brief at 5.)
Applicant has not shown that any asserted expansion of its
use from video games to action figures would be considered
"natural"5 but more important, this entire argument misses the
point. The question is not whether consumers would expect
applicant's toy action figures and video games and/or comic books
to both come from applicant, but whether consumers would expect
registrant's toy cars and applicant's toy action figures to come
from the same source.
Moreover, in arguing that the purchasers and trade channels
for the goods are different, applicant has read impermissible
limitations into the application and registration. As our

4 Applicant did not properly introduce its claimed application and
registration but because the examining attorney has not objected, we
have considered them of record.

5 Applicant claims that it is a common practice to market action
figures in association with video games and refers, for the first time
in its brief, to the alleged existence of a number of registrations
that list both goods. Although this evidence is untimely and otherwise
not properly of record, because the examining attorney has not objected
to the evidence, we have treated it as of record. However, this
evidence has no bearing on whether goods at issue would be perceived as
emanating from the same source.
Serial No. 78144053
10
primary reviewing Court has often stated, the question of
likelihood of confusion is determined on the basis of the
identification of goods set forth in the application and
registration, rather than on the basis of what evidence might
show the actual channels of trade or purchasers to be. See J & J
Snack Foods Corp. v. McDonalds Corp., 932 F.2d 1460, 1464, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991); Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983).
There are no restrictions in either the application or
registration that effectively limit the trade channels or the
purchasers for the goods. Further, there is nothing inherent in
the nature of either applicant's or registrant's goods which
would indicate or even suggest that the toys are not offered in
the same trade channels to the same purchasers. Unlike the
restriction to the goods in Shoe Works, the language "marketed in
connection with a video game" in this application, while perhaps
indicating that applicant's toys and video games are promoted
together, in no way serves to limit the channels of trade or the
purchasers for those goods.
Thus, it must be presumed that registrant's toy cars and
applicant's toy action figures, which are marketed in connection
with a video game, would be sold in all the usual retail outlets
Serial No. 78144053
11
for toys including toy stores and toy departments of other stores
as well as on the same Internet websites where other toys are
sold. In this regard, we note the website printouts submitted by
the examining attorney (for example, www.entertainmentearth.com,
www.matchbox.com and www.masteroftheuniverse.com) showing that
action figures along with a variety of other toys, including toy
cars, are sold and/or advertised on the same websites. There is
no evidence that action figures and toy cars typically would be
displayed in different sections of a store nor do we find that to
be an important consideration since the toys may not even be
purchased at the same time. We can also presume that both
applicant's and registrant's toys are offered to all the usual
purchasers, including the general public.
In view of the foregoing, and because the identical marks
are used in connection with closely related goods, we find that
there is a likelihood of confusion.
Decision: The refusal to register under Section 2(d) is
affirmed.