Microsoft Corporation

Trademark Trial and Appeal Board

Mar 24, 2006

No. 78228227 (T.T.A.B. Mar. 24, 2006)

Mailed: March 24, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Microsoft Corporation
________

Serial No. 78228227
_______

William O. Ferron, Jr. of Seed Intellectual Property Law
Group PLLC for Microsoft Corporation.

Tonja M. Gaskins, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before, Hairston, Rogers and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Microsoft Corporation
to register the mark KAMEO for goods which were ultimately
identified as follows:
Toys and games, namely, action figures and
accessories therefore; balloons; bathtub toys;
toy building blocks; play cosmetics for children;
costume masks; miniature die cast vehicles; toy
airplanes and helicopters; battery operated
remote controlled toy vehicles; flying discs;
inflatable vinyl figures; jigsaw puzzles; kites;
marbles; indoor slumber and play tents; plush
toys; hand-held puppets; sit-in and ride-on toy
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78228227
2
vehicles; train sets; play shaving kits;
skateboards; roller skates; toy banks; water
squirting toys; toy pistols; Christmas tree
ornaments; pinball and arcade game machines;
hand-held units for playing electronic games;
model craft kits of toy figures; playground
balls; sport balls; basketballs; golf balls; golf
ball markers; tennis balls; baseballs; rubber
action balls; rubber sports balls; rubber
playing balls; squeezable balls used to relieve
stress; bags for carrying golf equipment; bags
for carrying basketball equipment; bags for
carrying baseball equipment; bags for carrying
tennis equipment; manipulative puzzles and
construction toys; crib mobiles; mobiles for
children; target sets consisting of a target,
rubber suction darts and toy dart gun; playing
cards; all sold to promote videogames and
videogame characters.1

Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark CAMEO, which is
registered for “equipment sold as unit for playing a board
game,”2 as to be likely to cause confusion, mistake, or
deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal
to register.

1 Serial No. 78228227, filed March 20, 2003, which is based on a
bona fide intention to use the mark in commerce.
2 Registration No. 2,327,262 issued March 7, 2000; Section 8 and
15 affidavit accepted and acknowledged, respectively.
Ser No. 78228227
3
Preliminarily, we must discuss two evidentiary
matters. With its appeal brief, applicant submitted
printouts from the website “wikipedia.org” which contain
information about the “Cranium” board game. Applicant
submitted these printouts to support its contention that
there is no likelihood of confusion in this case because
registrant actually uses the cited mark for a type of card
in registrant’s “Cranium” board game, rather than on the
goods set forth in the registration.
The examining attorney has objected to the printouts
arguing they were untimely submitted. We note, however,
that applicant, in both its March 30, 2005 response to the
examining attorney’s second Office action, and June 8, 2005
request for reconsideration, discussed the exact
information that is shown in the printouts and referenced
the website address. The examining attorney, in her
responses, did not advise applicant that actual printouts
of the website should be submitted. Instead, the examining
attorney merely rejected applicant’s contention that there
is no likelihood of confusion in this case because
registrant actually uses the cited mark for a type of game
card. By treating the information at the website to be of
record, the examining attorney has waived any objections to
consideration of this information. Further, although the
Ser No. 78228227
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printouts of the website were untimely filed, because they
contain the exact information relied on by applicant and
considered by the examining attorney, we have considered
them for whatever probative value they may have. We
discuss applicant’s argument in this regard in more detail,
infra.
Also, in its appeal brief, applicant referred to three
“allowed” applications which it owns for the mark KAMEO for
videogames and other goods. Applicant pointed out that the
toys and games in the instant application are merchandising
goods which will be sold to promote the videogame and other
goods in the allowed applications.
The examining attorney has objected to applicant’s
reference to the allowed applications, arguing that this
reference is untimely and that actual copies of the
applications should have been made of record. We note that
the objection to the reference is more properly an
objection to material never made of record, rather than to
an untimely submission, insofar as applicant has not
actually submitted copies of the applications. We also
note, however, that applicant first made reference to these
applications in its June 8, 2005 request for
reconsideration. The examining attorney, in her responsive
Office action, did not advise applicant that the
Ser No. 78228227
5
applications had not been made of record or that copies of
the applications should be submitted. Moreover, applicant
has taken the position throughout the prosecution of this
application (and indeed amended the identification of goods
to so reflect) that the toys and games in the involved
application will be used to promote its videogames and
other products. We do not view applicant’s mere reference
to the applications covering its videogames and other
products as a situation that would require that actual
copies of the applications be submitted. Thus, the
examining attorney’s objection to applicant’s reference in
its brief to these allowed applications is overruled. The
reference, nonetheless remains merely part of a line of
argument and is not itself evidence. We discuss the
argument in more detail, infra.
We turn then to the issue of likelihood of confusion.
Our determination of the issue of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
Ser No. 78228227
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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 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the marks. With
respect to the marks, we must determine whether applicant’s
mark and registrant’s mark, when compared in their
entireties are similar or dissimilar, in terms of sound,
appearance, connotation and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). When marks are, as in this case, phonetically
identical, that can be significant. See TBC Corpo. V.
Holsa, 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997). See
also, Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (“Despite specific differences in
spelling and in probable meaning, the dominant factor for
consideration is the likelihood of confusion arising from
the similarity in sound of the two words when spoken.”) In
addition, “the PTO may reject an application ex parte
solely because of similarity in meaning of the mark sought
to be registered with a previously registered mark.” In re
Ser No. 78228227
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Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir.
1983).
The test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their commercial impression that confusion as to the source
of the goods and/or services offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
We find that the marks KAMEO and CAMEO are
substantially similar in terms of appearance, differing by
only one letter, and that they are identical in terms of
sound. Insofar as the connotation of the marks is
concerned, we judicially notice that the word “cameo” is
defined as, inter alia, “[a] brief vivid portrayal or
depiction”. The American Heritage Dictionary of the
English Language (4th ed. 2000). Applicant’s mark KAMEO, on
the other hand, is a coined word with no apparent meaning.
However, it could be perceived by purchasers as a fanciful
spelling of the word “cameo” and thus would be understood
as having the same meaning as the cited mark. In any
Ser No. 78228227
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event, at the very least, the marks are substantially
similar in appearance and identical in sound, and we find
that when considered in their entireties, CAMEO and KAMEO
project substantially similar, if not identical, commercial
impressions.
We turn next to a consideration of the goods. It is
well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or services recited in the registration, rather than
what the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Application of this principle is particularly necessary
when, as in this case, the application is based on
applicant’s intent to use the mark for a wide array of
goods, and it cannot be known for what goods applicant
would end up actually using the mark. Further, it is a
general rule that goods or services need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that
Ser No. 78228227
9
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used or intended to be used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein. Moreover, the greater the degree of similarity
between the applicant’s mark and the cited mark, the lesser
the degree of similarity between the applicant’s goods or
services and the registrant’s goods or services that is
required to support a finding of likelihood of confusion.
See In re Shell Oil Co., 992 F.2d 1687 (Fed. Cir. 1993); In
re Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
The examining attorney argues that applicant’s toys
and games and registrant’s equipment sold as a unit for
playing a board game are all related because such goods may
be sold in the same channels of trade to the same classes
of purchasers. The examining attorney submitted copies of
four third-party registrations for marks that cover
equipment sold as a unit for playing a board game, on the
one hand, and some of the toys and games in applicant’s
application, on the other hand.
Ser No. 78228227
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Applicant, in urging that the refusal to register be
reversed, argues that:
Cited Registration No. 2,327,262 is for the mark
CAMEO for equipment sold as a unit for playing a
board game. The CAMEO mark is used as the name
for a type of card used in the game sold under
the Registrant’s CRANIUM mark. As such,
confusion is unlikely between the cited mark and
Applicant’s KAMEO goods, which do not include
board games or card games and which are expressly
limited to goods sold to promote Applicant’s
videogames and videogame characters.
(Brief, p. 3)

We find that, at a minimum, the toy action figures and
hand-held units for playing electronic games identified in
applicant’s application are sufficiently related to
registrant’s goods as set forth in the registration, and
that confusion is likely to result from the use thereon of
the virtually identical marks in this case.3 As noted, for
purposes of our likelihood of confusion determination, we
must consider the goods recited in registrant’s
registration, namely, equipment sold as a unit for playing
a board game. Registrant’s goods and applicant’s toy
action figures and hand-held units for playing electronic
games are all in the nature of toys and games. These kinds
of goods are sold in the same channels of trade, such as

3 It is enough that there is a likelihood of confusion as between
the goods set forth in the cited registration and any of the
goods identified in applicant’s application. See, e.g., Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986 (CCPA 1981).
Ser No. 78228227
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toy stores and mass merchandisers, to the same class of
purchasers, namely, the general public. See CBS Inc. v.
Parkville Imports, Inc., 223 USPQ 1143 (TTAB 1984)
[likelihood of confusion between TROUBLE for a board game
and TROUBLE dolls for dolls presumed, in absence of
restrictions in identifications, to travel through the same
channels of trade, namely, gift, department and toy
stores.]
Further, with respect to the relatedness of the goods,
the evidence of record includes copies of four third-party
registrations which include in their respective
identifications of goods, inter alia, equipment sold as a
unit for playing a board game, on the one hand, and toy
action figures and hand-held units for playing electronic
games, on the other hand. Although these registrations are
not evidence that the marks shown therein are in use; or
that the public is familiar with them, they nevertheless
are probative evidence to the extent that they suggest that
the goods identified therein are of a type which may
emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988). We find that this evidence, although not
overwhelming in terms of quantity, is probative evidence of
Ser No. 78228227
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the requisite relationship between applicant’s toy action
figures and hand-held units for playing electronic games
and registrant’s equipment sold as a unit for playing a
board game.4 In addition, applicant’s jigsaw puzzles,
marbles and playing cards can generally be considered
similar to a board game, in that all are diversions that
can be engaged in on a tabletop or other similar surface.
We are not compelled to reach a different result here
because applicant intends to sell its goods “to promote
applicant’s videogames and videogame characters.” This
language in applicant’s identification of goods does not
serve to limit the channels of trade or classes of
purchasers of applicant’s goods, and is only a statement of
the business purpose behind applicant’s intention to market
the goods under the mark. In other words, applicant’s
goods may still be sold in toy stores and mass
merchandisers to the general public. Neither does the
language restrict the manner in which the goods may be
sold, that is, applicant is not limited to selling its
goods alongside or in conjunction with its videogames.
Rather, applicant’s toy action figures, for example, may be

4 We also note that applicant’s “model craft kits of toy figures”
are items similar in type and utility to action figures, and
would encompass model kits used to make model action figures.
Ser No. 78228227
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sold in the “action figure” section of a toy store. In
short, applicant’s purported limitation does not obviate
the likelihood of confusion in this case.
Two additional matters require comment. As noted,
applicant contends that registrant actually uses the CAMEO
mark as the name of a card in registrant’s “Cranium” board
game, rather than on the goods set forth in the
registration. Applicant is advised that it may seek a
restriction under Section 18 of the Trademark Act, 15
U.S.C. §1068. This remedy is available for those who
believe that a restriction in the cited registration may
serve to avoid a likelihood of confusion. See Eurostar
Inc. v. Euro-Star Reitmoden GmbH & Co. KG, 34 USPQ2d 1266
(TTAB 1994). Section 18 specifically permits the USPTO in
opposition and cancellation proceedings to “modify the
application or registration by limiting the goods or
services specified therein.”
Also, applicant argues that the cited mark is
descriptive of a feature of registrant’s board game in that
players of the game, who draw a “cameo” card, are required
to give a short performance in which they act out a clue.
Applicant’s contention that the mark in the cited
registration is descriptive of the goods is a collateral
attack on the validity of such registration and will not be
Ser No. 78228227
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entertained in this ex parte proceeding. See TMEP Section
1207.01 (c)(iv) (2005) and cases cited therein.
In view of the foregoing, we conclude that consumers
familiar with registrant’s mark CAMEO for equipment sold as
a unit for playing a board game, could reasonably assume,
upon encountering applicant’s virtually identical mark
KAMEO for related toys and games, and for toy action
figures and hand-held units for playing electronic games,
in particular, that such goods emanate from, or are
sponsored by or affiliated with the same source.
Decision: The refusal to register is affirmed.