PTT, LLC DBA High 5 Games

Trademark Trial and Appeal BoardNov 5, 2015

No. 86134331 (T.T.A.B. Nov. 5, 2015)

This Opinion is not a Precedent of the TTAB Mailed: November 5, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re PTT, LLC DBA High 5 Games _____ Serial No. 86134331 _____ Jonathan A. Fallon and Candice B. Hebden of High 5 Games, for PTT, LLC DBA High 5 Games. Sandra Snabb, Trademark Examining Attorney, Law Office 120, Michael W. Baird, Managing Attorney. _____ Before Kuhlke, Wellington and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: PTT, LLC DBA High 5 Games (“Applicant”) seeks registration on the Principal Register of the mark ISLANDS OF GALAPAGOS (in standard characters) for “game software” in International Class 9.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used on or in connection with the identified goods, is likely 1 Application Serial No. 86134331 was filed on December 3, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 86134331 - 2 - to cause confusion with the mark GALAPAGOS (in standard characters) for “gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output” in International Class 9.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Applicable Law 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. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard 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. Relatedness of the Goods and Channels of Trade We begin with the du Pont factors of the relatedness of the goods and channels of trade. We base our evaluation on the goods as they are identified in the application 2 Reg. No. 3853532 issued September 28, 2010. Serial No. 86134331 - 3 - and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the respective goods be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re International Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). That is, the issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The record shows, and Applicant does not dispute, that Applicant’s “game software” and Registrant’s “gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output” are related, and the channels of trade and classes of consumers overlap. The Examining Attorney submitted evidence from several third-party commercial Internet websites demonstrating that game software and gaming devices may be used for the same purposes, and that game software is used in gaming machines. For example, Masque Games offers game software that allows users to play slot machine games on computers and mobile devices,3 Free Slots 3 March 21, 2014 Office Action at 6. Serial No. 86134331 - 4 - provides information about “3D slot game” software for online slot machines,4 and Slot Constructor offers custom gaming software development services as well as casino game development kits that allow gaming companies to make slot machines, video poker and amusement machines.5 The Examining Attorney submitted evidence from the third-party commercial Internet websites IGT , Konami , Scientific Games , and Bally Technologies , to show that game software and gaming machines commonly are provided by the same entity under the same mark.6 Further, the Examining Attorney made of record excerpts from Applicant’s website to show that Applicant’s game software is used for gaming purposes, including for slot machine games.7 As to the channels of trade and classes of purchasers, because the identifications of goods in the application and registration contain no limitations, it is presumed that the goods identified therein move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods, including ordinary consumers. Stone Lion, 110 USPQ2d at 1161. See also Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (absent limitation, “goods are presumed to travel in all normal channels and to all prospective purchasers for the relevant goods.”). The evidence shows that 4 Id. at 9. 5 Id. at 18. 6 October 11, 2014 Office Action at 22-42. 7 Id. at 15. Serial No. 86134331 - 5 - “gaming software” and “gaming machines” travel through the same channels of trade and are offered to the same classes of consumers. The du Pont factors of the similarity of the goods and channels of trade favor a finding of likelihood of confusion. B. Comparison of the Marks Applicant has concentrated its comments on the first du Pont factor, the similarity of the marks. We now turn our attention to this factor, which requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., 101 USPQ2d at 1721 (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905 (TTAB 2007)). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Our analysis cannot be predicated on dissection of the involved marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their Serial No. 86134331 - 6 - entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). In comparing the two marks, we note that Applicant’s mark ISLANDS OF GALAPAGOS incorporates the entirety of Registrant’s mark GALAPAGOS. Thus, although the marks are not identical in sound and appearance, they are similar in that they both contain the same term GALAPAGOS. Likelihood of confusion often has been found where the entirety of one mark is incorporated within another. See Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause confusion with HEAD START for men’s hair lotion and after-shaving lotion). Applicant’s mark ISLANDS OF GALAPAGOS and Registrant’s mark GALAPAGOS also are similar in meaning and create the same overall commercial impression. The record shows that both marks incorporate the name of the same geographic location: the Galapagos Islands, an archipelago commonly referred to as Serial No. 86134331 - 7 - the “Galapagos.” For example, in a 2012 article entitled “One-of-a-kind wildlife- watching in the Galapagos” posted on the Lonely Planet website , travel writer Bridget Gleeson describes “[a]rriving in the Galapagos” as “thrilling – partly because the introduction to the archipelago is unsettling, even spooky, like setting foot on an unpopulated planet,” and explains that “[t]he archipelago’s remote location, 600 miles off the coast of Ecuador, means that the islands’ flora and fauna have been almost entirely isolated from the rest of the world for millions of years.”8 According to the Galapagos Turtle webpage from the National Geographic website , “Spanish sailors who discovered the archipelago in 1535 actually named it after the abundant tortoises; the Spanish word for tortoise is galapago.”9 The Frommers website also provides information for travelers to the Galapagos, referring variously to the “Galapagos Islands,” the “Galapagos archipelago,” and simply “the Galapagos.”10 Applicant’s description of its game on its website reflects the geographic connection to the Galapagos: “The Islands of Galapagos lie down by the Equator, in the Pacific Ocean to the west of South America. Journey to these famous islands to see the amazing variety of life that compelled Darwin to study there.”11 8 October 11, 2014 Office Action at 6 and 8. 9 Id. at 3. 10 Id. at 12-15. 11 Id. at 20. Serial No. 86134331 - 8 - Applicant argues in its brief that Registrant’s mark GALAPAGOS has an ambiguous meaning because it “could refer to the group of islands or it could mean tortoise,” while Applicant’s mark ISLANDS OF GALAPAGOS connotes only the geographic location and “cannot refer to a tortoise, or an island of tortoises as that would be a mixed language mark.”12 Given that the geographic location is named after the giant land tortoises as noted above, we find unpersuasive Applicant’s unsupported assertion that the connotations of GALAPAGOS and ISLANDS OF GALAPAGOS differ. Applicant also argues that ISLANDS OF is the dominant portion of its mark ISLANDS OF GALAPAGOS because ISLANDS OF appears first in the mark. We acknowledge that the common term GALAPAGOS is the third word in Applicant’s mark. However, in this case, we find that the word placement is not sufficient to distinguish the marks because the designation ISLANDS OF simply appears as a variant of the shared element GALAPAGOS. Applicant’s mark ISLANDS OF GALAPAGOS contains no other matter by which to distinguish it from Registrant’s mark GALAPAGOS. Because of the identical term GALAPAGOS, and because ISLANDS OF GALAPAGOS and GALAPAGOS both refer to the same group of islands, we conclude that when the marks are compared in their entireties, they are very similar overall in sound, appearance, meaning, and commercial impression. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Court held that the addition of “The,” 12 7 TTABVUE 5. Serial No. 86134331 - 9 - “Cafe” and a diamond-shaped design to registrant’s DELTA mark still resulted in a likelihood of confusion). As such, this du Pont factor also favors a finding of likelihood of confusion. C. Number and Nature of Similar marks in Use on Similar Goods The next factor we consider is that of third-party use. As Applicant points out, under the sixth du Pont factor, evidence of third-party use can be used to show that a registrant’s mark is weak and thus entitled to a limited scope of protection. Applicant acknowledges in its brief that there are no third-party registrations that include the term “GALAPAGOS,” but contends that “there are numerous examples of game software with marks incorporating the word.”13 To this end, Applicant submitted with its Request for Reconsideration printouts of six websites that include the term “GALAPAGOS.”14 Of these, three are for different goods than those identified in the application and registration (two are for board games and one is for a 3D Blu-ray film), and therefore do not support Applicant’s contention. The other printouts are for game software bearing the mark PROTECT GALAPAGOS, a review of game software released in 1997 under the mark GALAPAGOS, and a teaser video of game software bearing the mark GALAPAGOS. However, there is no evidence of consumer familiarity with the PROTECT GALAPAGOS game software, such as how long or widespread its use has been. Further, there is no evidence that 13 7 TTABVUE 6. 14 4 TTABVUE 5-10. Serial No. 86134331 - 10 - the game software released in 1997 is still in use, or that the teaser video resulted in a product release (and if so, whether that product is still offered for sale). Applicant’s evidence of third-party use therefore is minimal, and is not sufficient to establish that the mark GALAPAGOS in the cited registration is weak, or that consumers are so used to seeing marks containing the term GALAPAGOS in association with gaming products that consumers can distinguish among them. We consider this du Pont factor neutral. II. Conclusion We have carefully considered all evidence of record and Applicant’s arguments, even if not specifically discussed herein, as they pertain to the relevant du Pont factors. We treat as neutral any du Pont factors for which there is no evidence of record. In view of the foregoing, we conclude that prospective purchasers familiar with the registered mark GALAPAGOS for “gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output” would be likely to believe, upon encountering Applicant’s substantially similar mark ISLANDS OF GALAPAGOS for “game software,” that such goods emanate from, or are sponsored by or affiliated with the same source. Decision: The refusal to register Applicant’s mark ISLANDS OF GALAPAGOS is affirmed.