Restoration Games, LLC

Trademark Trial and Appeal BoardJan 11, 2019

No. 87457730 (T.T.A.B. Jan. 11, 2019)

Mailed: January 11, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Restoration Games, LLC _____ Serial No. 87457730 _____ Zachary C. Strebeck of The McArthur Law Firm, PC for Restoration Games, LLC Mark Shiner, Trademark Examining Attorney, Law Office 105, Jennifer Williston, Managing Attorney. _____ Before Cataldo, Adlin and Heasley, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant Restoration Games, LLC seeks registration of EPIC DUELS, in standard characters, for “Game cards; Board games; Card games; Dice games; Equipment sold as a unit for playing board games; Equipment sold as a unit for playing card games; Tabletop games; Tabletop hobby battle games in the nature of battle, war and skirmish games, and fantasy games, and playing equipment sold as a unit therewith” in International Class 28.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered standard character mark 1 Application Serial No. 87457730, filed May 19, 2017 under Section 1(b) of the Trademark Act, based on an alleged bona fide intent to use the mark in commerce. This Opinion is Not a Precedent of the TTAB Serial No. 87457730 2 EPICDUEL, on the Principal Register for “Entertainment services, namely, providing online, real-time computer games for others over global and local area computer networks”2 as to be likely to cause confusion. After the refusal became final, Applicant appealed and Applicant and the Examining Attorney filed briefs. I. Evidentiary Objection During prosecution, the Examining Attorney objected to a list of third-party registrations that Applicant introduced in an attempt to establish that the cited mark is weak, explaining to Applicant that “the mere submission of a list of registrations … does not make such registrations part of the record.” Office Action of November 16, 2017. The Examining Attorney went on to explain that “[t]o make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.” Id. Applicant ignored the objection and the instruction, failed to properly introduce any third-party registrations prior to its appeal, and reattached the list of TESS printouts to its Appeal Brief as Exhibit A. 4 TTABVUE 11-15. The Examining Attorney objects. 6 TTABVUE 3-4. The Examining Attorney’s objection is sustained for the reasons stated in the prior Office Action. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). Specifically, the list of third-party registrations does not include any information regarding the goods or services associated with the listed marks, and is therefore 2 Registration No. 3844559, issued September 7, 2010; Section 8 Affidavit accepted. Serial No. 87457730 3 entitled to little if any weight. Furthermore, we have not considered any website addresses or hyperlinks included in Applicant’s brief, as these are not sufficient to make the associated websites of record. In re Olin Corp., 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (“Because the information displayed at a link’s Internet address can be changed or deleted, merely providing a link to a website is insufficient to make information from that site of record.”). II. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); 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 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. Similarity of the Marks The marks are virtually identical, the only differences between them being that Applicant’s is the plural form of Registrant’s, and includes a space between the words whereas Registrant’s mark is “telescoped.” Because Applicant’s addition of an “s” to the term DUEL does nothing to distinguish the meaning of its mark from the meaning conveyed by the cited mark, other than making it plural, it is a distinction Serial No. 87457730 4 with very little, if any, material difference. See Wilson v. DeLaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same mark.”); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962).3 Similarly, adding a space between the terms EPIC and DUELS is essentially irrelevant, because the marks still convey the same commercial impression, of games featuring an intense, massive or heroic battle. See e.g., Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (finding STOCKPOT and STOCK POT confusingly similar); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER found “practically identical”). Obviously, Applicant’s addition of a space between the words and its pluralization of DUEL barely change the appearance or sound of Registrant’s mark, and thus the marks are highly similar, indeed almost identical, in appearance, sound, connotation and commercial impression. This factor therefore not only weighs heavily in favor of finding a likelihood of confusion, but also reduces the degree of similarity between the goods and services required to support a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner 3 Applicant’s argument that the marks are different because its mark conveys a “series of fights or skirmishes, as opposed to one massive fight,” 4 TTABVUE 8, is not well taken. Con- sumers familiar with Registrant’s mark could very well assume that Applicant’s mark repre- sents a brand extension, identifying a board/card/tabletop version of Registrant’s online game that involves a series of fights, rather than just one. In any event, both marks convey fighting games, whether individual fights or a series of fights. We presume that consumers who wish to continue Registrant’s game after a single fight concludes could simply replay the game, and in that way have multiple fights. Serial No. 87457730 5 Ent. Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). B. The Goods, Channels of Trade, Classes of Consumers and Purchasing Conditions The goods and services are inherently related to the extent they all involve games. Applicant’s argument that there is no likelihood of confusion because it offers a “tangible good, whereas the services offered under the Cited Mark are online-only,” 4 TTABVUE 6, is not well taken. First, it is settled that goods and services may be related. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (“a customer who attends a banquet which he knows is catered by the appellant would, when he encounters a food product in the grocery store under an almost identical mark, naturally assum[e] that it came from the catering firm”); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that consumers would be likely to believe that jewelry on the one hand and retail stores selling jewelry on the other emanate from or are sponsored by the same source if such goods and services are sold under the same or similar marks.”). Second, in this case, Registrant’s service is to provide computer games, and here, as in many analogous cases, there is no meaningful distinction between providing these goods online as a “service” and providing the games in a more “tangible” format, such as a box with a board and pieces or a computer disc. Cf. In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1125-26 (Fed. Cir. 2016) (“We agree with the Board’s Serial No. 87457730 6 initial observation that, with modern technology, the line between services and products sometimes blurs … a mark used with a web-based offering may equally identify the provision of software, rather than a service.”); In re Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006) (referring to “the blurring between services and products that has occurred with the development and growth of web-based products and services”). While there are obvious differences between computer games and other types of games, the Examining Attorney has established that computer games are nevertheless related to board and other types of games. Specifically, the Examining Attorney introduced evidence that the same marks are used for computer games on the one hand and board games on the other: Serial No. 87457730 7 Office Action of November 16, 2017 (printouts from “catan.com,” “daysofwonder.com” and “hasbro.com”). The Examining Attorney also introduced a listing from a Board Game Geek online forum entitled “The Exhaustive List of Board Games You Can Play Online for Free.” Id. (printout from “boardgamegeek.com”). The printout only includes the first 25 games, but it is clear that the list is longer than that. Similarly, the Pogo website allows users to “play free online board games,” including Scrabble, Yahtzee, Risk, Trivial Pursuit, Battleship and Connect 4. Id. (printout from “pogo.com”). An article entitled “The Best Board Games You Can Play on PC” states “Many of the best board games around ─ Catan, Carcassonne, Twilight Struggle, to name a few ─ are getting Serial No. 87457730 8 digital editions worthy of their name.” Id. (printout from “pcgamer.com”). In addition, the Examining Attorney made of record a number of use-based, third- party registrations, having different owners, which show that the same marks are registered for board or card games on the one hand and online computer games on the other, including: DOODLE JUMP in standard characters (Reg. No. 4672513) is registered for “games and playthings, namely, board games, card games …” and “computer and video game amusement services, namely, providing online and non-downloadable video games; non-downloadable games offered on-line; game services, namely, providing online and non-downloadable video games.” EARTH 2 JANE in standard characters (Reg. No. 4600871) is registered for “board games” and “providing on-line com- puter games that may be accessed network wide by net- work users.” MAGIC ORIGINS in standard characters (Reg. No. 4846803) is registered for “card games, trading card games, playing cards” and “entertainment services, namely, providing online computer games and interactive multi- player online computer games via a global network.” KONAMI in standard characters (Reg. No. 4891617) is reg- istered for “card games” and “providing online computer games.” (Reg. No. 5233374) is registered for “games, namely, board games” and “electronic games ser- vices provided on-line from a computer network.” (Reg. No. 5040134) is registered for “amusement devices, namely, board games …” and “entertainment ser- vices, namely, providing online computer games.” IMHOLDING in standard characters (Reg. No. 5148217) is registered for “games namely, board games and card Serial No. 87457730 9 games” and “providing online computer and electronic games; providing a website featuring non-downloadable games and game software.” BEHOLDER (Reg. No. 5249215) is registered for “card games; tabletop games” and “entertainment services, namely, providing an on-line computer game; entertain- ment services, namely, providing online electronic games; entertainment services, namely, providing temporary use of non-downloadable electronic and computer games.” Office Action of August 22, 2017. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). This evidence ─ which shows that not only are board and card games sold under the same marks as videogames, but also that the public recognizes that branded board games are often played online (under the same brand) ─ clearly establishes a relationship between board/card and online video games. Furthermore, the website evidence establishes that board/card games travel in the same channels of trade as videogames, and that game consumers sometimes choose to play certain games on boards or with cards, and at other times choose to play the same games via computers or online. We do not doubt Applicant’s claim that its goods “are sold mainly through physical Serial No. 87457730 10 retail stores” while Registrant’s services and similar online game services are sold through websites. 4 TTABVUE 6-7. But the evidence establishes that card and board games are sometimes sold on the same websites, and even the same sections or pages of websites, as their videogame versions sharing the same name/mark. Applicant’s games, as identified, could be sold similarly, even if they are not now. In any event, Applicant admits that its games are also currently sold “through Applicant’s website.” Id. at 7. These factors therefore also weigh in favor of finding a likelihood of confusion. Applicant distinguishes “tabletop” games such as those it offers from “online, real- time computer games” such as Registrant offers by pointing out that “[t]he delivery mechanism, modes of play, and overall experience is clearly different.” 4 TTABVUE 6. We have no quarrel with this assessment, but it is beside the point. The question is not whether consumers can differentiate board/card/tabletop games from video- games, but instead whether they are likely to believe that they come from the same source. “[L]ikelihood of confusion can be found ‘if the respective [goods and services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citations omitted). Finally, Applicant’s argument that the relevant purchasers are “sophisticated” and careful is unsupported. The fact that various types of games are discussed and reviewed online does not distinguish them from other types of goods and services, including inexpensive, everyday items purchased on impulse, because virtually Serial No. 87457730 11 everything is discussed online. Furthermore, because there are no price or similar limitations in either Applicant’s or Registrant’s identifications of goods and services, we must presume that ordinary and unsophisticated consumers will purchase Applicant’s and Registrant’s games, which could be sold at any price, and we must base our decision on the “least sophisticated potential purchasers” for the games as identified. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014). Nevertheless, we accept that game consumers will exercise some care in choosing games to purchase. III. Conclusion While consumers will likely exercise at least some care in purchasing Applicant’s and Registrant’s goods and services, this factor is easily outweighed by the others. The marks are virtually identical in appearance, sound, meaning and overall commercial impression, and the record establishes that the goods are closely related and that their channels of trade and classes of consumers overlap. We therefore find that there is a likelihood of confusion between Applicant’s and Registrant’s marks. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.