Rocket Box Inc.

Trademark Trial and Appeal BoardSep 4, 2020

88360870 (T.T.A.B. Sep. 4, 2020)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 4, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rocket Box Inc. _____ Serial No. 88360870 _____ Brian D. Tucker of Kirton McConkie, P.C., for Rocket Box Inc. Shaila E. Lewis, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Bergsman, Goodman, and Coggins, Administrative Trademark Judges. Opinion by Coggins, Administrative Trademark Judge: Rocket Box Inc. (“Applicant”) seeks registration on the Principal Register of the composite mark ROCKET BOX JACKS QUALITY (“jacks” and “quality” disclaimed) shown below Serial No. 88360870 - 2 - for “tabletop games, namely, jacks,” as amended,1 in International Class 28.2 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, as applied to the goods identified in the application, so resembles the mark ROCKET BOX (in standard characters) for “toys, games and playthings, namely, toy vehicles and accessories therefor,” in International Class 28,3 on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed and fully briefed. We affirm the refusal to register. 1 The application originally identified the goods as “tabletop games.” March 28, 2019 Application TSDR 2. Although Applicant quickly amended the goods to “tabletop games, namely, jacks,” see April 3, 2019 Preliminary Amendment TSDR 1, the amended identification of goods is not reflected in the Office’s database. Because Applicant and the Examining Attorney treat the identification of goods as if the amendment were entered, we do the same. Citations to the prosecution file refer to the Trademark Status & Document Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to the page number in the downloadable .pdf version of the TSDR record. Citations to the briefs and other materials in the appeal record refer to the Board’s TTABVUE docket system. 2 Application Serial No. 88360870 filed on March 28, 2019, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as March 1, 2016. The application contains the following description of the mark: “The mark consists of the word ‘Jacks’ superimposed on a circle with the words ‘Rocket Box’ positioned in the top of the circle, the word ‘Quality’ positioned within the circle under the word ‘Jacks’ and a set of three stars positioned in the circle above the word ‘Jacks’ and a second set of eight stars positioned in the bottom of the circle.” Color is not claimed as a feature of the mark. 3 Registration No. 3146503, issued September 19, 2006; renewed. Serial No. 88360870 - 3 - I. Evidentiary Issue Before proceeding to the merits of the refusal, we address evidentiary matters. The Examining Attorney objects to Applicant’s inclusion of evidence on page 2 of its main brief (which Applicant identifies as “Mattel’s latest specimen”4) and website addresses embedded within Applicant’s arguments, particularly at footnote 1 on page 13 of its main brief,5 on the ground that the evidence and websites were not previously made of record. The Examining Attorney’s objection is sustained and the evidence and website addresses (or embedded links) within Applicant’s brief are not of record. Trademark Rule 2.142(d) (“The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal.”); see also, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1207.01 (2020). Moreover, merely providing links to content on the Internet does not by itself suffice to introduce the websites or underlying material into evidence. See In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013)). As the Examining Attorney also notes, Applicant attached as exhibits to its brief previously-filed evidence and cited to those exhibits instead of to the application record. “Parties . . . occasionally seem to be under the impression that attaching previously-filed evidence to a brief and citing to the attachments, rather than to the original submission is a courtesy or a convenience to the Board. It is neither.” In re 4 7 TTABVUE 2. 5 See 7 TTABVUE 14. Serial No. 88360870 - 4 - Michalko, 110 USPQ2d 1949, 1950 (TTAB 2014). The better and preferred practice is citation to the record. See id. at 1950-51; TBMP § 1203.01 (“When referring to the record, the applicant and examining attorney should cite to the prosecution history for the application, currently the TSDR database.”) II. Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all 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) (“DuPont”). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162- 63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). We discuss these and other relevant factors below. When analyzing the factors, the overriding concerns are not only to prevent buyer confusion as to the source of the services, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Serial No. 88360870 - 5 - A. The number and nature of similar marks in use on similar goods We begin with the strength of the cited mark under the sixth DuPont factor which requires us to consider the number and nature of similar marks in use on similar goods. DuPont, 177 USPQ at 567; Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). If the evidence establishes that the consuming public is exposed to third-party use of similar marks in connection with similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Third-party registrations and use of similar marks can bear on the strength or weakness of a registrant’s mark in two ways: commercially and conceptually. First, if a mark, or an element of a mark, is used extensively in commerce by a number of third parties, that could undermine its commercial strength, as the consuming public may have become familiar with a multiplicity of the same or similar marks, and can distinguish them based on minor differences. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “Evidence of third- party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., 73 USPQ2d at 1693, quoted in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). “The weaker [a registrant’s] mark, the closer an applicant’s mark Serial No. 88360870 - 6 - can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674. Second, if there is evidence that a mark, or an element of a mark, is commonly adopted by many different parties, that may indicate the common element has some non-source identifying significance that undermines its conceptual strength as an indicator of a single source. Jack Wolfskin, 116 USPQ2d at 1136 (“[E]vidence of third- party registrations is relevant to ‘show the sense in which a mark is used in ordinary parlance,’ . . . that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.”’) (quoting Juice Generation, 115 USPQ2d at 1674 (quoting 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90 (4th ed. 2015))). Applicant argues that “Rocket Box is commonly used with a variety of toys and other goods and services” and such “common use of this term is due to its descriptive nature – rocket box describes an explosive, speedy, quick, etc. characteristic.” 7 TTABVUE 11. Applicant posits that as a result “consumers are not likely to perceive Rocket Box alone as a source identifier.” Id. Applicant did not submit evidence of any third-party registrations of ROCKET BOX or ROCKET-formative marks; but, Applicant did submit several websites showing third-party uses of the wording “rocket box” in various contexts – only four of which are associated with toys, the remaining nine associated with a wide variety Serial No. 88360870 - 7 - of unrelated goods and services. See 7 TTABVUE 14 (list of uses); 4 TTABVUE 39-64 and 69-100 (website evidence). There are multiple issues with the third-party websites, diminishing their probative value. Specifically, for the four toy-associated websites (emphasis added):  The American Girl doll advertisement states that the doll “[s]et includes: A model rocket box to hold the rocket and launchpad,” which is not trademark use; it merely describes a box for a model rocket.6  The Roxy Rocket action figure review reveals that the character’s name is “Roxy Rocket,” and that the action figure comes in a “box set”: “DC Collectibles are in the process of shipping the Roxy Rocket box set to stores . . . .” This is not trademark use; it merely describes a box set for the Roxy Rocket figure.7  The My Party Box advertisement is for downloadable artwork which may then be printed at home to create a three-dimensional, rocket-themed favor box for children’s parties. The box is shaped to resemble a rocket ship when folded. “Rocket box 3D favor box Rocket gift Rocket box printable Rocket ship Favor box Space rocket party PDF.” This is not trademark use; it merely describes downloadable art and the resulting box which is designed to look like a rocket.8  The “Hydro 3 Rocket Box Set” advertisement is for “the Toysmith Deluxe Water Rocket Set” which is a box set of a targeting water game that “includes 2 short rockets, a long rocket, a launcher pump, 2 filling funnels and instructions.” The packaging for and description of the game reveals it is a “box set.” This is not trademark use; it merely describes a box set for the “Hydro3” “air pressure/water powered rockets” game set.9 6 4 TTABVUE 40 (ebay.com). 7 4 TTABVUE 46 (toyhypeusa.com). 8 4 TTABVUE 56 (etsy.com). 9 4 TTABVUE 60 (museumofflightstore.org). Serial No. 88360870 - 8 - The remaining nine webpages10 do not show goods or services related to toys, and Applicant has not submitted evidence to show that the goods or services in those additional nine webpages may be considered “similar” to the toy goods in the cited registration, nor evidence that they are directed to the relevant public, which, as analyzed more fully below, comprises ordinary consumers who purchase toys, games, and playthings such as jacks and toy vehicles. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693-94 (Fed. Cir. 2018) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) and Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)) (“[T]he ‘relevant du Pont inquiry is “[t]he number and nature of similar marks in use on similar goods.”’”). Applicant’s relevant evidence, which does not include any third-party registrations, fails to demonstrate use of “rocket box” as a mark, as contemplated by the sixth DuPont factor. Even if we were to consider the four toy-related uses particularly probative, such evidence “is a far cry from the large quantum of evidence of third-party use and registration that was held to be significant in both” Jack Wolfskin, 116 USPQ2d at 1136, and Juice Generation, 115 USPQ2d at 1674. In re Inn 10 See 4 TTABVUE 42-45 (customeranalytics.com) cloud-based analytics services; 4 TTABVUE 53-55 (riversports.com) bag for carrying ammunition boxes; 4 TTABVUE 62-64 (epicfireworks.com) fireworks; 4 TTABVUE 69-79 (stmcanna.com) marijuana rolling machine; 4 TTABVUE 80-83 (ebay.com) amateur radio amplifier; 4 TTABVUE 84-88 (yakima.com) automotive rooftop cargo box; 4 TTABVUE 89-90 (ebay.com) watch winding box; 4 TTABVUE 91-95 (nrs.com) for ammunition dry storage boxes; and 4 TTABVUE 96- 100 (dnr.maryland.gov) two-chamber bat roosting boxes. There are other issues affecting the probative value of several of these websites; but, because Applicant did not demonstrate that they are related to toys or directed to the relevant consumers, we need not address the specific problems. Serial No. 88360870 - 9 - at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (citing Jack Wolfskin and Juice Generation). We also note that the cited ROCKET BOX mark “is registered on the Principal Register [and] is entitled to all Section 7(b) presumptions, including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.” Tea Bd. of India v. The Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). The registration did not issue on the basis of a showing of acquired distinctiveness under § 2(f), and the ROCKET BOX mark is thus presumed to be inherently distinctive. Id. Applicant’s claim that the cited mark has a “descriptive nature,” 7 TTABVUE 11, “is used in a descriptive fashion” by third parties and by Registrant “with the same descriptive meaning,” id. at 14, and “with the same descriptive connotation,” id. at 17, is an impermissible collateral attack on the validity of the registration, which we cannot entertain in the absence of a petition to cancel it. See, e.g., In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) and cases cited therein. We find the cited mark to be inherently distinctive, and neither commercially nor conceptually weak. We therefore accord it a normal scope of protection and find the sixth DuPont factor is neutral in our analysis of likelihood of confusion. B. The similarity or dissimilarity of the marks in their entireties We next consider whether Applicant’s and Registrant’s marks are similar when viewed in their entireties in terms of appearance, sound, connotation, and commercial Serial No. 88360870 - 10 - impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., 73 USPQ2d at 1689). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d at 1746 (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Accord Krim-Ko Corp. v. Coca-Cola Bottling 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.”) (citation omitted). The test under the first DuPont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar that confusion as to the source of the goods offered under the respective marks is likely to result. See In re i.am.symbolic, LLC, 123 USPQ2d at 1748; Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Inasmuch as the goods at issue are jacks and toy vehicles and accessories therefor, the average purchaser is an ordinary consumer. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, “our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of Serial No. 88360870 - 11 - the entire marks, not just part of the marks.” In re Ox Paperboard, LLC, 2020 USPQ2d 10878, *4 (TTAB 2020) (citing Stone Lion, 110 USPQ2d at 1161). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, 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. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s mark is . The registered mark is ROCKET BOX. Here, Registrant’s mark is fully incorporated within Applicant’s mark. Applicant argues that “this wording” (i.e., ROCKET BOX) “is a minimal element of the mark” being “much smaller in size” than “the stylized wording ‘Jacks,’” and “smaller than or at least no larger than the wording ‘Quality’ and the various sets of stars.” 7 TTABVUE 7. We agree that JACKS is the largest word in the mark, fully stretching the length of the circular design, even slightly beyond. There is no question that JACKS is a prominent visual portion of the mark; however, the impact of this element is greatly diminished because it is the generic name for the goods. Similarly the only other word QUALITY is at a minimum descriptive of the goods and, like JACKS, has been disclaimed. See, e.g., Cunningham v. Laser Golf, Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a Serial No. 88360870 - 12 - conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 751). So, while we do not ignore JACKS or QUALITY in the analysis, “the non-source identifying nature of the words and the disclaimers thereof constitute rational reasons for giving those terms less weight in the analysis.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018). We do not ignore these descriptive literal elements, but we accord them less weight than the apparently arbitrary ROCKET BOX literal element. As noted, Applicant has incorporated the entirety of Registrant’s mark in its own composite mark. Under such circumstances, the similarity of the marks increases. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. See China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar to opposer’s mark CHI both for electric massagers); Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray, conditioner and shampoo is similar to CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis Tenn., Inc. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ2d 105, 106 (CCPA 1975) (BENGAL and BENGAL LANCER for closely related goods found confusingly similar); In re Integrated Embedded, 120 USPQ 1504, 1513 (TTAB 2016) (citing In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for restaurant services specializing in pizza and PERRY’S for restaurant and bar services); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) Serial No. 88360870 - 13 - (EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); In re South Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing)). Notwithstanding the foregoing case law, we recognize that there is no explicit rule that marks are automatically similar where the entirety of the cited mark is incorporated in the junior mark. However, where, as here, there is no evidence of record to demonstrate that the cited mark is either conceptually or commercially weak (such as evidence of third party use or registration of marks identical or similar to the cited mark for identical or similar goods, as fully discussed above) the cited mark is entitled to the normal scope of protection accorded an inherently distinctive mark. Even if we were to assume that the cited mark is suggestive, it nonetheless remains inherently distinctive as applied to Registrant’s goods. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000) (word marks that are arbitrary, fanciful, or suggestive are “held to be inherently distinctive.”); Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (suggestive, arbitrary and fanciful marks are deemed inherently distinctive). And “if the mark is inherently distinctive, it is presumed that consumers will view it as a source identifier.” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1685 (Fed. Cir. 2010). The fact that the cited mark is subsumed by Applicant’s mark only increases the similarity between them, as does the fact that ROCKET BOX is the only arbitrary wording in Applicant’s mark, and positioned at the top of the mark. Serial No. 88360870 - 14 - As to the fonts in which the wording in Applicant’s mark is displayed, because the cited mark is registered in standard characters, it is not limited to any particular font style, size, or color. Trademark Rule 2.52(a). Registrant may display its mark in any of the fonts similar to those used by Applicant, including the block letters Applicant uses for ROCKET BOX. See, e.g., In re Viterra, 101 USPQ2d at 1908 (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard character form); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[T]he rights associated with a standard character mark reside in the wording per se and not in any particular font style, size, or color.”) (citing Citigroup, 98 USPQ2d at 1259). When a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Such is the case here with the wording ROCKET BOX. Nonetheless, we do not disregard the design elements of Applicant’s mark. Applicant argues that at least “five significant dissimilarities” involving the two additional words, two sets of star designs, and encompassing circle “outweigh the common wording and play a significant role in creating a different commercial impression.” 7 TTABVUE 8. As noted above, we assess not whether the marks can be distinguished in a side-by-side comparison, with a list of specific differences, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective Serial No. 88360870 - 15 - marks is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). Here, we are not persuaded that the descriptive literal elements and the additional simple design elements of multiple star sets and a large circle forming the background and general margins of the mark significantly change the commercial impression of Registrant’s ROCKET BOX. While an addition to a mark may be sufficient to avoid a likelihood of confusion if the marks in their entireties convey significantly different commercial impressions (see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression)) such is not the case here. In sum, although we have pointed to the identical portions of the marks, we acknowledge the fundamental rule that the marks must be considered in their entireties. See Jack Wolfskin, 116 USPQ2d at 1134 (Fed. Cir. 2015); Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 181 USPQ 272, 273-74 (CCPA 1974). We note the specific differences pointed out by Applicant. These differences, however, are outweighed by the similarities of the marks, particularly that the cited mark is wholly encompassed within Applicant’s mark. Thus, when comparing the marks overall, we find that they are similar in sound, meaning, connotation, and overall commercial impression. See In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, Serial No. 88360870 - 16 - 1554 (TTAB 1987) (Board held “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar.”). The first DuPont factor weighs in favor of finding a likelihood of confusion. C. The goods, trade channels, and classes of consumers The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration . . . ,” and the third DuPont factor concerns the “similarity or dissimilarity of established, likely-to- continue trade channels.” DuPont, 177 USPQ at 567. With regard to the goods, channels of trade, and classes of consumers, we must make our determinations based on the goods as they are identified in the application and cited registration, not on real-world conditions. See In re Detroit Athletic Co., 128 USPQ2d at 1052 (citing In re i.am.symbolic, llc, 123 USPQ2d at 1749); Stone Lion, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods of the parties] as related enough to cause confusion about the source or origin of the goods and services.”’ In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004). Serial No. 88360870 - 17 - The goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] . . . emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); DeVivo v. Ortiz, 2020 USPQ2d 10153, * 11 (TTAB 2020). As we have stated, “the test is not whether consumers would be likely to confuse these goods, but rather whether they would be likely to be confused as to their source.” In re I-Coat Co., LLC, 126 USPQ2d 1730, 1737 (TTAB 2018). Applicant’s goods are “tabletop games, namely, jacks.” Registrant’s goods are “toys, games and playthings, namely, toy vehicles and accessories therefor.” We find the goods to be inherently similar to the extent they are games and toys for children’s casual entertainment. Applicant concedes this much. See 7 TTABVUE 11 (“Although jacks and toy cars are both toys, that is where the similarities end.”) The Examining Attorney submitted website evidence showing that third-party toy manufacturers Schylling and Bella Luna Toys offer jacks as well as toy vehicles.11 Thus, in addition to the obvious similarity based on the goods being toys, consumers would not be unaccustomed to these types of toys coming from the same 11 October 17, 2019 Final Office Action, TSDR 5-9 (schylling.com) and 16-28 (bellalunatoys.com). Serial No. 88360870 - 18 - manufacturer. Indeed, the amazon.com webpage offering Applicant’s jacks contains two references to other Schylling toys (a board game and a paddle ball game), indicating that Schylling is the source of at least some other goods related to Applicant’s jacks.12 The Examining Attorney also submitted website evidence showing that third- parties offer both jacks and toy vehicles in the same trade channels and to the same classes of consumers.13 Applicant argues that these websites “do not support a finding that [Registrant’s] Hot Wheels Rocket Box toy cars and Applicant’s jacks travel in the same trade channels. To the contrary, the evidence shows that jacks are not sold in typical toy stores but only in specialty stores that do not carry Hot Wheels.” 7 TTABVUE 12. “While this may be true, it is largely irrelevant. The relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration, and not on real-world conditions.” In re Detroit Athletic Co., 128 USPQ2d at 1051-52. Applicant’s attack on this evidence is flawed because the question is not whether retailers sell both Applicant’s specific jacks and Registrant’s specific ROCKET BOX-branded die-cast Hot Wheels toy vehicles; instead, it is whether jacks, as generally described without limitation in the application, and toy vehicles, as generally described without limitation in the 12 See 4 TTABVUE 32-32 (Within the “Bargain Finds” box are “Schylling Tiddley Winks Board G…” and “Paddle Ball Game Schylling.” The bottom of the “Bargain Finds” box explains “View Bargain Finds related to this item.”). 13 July 19, 2019 Office Action, TSDR 6-7, 9-10 (crackerbarrel.com); 11, 22-23 (orientaltrading .com); 33, 36-38 (mastermindtoys.com); 40, 44-46 (tintoyarcade.com); and October 17, 2019 Final Office Action, TSDR 5-9 (schylling.com); 10-14 (bulktoystore.com); 16-25 (bellalunatoys .com). Serial No. 88360870 - 19 - registration, travel through the same channels of trade such that they would be encountered by the same or overlapping classes of customers. The website evidence adduced by the Examining Attorney reveals that the goods identified in Applicant’s application, as well as goods identified in the cited registration, may be offered via the same virtual marketplaces to all relevant classes of purchasers, i.e., ordinary consumers who purchase toys, games, and playthings.14 See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-73 (TTAB 2009) (website evidence shows same or overlapping channels of trade and classes of customers). In view of the above, the second and third DuPont factors concerning the relatedness of the respective goods, trade channels, and classes of consumer weigh in favor of a likelihood of confusion. D. Conditions of purchase We consider now the fourth DuPont factor, the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration, as well as the degree, if any, of sophistication of the consumers. See DuPont, 177 USPQ at 567. Purchaser sophistication or degree of care may tend to minimize likelihood of 14 Applicant states without explanation that mastermindtoys.com is “not located in the US and therefore provide[s] little if any evidentiary value.” 7 TTABVUE 12. The webpage is entirely in English, uses the dollar sign ($) indicating that prices may be in U.S. dollars, states that the “office is open Monday to Friday from 9am to 5pm Eastern time,” provides an “888” toll-free telephone number, and otherwise has no indicia that it is foreign. We therefore may rely on this webpage for whatever probative value it may have. Nonetheless, we note that mastermindtoys.com is not the only webpage on which we rely. Serial No. 88360870 - 20 - confusion; conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay Imps., 73 USPQ2d at 1695. Citing language from its own amazon.com customer review pages, Applicant contends that its “consumers do not buy jacks on an impulse,” rather, they are “older individuals [who] played jacks as children” and “exhibit at least some care in searching for jacks that resemble” ones from their youth. 7 TTABVUE 13. There is nothing in the nature of the goods that would suggest that their purchasers are particularly sophisticated or careful. See In re I-Coat Co., LLC, 126 USPQ2d at 1739. The standard of care is that of the least sophisticated potential purchaser. Stone Lion, 110 USPQ2d at 1163 (cited in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (“Board precedent requires our decision to be based on the least sophisticated potential purchasers.”)). In Stone Lion, the Federal Circuit held that the Board properly “focused on the sophistication of all potential customers of the parties’ services as they are recited in the application and registrations,” Stone Lion, 110 USPQ2d at 1162 (quotation omitted), not just the parties’ actual current customers, who the parties agreed were sophisticated. Id. We must do likewise here. The potential customers of the “tabletop games, namely, jacks” identified in the application are not limited to “older individuals [who] played jacks as children,” 7 TTABVUE 13, as suggested by Applicant. The record reveals that jacks is a children’s game which may be purchased at several online sites, including amazon.com where Applicant’s game is sold and where users may “Shop the Kids’ Store by age.” Request for Reconsideration, 4 Serial No. 88360870 - 21 - TTABVUE 32. Furthermore, because there are no price or similar limitations in either Applicant’s or Registrant’s identifications of goods, we must presume that ordinary and unsophisticated consumers of toys, games, and playthings will purchase Applicant’s jacks and Registrant’s toy vehicles and accessories therefor, which could be sold at any price to the “least sophisticated potential purchasers” for the identified goods. Stone Lion, 110 USPQ2d at 1163. Indeed, the record reveals that jacks are inexpensive and priced variously, for example, as low as $4.9915 and $5.19,16 with Applicant’s goods at $9.9917; while toy vehicles also may be inexpensive and priced variously, for example, as low as $2.4918 and $3.00,19 with Registrant’s goods at $5.87.20 Ordinary consumers of toys, games, and playthings such as jacks and toy vehicles are likely to exercise only ordinary care, and given the lack of price restrictions in the identifications and the nature of the games and toys as simple, transitory, and casual entertainment for children we find that they may buy these inexpensive items on impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is 15 October 17, 2019 Final Office Action, TSDR 5 (schylling.com). 16 July 19, 2019 Office Action, TSDR 11 (orientaltrading.com). 17 4 TTABVUE 32 (amazon.com). 18 October 17, 2019 Final Office Action, TSDR 7 (schylling.com). 19 4 TTABVUE 28 (amazon.com). 20 4 TTABVUE 27 (amazon.com). Serial No. 88360870 - 22 - increased because purchasers of such products are held to a lesser standard of purchasing care.”). We find the fourth DuPont factor to slightly favor a finding of likelihood of confusion. E. Fame of the cited mark Applicant argues that the fifth DuPont factor, “[t]he fame of the prior mark (sales, advertising, length of use),” DuPont, 177 USPQ at 567, “does not support a finding of likelihood of confusion” because “[t]here is no evidence that [Registrant’s cited] mark is famous.” 7 TTABVUE 13. We agree that there is no evidence of fame and find this DuPont factor to be neutral. In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). The purported lack of fame of Registrant’s mark, as argued by Applicant, is of little consequence. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). While proof of fame or market strength may support a finding of likelihood of confusion, its absence in an ex parte setting does not detract from that conclusion. This factor is therefore neutral. F. The nature and extent of any actual confusion and concurrent use The seventh and eighth DuPont factors (i.e., “[t]he nature and extent of any actual confusion” and “[t]he length of time during and conditions under which there has been concurrent use without evidence of actual confusion”, DuPont, 177 USPQ at 567), require us to look at actual market conditions, to the extent there is evidence of such conditions of record. In this regard, we consider all of the evidence of record that Serial No. 88360870 - 23 - may be relevant to the seventh and eighth DuPont factors. See In re Guild Mortg. Co., 2020 USPQ2d 10279 *6 (TTAB 2020). Applicant asserts that it “has been selling jacks under the [composite mark] for nearly four years” and that while both Applicant’s and Registrant’s “marks have been concurrently used for nearly four years,” Applicant “is unaware of any instances of confusion.” 7 TTABVUE 15. Applicant argues that “[a]bsent any evidence of actual confusion, these factors must weigh against a finding of likelihood of confusion.” Id. Applicant’s lack of testimony and evidence regarding the extent of its sales, advertising, and marketing, as well as the extent of Registrant’s sales, advertising, and marketing, prevents us from determining whether there has been a reasonable opportunity for confusion to occur. Moreover, in the context of this ex parte appeal there has been no opportunity to hear from Registrant about whether it is aware of any reported instances of confusion. We therefore have only half the story. Guild Mortg., 2020 USPQ2d 10279 *7 (citing In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Wilson, 57 USPQ2d 1863, 1869 (TTAB 2001); and In re Cruising World, Inc., 219 USPQ 757, 758 (TTAB 1983)). This constraint inherent in the ex parte context necessarily limits the potential probative value of evidence bearing on the seventh and eighth DuPont factors (compared with an inter partes proceeding where a registrant has an opportunity to present argument and evidence in response). Guild Mortg., 2020 USPQ2d 10279 at *8. Upon full consideration of the record, we find the seventh and eighth DuPont factors to be neutral. Serial No. 88360870 - 24 - G. The variety of goods on which a mark is or is not used Applicant references the ninth DuPont factor (i.e., “[t]he variety of goods on which a mark is or is not used (house mark, ‘family’ mark, product mark),” 177 USPQ at 567), for its assertion “that the term Rocket Box is commonly used when describing toys” and is therefore “weak and should be given a narrow scope of protection.” 7 TTABVUE 14, 15. These arguments are misplaced. Under section 2(d), confusion as to source is more likely when the senior user offers a wide variety of goods under the mark. See Owens-Illinois Glass Co. v. Clevite Corp., 324 F.2d 1010, 139 USPQ 505, 506 (CCPA 1963). While use on a wide variety of goods (such as with a house mark or family of marks) weighs in favor of likelihood of confusion, see e.g., In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 and n.11 (TTAB 2014) and In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001), Applicant has not cited any cases, nor are we aware of any, that stand for the reverse proposition. We find the ninth DuPont factor neutral.21 H. Laches attributable to owner of prior mark Under the tenth DuPont factor (i.e., “market interface,” DuPont, 177 USPQ at 567), Applicant asserts laches attributable to Registrant as indicative of lack of confusion. Specifically, Applicant argues that because it previously applied to register the composite mark on March 30, 2016, Registrant “has had at least constructive 21 We have properly and fully considered Applicant’s ninth-factor arguments and evidence of third-party “use” in the context of Applicant’s sixth-factor arguments, which are repeated and sprinkled throughout its briefs, that ROCKET BOX is “weak.” 7 TTABVUE 8, 10, 15, and 17; 10 TTABVUE 5 and 7. Serial No. 88360870 - 25 - notice of Applicant’s use of the [mark] but has taken no action,” and that Registrant has not otherwise objected to Applicant’s actual use of the mark since March 1, 2016. 7 TTABVUE 16. While the equitable principle of laches is available as an affirmative defense in an inter partes proceeding, see Section 19 of the Trademark Act, 15 U.S.C. § 1069, such an affirmative defense is “not applicable in ex parte proceedings.” In re Opus One, 60 USPQ2d at 1821. “However, under [DuPont] factor 10(d), evidence which would support an applicant’s affirmative defense[] of laches . . . in an inter partes proceeding between the applicant and the prior registrant might also be entitled to some probative value in the applicant’s ex parte appeal, at least to the extent that it ‘is indicative of a lack of confusion,’ i.e., to the extent that it shows that the prior registrant believes that confusion is not likely to result from applicant ’s use of the mark it seeks to register.” Id. at 1821. Accordingly, we consider whether Applicant’s prior application and coexistence with Registrant evinces a belief on Registrant’s part that no confusion is likely. As with the “actual confusion” argument addressed above, there is a dearth of evidence in the record regarding any interaction between Applicant and Registrant. The record does not reveal any communication from which we may infer Registrant’s approval or disapproval. Registrant’s silence could conceivably imply a lack of objection, as Applicant asserts, or it could imply a reservation of rights – rights Registrant did not have to assert, as Applicant’s prior and current applications were refused registration and were not published for opposition. As the Board pointed out in Opus One, if Serial No. 88360870 - 26 - Registrant has no objection to the issuance of federal registrations to Applicant, “there is available to applicant . . . a type of evidence which under [Du]Pont and subsequent case law, is entitled to great weight in the likelihood of confusion analysis, i.e., a valid consent agreement between applicant and registrant.” Id. at 1822. Absent such evidence, we will not impute to Registrant a belief that confusion is unlikely. This DuPont factor is therefore neutral. I. The extent to which applicant has a right to exclude others from use of its mark on its goods Applicant asserts under DuPont factor eleven that it “has obtained the right to exclude others from using [its composite mark] on jacks” due to “nearly four years of continuous use” and “success in the marketplace.” 7 TTABVUE 16. Applicant rests its position on common law rights and unspecified market success. However, the issue of prior use generally is not relevant in an ex parte appeal where the refusal of registration is based on the existence of a cited registration (“a mark registered in the Patent and Trademark Office,” 15 U.S.C. § 1052(d)) and not on priority of use. See, e.g., In re Dominick’s Finer Foods, Inc., 184 USPQ 507, 508 (TTAB 1974). See also In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1205 (TTAB 2009) (applicant’s “mere assertion of common-law use of its mark for ten years” was not sufficient “to establish that applicant ha[d] any significant right to exclude others from use of the mark.”) Moreover, Applicant’s lack of testimony and evidence regarding the extent of its sales, advertising, and marketing fails to establish any level – let alone an appreciable level – of consumer recognition. See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1285 (TTAB 2014) (“Applicant’s sales figures Serial No. 88360870 - 27 - and Applicant’s advertising and promotional expenditures are not sufficient to establish an appreciable level of consumer recognition. Importantly, there is no evidence that Applicant, in fact, has successfully asserted its rights so as to ‘exclude’ anyone else from using MCSWEET or any similar mark.”). Accordingly, we treat this factor as neutral. J. The extent of potential confusion (de minimus or substantial) Finally, Applicant argues under the twelfth DuPont factor that “to the extent some consumers could be confused, such confusion would be de minimus” inasmuch as Applicant “has limited the [identification of] goods” in the application so “there is no overlap” between its jacks and “the goods listed in the [cited] registration,” the goods are “not sold through the same [trade] channels,” and Registrant’s mark is “a weak tertiary mark” with a “descriptive connotation.” 7 TTABVUE 17. We disagree. As argued by Applicant, this essentially involves the balancing of several relevant DuPont factors rather than a separate consideration. We have already found that (1) the goods are related and inherently similar to the extent they are games and toys for children’s casual entertainment, (2) the goods are inexpensive and sold in the same or overlapping trade channels to the same or overlapping consumers who may purchase them on impulse, and (3) the cited mark is inherently distinctive, neither commercially nor conceptually weak, and wholly incorporated within Applicant’s mark. In view thereof, the potential for confusion cannot be deemed to be de minimus. Serial No. 88360870 - 28 - Accordingly, this DuPont factor is also neutral. K. Summary We have considered all of the arguments and evidence of record and all relevant DuPont factors. We find that the marks at issue are similar, and that Applicant’s jacks and Registrant’s toy vehicles are related goods which move in the same or overlapping trade channels, and are offered to the same class of purchasers who exercise only ordinary care and may purchase the inexpensive goods on impulse. As such, we conclude that Applicant’s mark, as used in connection with “tabletop games, namely, jacks,” so resembles the cited mark ROCKET BOX for “toys, games and playthings, namely, toy vehicles and accessories therefor,” as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act. III. Decision The refusal to register Applicant’s mark is affirmed.