Zynga, Inc.

Trademark Trial and Appeal BoardJul 16, 2012

No. 77894876 (T.T.A.B. Jul. 16, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: July 16, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Zynga, Inc. ________ Serial No. 77894876 _______ John M. Kim and Joshua J. Richman of IP Legal Advisors PC for Zynga, Inc. Anne Gustason, Trademark Examining Attorney, Law Office 117 (J. Brett Golden, Managing Attorney). _______ Before Bucher, Cataldo and Ritchie, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Zynga, Inc., filed an application to register on the Principal Register the mark CASINO WORLD (in standard characters) for the following goods: downloadable computer software for use on wireless devices and computers for transmission of information in the field of social networking, computer game software, video game software, and game related computer software applications for social networking; interactive video game programs; downloadable electronic game software and game related computer software applications for transmission of data and information in the field of social networking that may be accessed via the internet, computers and wireless devices; Ser. No. 77894876 2 computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information to third parties in the fields of virtual communities, electronic gaming, entertainment, and general interest via the internet or other communications networks in International Class 9.1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as intended to be used on or in connection with its goods, so resemble the mark CASINO WORLD, previously registered on the Principal Register in typed or standard characters for “dockside casino services” in International Class 41,2 as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs on the issue under appeal.3 1 Application Serial No. 77894876 was filed on December 16, 2009, based upon applicant’s assertion of its bona fide intent to use the mark in commerce. CASINO is disclaimed. The application originally recited services in International Class 41; however, applicant subsequently deleted those services. 2 Registration No. 2253856 issued on June 15, 1999. CASINO is disclaimed. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First renewal. 3 The exhibit submitted for the first time with applicant’s reply brief is manifestly untimely and will be given no consideration. See Trademark Rule 2.142(d); and In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703 n.2 (TTAB 1998). Ser. No. 77894876 3 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. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key, though not exclusive, 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, 27 (CCPA 1976). The Marks We turn to the first du Pont factor, i.e., whether applicant’s mark and registrant’s mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In this case, applicant’s mark, CASINO WORLD in standard characters, is identical to the mark in the cited registration, also in typed or standard characters, in every respect. Use of identical marks is a Ser. No. 77894876 4 fact which “weighs heavily against applicant.” See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984); and In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993). Accordingly, this du Pont factor heavily favors a finding of likelihood of confusion. The Goods and Services We turn then to a consideration of whether applicant’s goods are related to registrant’s services, bearing in mind that “even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to an assumption that there is a common source.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). See also Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (When both parties are using or intend to use the identical designation, “the relationship between the goods [and/or services] on which the parties use their marks need not be as great or as close as in the situation where the marks are not identical or strikingly similar”). See also In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). If the marks are the same, as in this case, it is only necessary that there be a viable relationship between the goods and services in order to support a finding of likelihood of confusion. See In re Ser. No. 77894876 5 Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Applicant’s goods are computer software that may succinctly be described as providing “online computer games playable on social networking websites, such as Facebook®.”4 Registrant’s services are “dockside casino services.” Because applicant seeks registration for computer game software without limitation as to genre, e.g., sports, puzzles, action/adventure, or role playing, its software must be presumed to provide games encompassing any genre, including games of chance and gambling games that one could play at a casino. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634, 1637-8 (TTAB 2009). As a result, applicant’s goods are related on the face of their identification to registrant’s services inasmuch as both provide games of chance and gambling games. In addition, the examining attorney has made of record printouts from third-party internet websites offering online social games that include gambling games. The following examples are illustrative: Symphony games is a boutique social and casino game software company. We specialize in multiplayer online games such as Poker, Mahjong and card games. 4 Applicant’s brief, unnumbered page 2. Ser. No. 77894876 6 We offer software licenses for online Poker, Backgammon, Mahjong, Chess, Checkers, Spades, Solitaire and many more. Play at casinos online, but before you do read some player casino reviews and you may find that the best US online casinos are the ones that accept payment and payout quickly and with no hassles; Symphonygames.com Social Games When you think about social games, what comes to mind? Bingo can be considered a social game where people gather to enjoy the game and initiate new friendships. Online slot playing is also a social game wherein online casinos afford players the opportunity to chat while playing. … But, online casinos are venues where social games are played. The only difference is that social gaming, in its purest form, may not include transactions. … ; Sunshine-Slots.com The World’s Mobile Playground Casino Games Blackjack Blackjack is one of the most popular casino card games in the world, and our mobile version will keep you playing for hours. Stand, hit, double down or split to get the highest bankroll. Do you have the skill to take the house’s money; Cellufun.com Casino City Our United States directory of gaming properties includes over 1500 casinos, horse tracks, dog tracks, resorts and cruise ships. Below is a list of states which have gaming with the number of gaming properties in parenthesis. … For information on over 2000 online gaming sites including online casinos, online poker rooms, and online bingo halls, click here to visit Casino City’s Online Gambling Directory. You can sort the directory by online popularity, bonus offers Ser. No. 77894876 7 or name. Enjoy slots, video poker, Texas hold 'em, roulette, blackjack, baccarat, craps, and bingo, all online. Casinocity.com When Online Gaming Community Meets Social Network – The FREE Social Network for the Online Gambling Community Over 1,700 new members are joining this Social Gaming Network Community every month because they want to be a part of the internet’s first and largest online gambling community meets social network. With forums, blogs, strategy guides, exclusive free poker tournaments with cash prizes, and a whole lot more, it is easy to see why so many people choose this FREE Social Gaming Network; Onlinegamingpro.com Aladdin’s Gold Casino With Aladdin’s Gold Casino, you do get many of the slot games that make up the majority of casino games available at other virtual casinos; but their focus is more upon the classic card and table games than anything else, which is an interesting change! … Although I would have liked to see the Arabian theme spill over a little more to the homepage, the subpages on the website are what you’d expect to see at a place called Aladdin’s Gold Casino. And, with some of the best virtual casino games available all in one place, you know you’re going to get a quality online casino experience when visiting Aladdin’s Gold Casino! Reviewed-casinos.com. This evidence suggests that gambling games of the type normally played in a “brick and mortar” casino are also available for online play over the internet on various websites, including websites geared toward social interaction among the players and observers as well as the Ser. No. 77894876 8 games themselves. As a result, we find that a viable relationship exists between applicant’s online computer games playable over social network websites and registrant’s dockside casino services. As a result, this du Pont factor also favors a finding of likelihood of confusion. Channels of Trade and Classes of Consumers We are not persuaded by applicant’s arguments that its goods travel in channels of trade that are separate and distinct from those in which registrant’s services may be encountered. Specifically, applicant argues that Gamblers and computer gamers are two very different types of consumers. Gamblers play games for the purpose of making money. They wager bets based on odds. They play cards and dice and slot machines. Consumers of casino services are found only in places where gaming is legal, namely, Las Vegas, Atlantic City and Native American Reservations. By contrast, consumers of online games on social networking platforms play games only for fun and to stay in touch with friends. They use the games to network with one another. The games are played on computers and mobile phones everywhere in this country where users can access the internet.5 However, applicant provides no evidence for its conclusory statement that enthusiasts of casino services are separate and distinct from online gaming enthusiasts. Nor does applicant provide any evidence to support its 5 Id. at 5-6. Ser. No. 77894876 9 position that consumers of casino services are motivated solely by the desire to win money whereas online gamers play solely for fun and friendship. Simply put, there is no evidence that consumers of registrant’s dockside casino services may not also be consumers of applicant’s computer programs for online social gaming. Moreover, the above- excerpted evidence suggests that players of both real and virtual games, including gambling games, are interested in both the social aspects of such games and the prospect of making a profit. Thus, the foregoing evidence suggests that applicant’s goods may be marketed to the consumers of registrant’s services, and that some of the consumers may indeed be the same. Based upon the foregoing, this du Pont factor also favors a finding of likelihood of confusion. Conclusion In light of the foregoing, particularly given that applicant’s mark is identical to the mark in the cited registration, and that a viable relationship exists between the goods and services, we find that a likelihood of confusion exists between the applied-for mark and the mark in the cited registration. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and In re Hyper Shoppes (Ohio), Inc., 837 F.2d Ser. No. 77894876 10 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Furthermore, to the extent we have any doubt on the issue of likelihood of confusion, we have resolved our doubt, as we must, against applicant. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992); Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004). It is well established that one who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril. See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308 (TTAB 1976). Decision: The refusal of registration is affirmed.