Francine J. Pine

Trademark Trial and Appeal Board

Mar 6, 2003

No. 76055646 (T.T.A.B. Mar. 6, 2003)

Mailed:
March 6, 2003
Paper No. 13
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Francine J. Pine
________
Serial No. 76/012,710
Serial No. 76/055,646
_______
Jeffrey A. Pine of Baniak, Pine & Gannon for Francine J.
Pine.
Glenn Mayerschoff, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Chapman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
In the above-captioned applications, applicant seeks
registration on the Principal Register of the marks TIC-
TAC-21 (in typed form)1 and TIC TAC POKER (in typed form,
1 Serial No. 76/012,710, filed March 29, 2000. The application
is based on intent to use, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76/012,710 and 76/055,646
2
POKER disclaimed).2 In both applications, applicant’s goods
are identified as “gaming equipment, namely, gaming,
gambling or slot machines, with or without video output.”
In each of the applications, the Trademark Examining
Attorney has issued a final refusal of registration on the
ground that applicant’s mark, as applied to applicant’s
goods, so resembles the mark TIC TAC DISCO, previously
registered on the Principal Register (in typed form) for
goods identified in the registration as “currency and/or
credit operated slot machines and gaming devices, namely,
gaming machines,”3 as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d).
Applicant has appealed the final refusal in each
application. The appeals have been fully briefed, but no
oral hearing was requested. Because the appeals involve
common questions of law and fact, we shall decide them in
this single opinion.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
2 Serial No. 76/055,646, filed May 24, 2000. The application is
based on intent to use, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
3 Registration No. 2,435,675, issued March 13, 2001.
Ser. Nos. 76/012,710 and 76/055,646
3
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We find that applicant’s goods, as identified in the
respective applications, are legally identical to the goods
identified in the cited registration, and that they are
marketed in the same trade channels and to the same classes
of purchasers. Applicant does not contend otherwise.
We next must determine whether applicant’s marks and
the cited registered mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
Ser. Nos. 76/012,710 and 76/055,646
4
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Finally, where, as in the
present case, the marks would appear on legally identical
goods, the degree of similarity between the marks which is
necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ 1698 (Fed. Cir. 1992).
In terms of appearance and sound, applicant’s marks
and the cited registered mark obviously are identical to
the extent that they begin with TIC TAC (or the equivalent
TIC-TAC), yet dissimilar to the extent that applicant’s
marks end in 21 and POKER, respectively, and the cited
registered mark ends in DISCO.
In terms of connotation and overall commercial
impression, we find that applicant’s marks TIC-TAC-21 and
TIC TAC POKER, as applied to gaming machines, would be
Ser. Nos. 76/012,710 and 76/055,646
5
understood to refer to the theme, subject matter or object
of the game depicted or featured on the gaming machines
and/or the manner in which the games are played, i.e., as a
combination of the games “tic-tac-toe” and, respectively,
“21” (or blackjack),4 and poker.
The term DISCO in the cited registered mark connotes
“discotheque” rather than a gambling game like “21” or
poker. However, when viewed as a whole, the cited
registered mark, like applicant’s marks, connotes that the
theme or object of the game featured on registrant’s gaming
machines involves the alignment of symbols in a manner
suggested by the game “tic-tac-toe.” We find that this
shared “tic-tac-toe” theme in the marks renders the marks
more similar than dissimilar, and outweighs the specific
differences in the marks. Even if the specific differences
in the marks are perceived and recalled, purchasers are
likely to assume that the games bearing these marks are all
4 We take judicial notice that “21” is another name for the game
of blackjack; “blackjack” is defined, inter alia, as “a card game
the object of which is to be dealt cards having a higher count
than those of the dealer up to but not exceeding 21 – called also
twenty-one, vingt-et-un.” Webster’s Ninth New Collegiate
Dictionary at 156 (1990). The Board may take judicial notice of
dictionary definitions. See, e.g., University of Notre Dame du
Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); see also
TBMP §712.01.
Ser. Nos. 76/012,710 and 76/055,646
6
part of a series of “tic-tac-toe”-themed gaming machines
produced by a single source.
This conclusion is bolstered by the fact that, on this
record, registrant is the only entity in the marketplace
employing a “tic-tac-toe” theme in connection with gaming
machines. Applicant asserts that there are numerous third-
party registrations and applications involving “tic-tac”
marks, but that assertion is unsupported by the record.
The Board does not take judicial notice of third-party
registrations and applications residing in the Patent and
Trademark Office. See In re Smith and Mehaffey, 31 USPQ2d
1531 (TTAB 1994); In re Hub Distributing, Inc., 218 USPQ
284 (TTAB 1983); In re Duofold, Inc., 184 USPQ 638 (TTAB
1974). In any event, it is settled that even if evidence
of the existence of third-party registrations and
applications is properly made of record, such evidence does
not prove that the cited registered mark is weak or
entitled to a narrowed scope of protection in our
likelihood of confusion analysis. See Olde Tyme Foods Inc.
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
In summary, we have reviewed the evidence of record
pertaining to the du Pont factors, and conclude that a
likelihood of confusion exists. We find that applicant’s
Ser. Nos. 76/012,710 and 76/055,646
7
marks are more similar than dissimilar to the cited
registered mark, and that they certainly are sufficiently
similar to the cited registered mark that source confusion
is likely to result if these marks were to be used on the
identical goods involved in this case. Any doubt as to
this conclusion must be resolved against applicant. See In
re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register in each application
is affirmed.
- o O o –
Bucher, Administrative Trademark Judge, dissenting:
In its appeal briefs, applicant implies that there is
widespread third-party usage of the “tic tac” formative in
conjunction with the naming of gaming machines having
similarities to the tic tac toe game. (Applicant’s briefs,
pp. 4 – 7) Unfortunately, I have to agree with the
majority that applicant has failed herein to document this
charge with copies of federal trademark registrations,
Internet evidence of common law usage, etc. Hence, we have
no probative evidence as to the du Pont factor focusing on
Ser. Nos. 76/012,710 and 76/055,646
8
the relative strength of the cited mark, or the prevalence
of the “tic tac” formative within trademarks used by other
manufacturers/merchants of gaming machines.5
With the diminished standard on similarity of marks
that flows from having legally-identical goods, the instant
decision turns on one’s treatment of the first du Pont
factor: the confusing similarity of the respective marks.
In this context, I take judicial notice of several
dictionary entries:
tick-tack-toe n. 2. a children’s game consisting
of trying, with the eyes shut, to bring a pencil
down upon one of a set of circled numbers, as on a
slate, the number touched being counted as a
score.[1865-70, imit. of sound, as of bringing a
pencil down on slate; see TICKTACK]. The Random
House Dictionary of the English Language (1st Ed.
1987).
This older and less familiar game of “tick-tack-toe”
(or “tic-tac-toe” or “tic tac toe”) got its name from the
compound word “ticktack” (or “tictac”):
tick•tack n. 1. a repetitive sound, as of
ticking, tapping, knocking or clicking … -- v.i.
3. to make a repeated ticking or tapping sound…
Also, tictac. The Random House Dictionary of the
English Language (1st Ed. 1987).
Moving quickly from 19th Century slate to 21st Century
electronic games, a mark having a “tic tac” formative may
5 du Pont factor 6: “The number and nature of similar marks
in use on similar goods.”
Ser. Nos. 76/012,710 and 76/055,646
9
well suggest a game of blind chance (“with the eyes shut”)
where one counts the score upon hearing the repetitive
sounds (“tick tack”) of the gaming machine’s soundtrack.
tick-tack-toe n. 1. a simple game in which one
player marks down only X’s and another only O’s,
each alternating in filling in any of the nine
compartments of a figure formed by two vertical
lines crossed by two horizontal lines, the winner
being the first to fill in three marks in any
horizontal, vertical, or diagonal row. The Random
House Dictionary of the English Language (1st Ed.
1987).
This entry reflects the game of “tic-tac-toe” (or “tic
tac toe”) with which we are more familiar. Based on this
description, marks for gambling machines having a “tic tac”
formative may well suggest something about the pattern of
the active windows or the playing grid, or even a
suggestion that the game on this slot machine contains an
element of skill on the part of the player.
Using the latter interpretation, it is unlikely that
these microprocessor-controlled slot machines involve games
of alternate X’s and O’s placed into nine compartments. In
either case, it appears from these dictionary entries that
the etymological roots of the term “tic tac” predated the
simple game we all grew up with, and has retained
significance within the gambling industry.
This excursion into the historical origins and current
usage of the term “tic tac” suggests to me: (1) that
Ser. Nos. 76/012,710 and 76/055,646
10
registrant’s consumers and applicant’s potential consumers
(e.g., large gambling enterprises) will accord little
source-indicating significant to the term “tic tac,” and
(2) that no one vendor of gaming machines should have a
monopoly on the “tic tac” designation.
In speaking to this point, applicant argues
consistently that the term “tic tac” should receive no more
(and arguably less) emphasis than the other wording in
these composite marks. Contrariwise, the Trademark
Examining Attorney argues that the term “tic tac” is
clearly the dominant term in these composite marks.6
As to the third word added to each mark after the “tic
tac” designation, applicant argues that words like DISCO
and POKER7 are arbitrary and hence serve as the most
prominent source indicating matter in this composite. By
contrast, the Trademark Examining Attorney argues that the
third word is less dominant – that the word “Poker” is
merely descriptive and that the word “Disco” is suggestive.
6 The majority finds that because these marks convey a
“shared ‘tic-tac-toe’ theme,” purchasers are likely to assume a
single source with “tic tac” formatives. Hence, the majority
accords registrant extremely broad proprietary rights in the “tic
tac” designation.
7 After initially arguing a disclaimer was not appropriate,
applicant nonetheless complied with the requirement of the
Trademark Examining Attorney to disclaim the word “Poker.”
Ser. Nos. 76/012,710 and 76/055,646
11
Conceding that “[t]he term DISCO in the cited
registered mark connotes ‘discotheque’ rather than a
gambling game like ‘21’ or poker,” the majority herein
nonetheless concludes that TIC-TAC-21 and TIC TAC POKER are
likely to be confused with TIC TAC DISCO after conducting a
comparison of these respective marks based upon the trilogy
of appearance, sound and meaning. Based upon the stated
logic, presumably the majority would also find that
hypothetical marks as disparate as TIC TAC CASH, TICK-TAC-
TWO, TIC TAC HOLD’EM and TIC TAC NOEL applied to electronic
gaming devices would also result in a likelihood of
confusion with registrant’s TIC TAC DISCO.
Employing a somewhat convoluted analysis, the majority
finds that applicant’s marks will be “understood to refer
to the theme, subject matter or object of the game depicted
or featured on the gaming machines and/or the manner in
which the games are played, i.e., as a combination of the
games “tic-tac-toe” and, respectively, “21” (or blackjack),
and poker.” To be consistent, then, I assume that
potential consumers of gaming machines marketed under
registrant’s mark, will, with the same ease, likely think
of TIC TAC DISCO as a combination of tic-tac-toe and disco
dancing, while forming the same commercial impression as if
Ser. Nos. 76/012,710 and 76/055,646
12
the mark were TIC TAC plus any well known designation for a
traditional playing card game, parlor game, etc.
I would argue that one does not need to adopt
completely applicant’s relative weighing of the respective
elements of its composites (i.e., arguably “tic tac” should
receive decidedly less emphasis than the other wording in
these composite marks) to be uncomfortable with the
majority’s methods and results herein:
(1) As to methodology, if the first and second portions of
these composite marks are accorded equal prominence,
and the respective marks are all considered in their
entireties, how can one find that TIC TAC DISCO has a
confusingly similar overall commercial impression to
TIC TAC POKER and to TIC-TAC-21?
(2) As to results, should Anchor Gaming’s single
registration for its TIC TAC DISCO nickel slot
machines be able to preclude all other gaming machine
manufacturers and/or merchants from adopting any mark
containing a “Tic Tac” formative?
Accordingly, given the fact that I do not find the
cited mark to be confusingly similar to applicant’s marks,
I would reverse the refusals of the Trademark Examining
Attorney and send these marks to publication in the
Trademark Official Gazette for potential oppositions.