Nintendo of America, Inc.v.Adar Gold

Trademark Trial and Appeal Board

May 31, 2011

No. 91178130 (T.T.A.B. May. 31, 2011)

Hearing Date: February 16, 2011

Mailed: May 31, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Nintendo of America, Inc.
v.
Adar Golad
_____

Opposition No. 91178130
To Application Serial No. 78817267
_____

John W. Crittenden of Cooley LLP, for Nintendo of America,
Inc.

Erik M. Pelton of Erik M. Pelton & Associates PLLC, for Adar
Golad.
_____

Before Bergsman, Ritchie, and Wolfson, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On February 17, 2006, applicant, Adar Golad,
applied to register the mark FLASHBOY in standard character
form on the Principal Register for “plug and play
interactive video games of virtual reality comprised of
computer hardware and software,” in International Class 9
and “hand-held units for playing video games and electronic
games, namely, stand alone video game machines,” in
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178130
2
International Class 28. The application is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce.
On June 29, 2007, opposer, Nintendo of America, Inc.,
opposed the registration of applicant’s mark on the ground
that applicant’s mark is likely to cause confusion with
opposer’s Registration No. 1622675 for the mark GAMEBOY for
“game equipment, namely, electronic game equipment for
playing video games and video game programs; toys, namely,
electronic memory device toys,” in Class 28,1 among others.
In its notice and amended notice of opposition, opposer
alleges that it “owns numerous U.S. trademark registrations
in International Class 28” which include the term “BOY,”
i.e., GAME BOY ADVANCE, GAME BOY POCKET, GAME BOY ADVANCE
VIDEO, and LIGHT BOY, among others. (Am’d Notice at 4).
Opposer maintains that applicant’s mark is
“substantially similar” to opposer’s previously registered
marks and is likely to cause confusion in violation of
Section 2(d) of the Trademark Act. (Am’d Notice at 17-24).
Opposer further alleges that the marks are “identical in
their dominant components” and therefore applicant’s mark is
“likely to cause dilution” of opposer’s pleaded marks.
(Am’d Notice at 25-33). However, since opposer did not

1 Registered November 13, 1990, based on first use and first use
in commerce on June 2, 1989. Sections 8 and 15 accepted and
acknowledged. Renewed.
Opposition No. 91178130
3
pursue the dilution ground on brief, we consider it to be
waived.
Finally, opposer added a cause of action via amended
notice, filed after discovery was taken, asserting that
applicant did not have a bona fide intent to use the mark in
commerce when he filed the application “as shown by the fact
that he has no documents that evidence such intent either at
or around the time of filing the Application or to date.”
(Am’d Notice at 36).
Applicant denied the salient allegations of the
amended notice of opposition. Both parties filed briefs,
and opposer filed a reply brief. Applicant requested an
oral hearing, which was presided over by this panel.
We consider the pleaded and tried grounds of (i)
priority and likelihood of confusion, and (ii) lack of bona
fide intent to use the applied-for mark.
The Record
The record consists of the pleadings; the file of the
involved application; and the following:
1. The testimonial deposition of George S. Harrison,
opposer’s former Senior Vice-President of Marketing
and Corporate Communications, taken during opposer’s
trial period on June 23, 2009, together with extensive
exhibits thereto, some of which have been labeled
confidential;
Opposition No. 91178130
4
2. Opposer’s four notices of reliance on
a. Applicant’s responses to opposer’s first set of
interrogatories.
b. Copies of opposer’s GAME BOY and other trademark
registrations, specifically, GAME BOY ADVANCE,
GAME BOY ADVANCE VIDEO, GAME BOY POCKET, and LIGHT
BOY prepared by the USPTO showing both the current
status of and title to the registrations.2
c. A copy of a nonprecedential TTAB decision rendered
in Opposition No. 91163873.3
d. Applicant’s responses to opposer’s second set of
interrogatories.
e. Applicant’s responses to opposer’s second set of
requests for production of documents.
3. Applicant’s two notices of reliance on
a. Third-party registrations containing the term
“BOY.”
b. Applicant’s responses to opposer’s discovery
requests, pursuant to Rule 2.120(j)(5); 37 CFR

2 We note that the registrations submitted with opposer’s June
26, 2008 notice of reliance do not match exactly the
registrations pleaded in the notice or the amended notice of
opposition. However, we have considered them because applicant
has not objected to the inconsistency. Therefore, the notice of
opposition is deemed amended to conform to the evidence under
FRCP 15(b). Furthermore, as will be discussed herein, the
applicable registration that we will consider for likelihood of
confusion, Registration No. 1622675 for GAMEBOY, was both pleaded
and introduced into evidence.
Opposition No. 91178130
5
§ 2.120(j)(5), which provides that “Written
disclosures, an answer to an interrogatory, or an
admission to a request for admission, may be
submitted and made part of the record only by the
receiving or inquiring party except that, if fewer
than all of the written disclosures, answers to
interrogatories, or fewer than all of the
admissions, are offered in evidence by the
receiving or inquiring party, the disclosing or
responding party may introduce under a notice of
reliance any other written disclosures, answers to
interrogatories, or any other admissions, which
should in fairness be considered so as to make not
misleading what was offered by the receiving or
inquiring party.”
c. Dictionary definitions for “game,” “boy,” and
“flash.”
d. Printouts from the USPTO and World Intellectual
Property Organization databases showing other
trademark registrations owned by applicant.
e. Internet printouts from the toy company run by
applicant.

3 While both parties relied on nonprecedential cases in making
their respective arguments, we note that nonprecedential cases
are by their nature not binding on the Board.
Opposition No. 91178130
6
Priority and Standing
As a result of opposer’s submission of status and title
copies of its GAME BOY registration (No. 1622675), among
others, opposer has established its priority as well as its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
As mentioned supra, for purposes of our likelihood of
confusion analysis, we will consider the applicable du Pont
factors as to pleaded Registration No. 1622675, for GAME
BOY, which has the most relevant goods and most similar
mark. If we find a likelihood of confusion as to this mark,
then our analysis with regard to the others would be moot.
Opposition No. 91178130
7
Similarly if we do not, then we would not find it as to the
others either. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
Fame
We turn first to the factor of fame because this factor
plays a dominant role in cases featuring a famous or strong
mark. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Famous
marks are accorded more protection precisely because they
are more likely to be remembered and associated in the
public mind than a weaker mark. Id. A famous mark is one
“with extensive public recognition and renown.” Id. See
also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005).
In determining whether a mark is famous, we may
consider relevant factors such as sales and revenue. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002); Blue Man Productions Inc. v.
Tarmann, 75 USPQ2s 1811, 1817 (TTAB 2005). In his
deposition, Mr. George S. Harrison, opposer’s former Senior
VP of Marketing and Corporate Communications, testified to
various sales and advertising figures for GAME BOY hardware
and software over the years. Some of the figures were
submitted under the designation “Confidential,” and we are
Opposition No. 91178130
8
not able to disclose them publicly, although we note that
they are large under any standard. Other numbers we can set
forth as follows. Game Boy was first introduced as a
“handheld electronic gaming device” in 1989. (Harrison
depo. at 11 and 28). Mr. Harrison estimated based on
worldwide sales reports that approximately 185.48 million
Game Boy units were sold in the United States in the time
period 1989 through 2005. (Harrison depo. at 54 and Ex. N).
Advertising for Game Boy products in the time period 2000 to
2005 alone totaled in the hundreds of millions of dollars.
Id., and Ex. S. Opposer presented evidence of
advertisements in major national publications, such as
Rolling Stone, Nikelodeon, Marvel Comics Jr., Boys’ Life,
Junior Scholastic, Vibe, and Disney Adventures, throughout
the period 1989 to the present. Id. at 39 and Ex. F. Mr.
Harrison also testified that opposer has, over the years,
touted the GAME BOY mark and associated products widely, in
opposer’s own publication, Nintendo Power magazine, which is
sold at newsstands and by subscription, to about 400,000
people annually. Id. at 32-33 and Ex. D.
Furthermore, opposer submitted dozens of news articles
via the Harrison deposition, discussing the reputation and
fame of its Game Boy device and software cartridges, from
periodicals and newspapers such as The New York Times, The
Opposition No. 91178130
9
Chicago Sun Times, and others mentioned below.4 Excerpts
include the following:
“Essentially an upgraded version of the Super
Game Boy accessory for the Super Nintendo of the
early ‘90s, the Game Boy Player is an adapter
that allows three generations of Game Boy games
to be played on the GameCube. The player easily
attaches to the bottom of the GameCube through an
expansion port and plays through a regular
controller.” Orange County Register July 24,
2003.

“A new video game for Nintendo’s Game Boy Advance
may bring meaning to the parental command, ‘Go
play outside.’” The Associated Press State and
Local Wire/Business News August 13, 2003.

“A new version of Nintendo’s handheld Game Boy,
which has sold 150 million units since 1989 to
Pokemon-crazed kids and bored travelers, is being
updated to reflect consumers’ increased
expectations as well as stay ahead of new
competition from games played on cellphones.” USA
Today January 7, 2003.

“Nintendo of America announced three new seizures
of counterfeit Game Boy games in China, bringing
the number of anti-piracy raids against illegal
manufacturers and retailers to 135 in that country
alone in 2002.” CBSMarketWatch February 11, 2003.

“Nintendo’s new portable video game system, the
DS, hits stores today with the uneviable task of
replacing the company’s ubiquitous Game Boy.”
Tampa Tribune November 21, 2004.

We conclude that opposer has shown significant market
exposure, revenue, and overall fame amongst the relevant
public. The evidence clearly establishes that GAME BOY is a

4 These articles are relevant and admissible to show what others
are writing about opposer, and that opposer and its mark have
been the subject of unsolicited publicity as well as extensive
advertising.
Opposition No. 91178130
10
famous mark in connection with video game hardware and
software. This fifth du Pont factor strongly favors
opposer.
The Goods and Channels of Trade
The goods listed in the application are “plug and play
interactive video games of virtual reality comprised of
computer hardware and software,” in Class 9 and “hand-held
units for playing video games and electronic games, namely,
stand alone video game machines,” in Class 28. The goods
listed in opposer’s Registration No. 1622675 are “game
equipment, namely, electronic game equipment for playing
video game programs; toys, namely, electronic memory device
toys” in Class 28. We find that there is substantial
overlap between the goods in Class 28, and they are legally
identical. We also find, based on the testimony of Mr.
Harrison, and the exhibits thereto, as well as exhibits
contained in applicant’s second notice of reliance, that
there is a substantial relationship between the video games
included in applicant’s class 9 identification of goods, and
the equipment used to play those games. See Harrison depo.
at 11 (“The Game Boy is a handheld electronic gaming device
that takes individual software cartridges and displays the
games for play on a self-contained screen on the hardware
itself.”) See also Id. at Ex. A and B; and Appl’s second
Opposition No. 91178130
11
Notice of Reliance. Accordingly, the goods are in-part
legally identical and otherwise substantially related.
Because the goods described in the application and the
opposer’s registration are in part identical, we must
presume that the channels of trade and classes of purchasers
are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). In other words, we conclude that the channels
of trade and classes of purchasers of the parties’ goods are
the same. These second and third du Pont factors heavily
favor finding a likelihood of consumer confusion.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that
Opposition No. 91178130
12
the more similar the goods at issue, the less similar the
marks need to be for the Board to find a likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
This is especially true in the case of a famous mark, which
enjoys a “wide berth” of protection. See Kenner Parker Toys
Inc. v. Rose Arts Industries, Inc., supra, 22 USPQ2d 1453,
1456.
In comparing the marks, we are mindful that 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 so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). In this case, the average customer is an ordinary
consumer who plays hand-held video games.
Opposition No. 91178130
13
Opposer, in its brief, claims a family of marks based
on the common term “BOY.” (Opposer’s Brief at 8). A family
of marks is a group of marks having a recognizable common
characteristic, wherein the marks are composed and used in
such a way that the public associates not only the
individual marks, but the common characteristic of the
family, with the trademark owner. Simply using a series of
similar marks does not of itself establish the existence of
a family. There must be recognition among the purchasing
public that the common characteristic is indicative of a
common origin of the goods. It is thus necessary to
consider the use, advertisement, and distinctiveness of the
marks, including assessment of the contribution of the
common feature to the recognition of the marks as of common
origin. J & J Snack Foods Corp. v. McDonald's Corp., 932
F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
Recognition of a family of marks is achieved when the
pattern of usage of the common element is sufficient to be
indicative of the origin of the family. Id.
In the present case, opposer has not provided
sufficient evidence that opposer promotes a group of marks
for which the common characteristic is the term “BOY.”
Neither the Harrison deposition, the exhibits thereto, nor
the notices of reliance establish a pattern of promotion or
recognition among the purchasing public that opposer has, in
Opposition No. 91178130
14
fact, established a family of marks based on the term “BOY.”
Several articles and advertisements refer to the marks “GAME
BOY” and “GAME BOY ADVANCE” together. However, we accept
that, if anything, opposer’s evidence has pointed to a
“family” of marks based on the term “GAME BOY” not just the
term “BOY,” a point that was not argued by opposer (and
which is in any event the same as the mark we analyze,
herein). (Harrison depo. at Ex. E and F).5 Accordingly, we
will we not undertake our analysis of likelihood of
confusion as to a family of marks, but rather solely as to
the mark GAME BOY, as discussed supra.
Both opposer’s mark and applicant’s consist of two
words, of which the second is “BOY.” The first word in
opposer’s mark is “GAME,” which is descriptive of the
“electronic game equipment for playing video games” for
which it is registered. The first word in applicant’s mark
is “FLASH.” Applicant has submitted a definition of “flash”
as meaning “of sudden origin and short duration.”6
Applicant has also admitted to other definitions of the term
“flash.” In Interrogatory No. 5, opposer asked, “What about
your product does the word FLASH describe or signify?”
Applicant responded “In addition to the general objections
above, Applicant objects to this Interrogatory as requesting

5 Mr. Harrison testified that he doesn’t even believe the LIGHT
BOY product is “for sale” anymore, as it would be “obsolete.”
(Harrison depo. at 88).
Opposition No. 91178130
15
materials which are publicly available, namely common
dictionary and reference materials. Notwithstanding and
without waiving these objections, Applicant provides the
following response: The product and its features are quick,
fast, or speedy.”
We note that another definition included in applicant’s
second notice of reliance defines “flash memory” as “a
computer memory chip that retains its data even without a
connection to a power source.”7 Mr. Harrison also gave a
definition of the term “flash memory” at his deposition, in
response to a question, answering, “flash memory is a form
of short-term memory that can be used in video game
products.” (Harrison depo. at 74). Used in the context of
video games, we find the definition of “flash memory” to be
applicable here. Consumers are likely to see the mark FLASH
BOY, and believe that it is a version of GAME BOY intended
to be used on or in connection with flash memory.
Alternatively, they may believe that FLASH BOY is a
“speedier” version of GAME BOY. In any event, we find that
consumers are likely to find the commercial impressions of
the marks are similar. This is particularly true since the
goods overlap, and since GAME BOY enjoys the “wide berth” of
fame. Kenner Parker Toys, Inc. v. Rose Art. Ins., Inc.,
supra, 22 USPQ2d 1453, 1456

6 Merriam-Webster (2010).
Opposition No. 91178130
16

7 Id.
Opposition No. 91178130
17
(Fed. Cir. 1992).
Applicant argues that the term “BOY” is suggestive,
however, in that it has been incorporated by numerous third-
parties in their trademark registrations in Class 28.
In this regard, applicant submitted approximately 19 use-
based third-party registrations in Class 28 that incorporate
the term “BOY.” The list includes: TOUCH BOY, ASTRO BOY,
LOST BOYS, COWBOY UP, COWBOY, BATTERY BOYZ, WHITEBOY, RED
BOY RECORDS, HELLBOY, PIN BOY and design, JIMMY NEUTRON BOY
GENIUS, GOD’S BOY, SHARK BOY, CITY BOY, BOYNQ, WILDBOYZ,
HARDYBOYZ, PAPERBOYZ, and STEAM BOY. Some of the
registrations, although in Class 28, do not include video-
game-related products. Others, although incorporating the
term “BOY,” are for dissimilar marks, using the term as part
of a phrase, or with a “Z.” Finally, third-party
registrations have little probative value because they are
not evidence that the marks are in use on a commercial scale
or that the public has become familiar with them. See Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ
462, 463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark
Office). See also In re Hub Distributing, Inc., 218 USPQ
284, 285 (TTAB 1983).

[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party (sic)
registration evidence proves nothing
Opposition No. 91178130
18
about the impact of the third-party
marks on purchasers in terms of dilution
of the mark in question or conditioning
of the purchasers as to their weakness
in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.
Applicant did not submit any supporting evidence of
third-party use of the term “BOY” in connection with video-
game products. We do not find the term to be descriptive
when used in connection with opposer’s or applicant’s goods.
Rather, as stated above, since we find the mark GAME BOY to
be famous, applicant’s use of the mark FLASH BOY on the same
goods is likely to be viewed by consumers as another version
of the famous GAME BOY electronic game.
The terms “GAME” and “FLASH” do not look or sound
alike. However, we find that the dissimilarities in sight
and sound between opposer’s and applicant’s marks are
outweighed by the similarities in commercial impression,
especially in light of fame of the GAME BOY mark, and
considering the overlap in the goods. Accordingly, this
first du Pont factor weighs in favor of finding a likelihood
of confusion.
Consumer Sophistication
Opposer urges us to consider consumer sophistication.
In this regard, as with the other du Pont factors, we are
bound by the parties’ respective identifications of goods.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he
Opposition No. 91178130
19
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.” [citations omitted]).
We have no doubt that applicant’s “plug and play
interactive video games of virtual reality comprised of
computer hardware and software,” and its “hand-held units
for playing video games and electronic games, namely, stand
alone video game machines,” could be sold to unsophisticated
consumers. Presumably opposer’s identical goods would be as
well. As indicated above, the average customer is an
ordinary consumer who plays hand-held video games. Indeed
Mr. Harrison testified in his deposition that 60-65% of
those who use opposer’s GAME BOY goods are “under age 18.”
(Harrison depo. at 75). We deem this fourth du Pont factor
to favor opposer.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
the goods overlap and are otherwise substantially related,
and are likely to be marketed through the same channels of
trade to generally unsophisticated consumers. Opposer’s
Opposition No. 91178130
20
GAME BOY mark is famous, such that the mark is strong
despite the suggestive nature of GAME, and the marks have a
similar commercial impression. Accordingly, we find a
likelihood of consumer confusion between opposer’s mark GAME
BOY and applicant’s mark, FLASH BOY for the applied-for
goods.
Lack of Bona Fide Intent to Use
Next, we consider opposer’s claim that applicant lacked
a bona fide intent to use the mark FLASH BOY for the
applied-for goods in commerce at the time he applied to
register it. “A determination of whether an applicant has a
bona fide intention to use the mark in commerce is an
objective determination based on all the circumstances.”
Boston Red Sox v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008),
citing Lane Ltd. v. Jackson Intl. Trading Co., 33 USPQ2d
1351, 1355 (TTAB 1994). “Opposer has the initial burden of
demonstrating by a preponderance of the evidence that
applicant lacked a bona fide intent to use the mark on the
identified goods. The absence of any documentary evidence
on the part of an applicant regarding such intent
constitutes objective proof sufficient to prove that the
applicant lacks a bona fide intention to its use its mark in
commerce.” Id. at 1587, citing to Commodore Electronics
Ltd. V. CBM Kabushiki Kaisha Opp., 26 USPQ2d 1503, 1507
(TTAB 1993). In response to document requests, applicant in
Opposition No. 91178130
21
that case asserted he had no documents concerning trademark
searches and investigations nor any advertising or
promotional materials that he intended to use. The Board
found this evidence, as presented by opposer, satisfied
opposer’s prima facie burden, which applicant did not rebut.
In its responses to interrogatories and document
requests, applicant here made clear that he did not, at the
time of filing his application, have a business plan or
other documents to reflect plans to advertise, manufacture
or otherwise use the mark FLASHBOY in commerce on the goods
for which applicant seeks registration. Examples include
the following. In response to Interrogatory No. 1:
“Describe with particularity any searches or investigations
performed by you or on your behalf in connection with your
decision to use the FLASHBOY Mark,” applicant responded,
after his objections, “None.” In response to Interrogatory
No. 14: “Identify all persons whom you have permitted and/or
licensed to use the FLASHBOY Mark,” applicant responded,
“None.” In response to Interrogatory No. 16: “Identify all
documents that refer to, reflect, constitute, mention, or
discuss any business plans for your business,” applicant
responded, “None.”
Similarly, applicant was unable to identify, locate, or
produce documents evidencing his plans to use the mark
FLASHBOY in commerce for the applied-for goods. Asked in
Opposition No. 91178130
22
Document Request #2 for “All documents that refer to, relate
to, or constitute communications with others regarding your
plans to use the FLASHBOY Mark,” applicant responded that he
was “not in possession of any responsive documents.” Asked
in Document Request #3 for “All documents that refer or
relate to your efforts to start or build a business to
manufacture, market, advertise, distribute, or sell products
bearing the FLASHBOY Mark,” applicant responded that he was
“not in possession of any responsive documents.” Asked in
Document Request #4 for “All documents that refer to, relate
to, or constitute communications with others regarding your
efforts to start or build a business to manufacture, market,
advertise, or sell products bearing the FLASHBOY Mark,”
applicant responded that he was “not in possession of any
responsive documents.” Asked in document Request #5 for
“All documents that refer to, relate to, or constitute
communications with others regarding your efforts to obtain
funding for design, development, manufacture, marketing,
advertising, or distribution of products bearing the
FLASHBOY Mark,” applicant responded that he was “not in
possession of any responsive documents.” Asked in Document
Request #9 for “All documents that refer to, relate to, or
constitute agreements with anyone with regard to the
distribution of goods to be sold bearing the FLASHBOY Mark,”
applicant responded that he was “not in possession of any
Opposition No. 91178130
23
responsive documents.” Asked in Document Request #11 for
“All documents that refer to, relate to, or constitute
efforts to obtain governmental or regulatory approval with
regard to goods to be sold bearing the FLASHBOY mark,”
applicant responded that he was “not in possession of any
responsive documents.” Asked in Document Request #12 for
“All documents that refer to, relate to, or constitute
specifications for goods to be sold bearing the FLASHBOY
Mark,” applicant responded he was “not in possession of any
responsive documents.”
We find that by showing that applicant had no business
plan, no agreements to manufacture, distribute, create, or
market any product under the mark, and no other indications
of intention to use it in commerce, opposer has made a
sufficient prima facie case that applicant lacked a bona
fide intention to use the mark FLASHBOY in commerce on the
applied-for goods at the time he filed his application.
We then examine the evidence presented by applicant to
see whether applicant has rebutted the prima facie case.
Applicant asserts that he has the ability to market and sell
the video-game products for which he seeks the FLASH BOY
mark. See appl’s brief. As evidence of this, applicant
points to his own responses to interrogatories. In response
to Interrogatory #35, inquiring regarding any prior
experience “in the video game hardware or software
Opposition No. 91178130
24
industry,” applicant responded: “Applicant was educated from
1975-1980 at Technion school in Haifa Israel in engineering.
From 1980 to the present, Applicant founded and managed
Goliath BV toy company. See Applicant’s patent from the
European Patent Certificate produced as Applicant 0033-
0039.” Asked in Interrogatory #40: “State whether you have
ever made, had made, sold offered for sale, distributed,
advertised, and/or marketed any of the following goods in
the United States: plug and play interactive video game
hardware or software, ritual reality video games, hand-held
units for playing video games or electronic games, or stand
alone video game machines,” applicant responded, after
objections, “yes.” Asked to elaborate in response to
Interrogatory No. 41, however, applicant referred to the
opening of a U.S. subsidiary after the filing of his
application, which is not relevant to this claim. Likewise,
applicant’s European patent does not show any intent to use
this mark in the U.S., nor do his other trademark
registrations.
To show a bona fide intent to use, there must be
“objective evidence,” that is evidence in the form of “real
life facts and by the actions of the applicant.” J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition
§19:14 (4th ed. 2009). There should be some “definite” (if
not necessarily “concrete”) plan by applicant. For example,
Opposition No. 91178130
25
“written plan of action for a new product or service,” or a
“re-branding of an existing line of goods or services.” Id.
Applicant here noted his various existing trademarks and a
European patent, but showed no nexus as to how these would
be used to launch FLASH BOY for the presently applied-for
goods. See Boston Red Sox v. Sherman, supra, 88 USPQ2d
1581, 1586; (opposer’s showing of applicant’s failure to
produce documents sufficient to establish prima facie case
which must then be rebutted by applicant); see also Honda
Motor Co., Ltd. V. Friedrich Winkelmann, 90 USPQ2d 1660
(TTAB 2009). In the latter case, the Board granted summary
judgment in favor of opposer where applicant admitted in its
discovery responses seeking information about its business
plans and other activities that it had not “had activities
in the U.S. and has not made or employed a business plan,
strategy, arrangements or methods there” and “has not
identified channels of trade that will be used in the United
States.” Applicant’s mere self-serving assertion that he
had a bona fide intent to use the mark in connection with
the identified goods in the U.S. was held insufficient to
establish a genuine issue of material fact since he produced
no documents to support the assertion. That the mark was
used elsewhere was not relevant. In short, the Board is not
concerned with the mere capability of an applicant to
Opposition No. 91178130
26
produce goods under the mark, but also with whether
applicant has displayed an objective intent to do so.
Applicant argues that three prior Board cases weigh in
his favor. We note that they are nonprecedential. We also
note that each is distinguishable from the present case. In
Kellogg Co. v. The Earthgrains Co., Opposition No. 91110121
(TTAB 2003), the first nonprecedential case cited by
applicant, for the proposition that opposer has the burden
to investigate leads or else has not proven its case for
lack of bona fide intent, applicant therein stated in
response to interrogatories that it had “prepared labels for
use during test marketing for the product” and that it had
“used the mark . . . in conjunction with [other mark] on
packaging for test marketing the product.” This is clearly
distinguishable from the present case where applicant
indicated no use of its mark in any test marketing or other
manner.
In The Wet Seal, Inc. v. FD Management, Inc.,
Opposition No. 91157022 (TTAB 2007), the second
nonprecedential case cited by applicant, the Board held that
opposer didn’t carry its burden, because it had only deposed
one person, and it didn’t show that he would be the sole
person in the company that would be responsible for
launching products. Rather, the Board stated: “In fact
[his] testimony shows with regard to at least certain
Opposition No. 91178130
27
products, that he clearly was not the only person involved
in the decision-making process.” Accordingly, it simply
could not be determined from the evidence whether applicant
had a bona fide intent or not. The Board also noted that it
found the witness’s testimony “ambiguous,” which we, in the
present case, do not.
In the third nonprecedential case cited by applicant,
Collagenex Pharma, Inc. v. Four Star Partners, Opposition
No. 91150890 (TTAB 2003), opposer “presented only argument”
but submitted no evidence. Clearly, that is distinguishable
from the case at hand, where opposer has presented evidence
that we have found to constitute a prima facie case. The
three cases, besides being nonprecedential, are
distinguishable.
Opposer has made a prima facie case that applicant
lacked a bona fide intent to use the FLASH BOY mark on the
applied-for goods at the time he filed the application.
Applicant has not rebutted the presumption. Accordingly, on
this ground, too, we find for opposer.

DECISION: The opposition is sustained.