Rach

Trademark Trial and Appeal Board

Oct 17, 2007

No. 78811345 (T.T.A.B. Oct. 17, 2007)

Decision Mailed:
October 17, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rach
________

Serial No. 78811345
_______

David R. Haarz of Harness, Dickey & Pierce, P.L.C. for Stephanie
Rach.

Mark Rademacher, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______

Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Stephanie Rach has filed an application to register on
the Principal Register in standard character form the mark "THE
CHIPPER TRAVEL SERIES" for "musical sound recordings; pre-
recorded CD's, video tapes, laser disks and DVD's featuring
stories for children; [and] prerecorded audio cassettes featuring
music and stories for children" in International Class 9 and
"children's books" in International Class 16.1

1 Ser. No. 78811345, filed on February 9, 2006, which is based on an
allegation of a bona fide intention to use such mark in commerce. The
words "TRAVEL SERIES" are disclaimed.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78811345
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to her goods, so resembles the
mark "CHIPPER CHAT," which is registered on the Principal
Register in standard character form for "teaching and
motivational aids in the nature of a game that consists of
magnetic chips, magnetic wand, and game boards for use by the
general public, public and private teachers, [and] health
professionals or therapists" in International Class 28,2 as to be
likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity in the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 See also In re Dixie Restaurants Inc., 105 F.3d

2 Reg. No. 2,532,135, issued on January 22, 2002, which sets forth a
date of first use anywhere and in commerce of October 19, 2000.

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 78811345
3
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, inasmuch as
applicant, as noted by the Examining Attorney, concedes in her
brief that "[f]or the purposes of this appeal, Ms. Rach does not
contest the determination that board games on the one hand and
books, CD's and DVD's on the other can be considered related
goods," the primary focus of our inquiry is on the similarities
and dissimilarities in the respective marks when considered in
their entireties.
Turning, therefore, to consideration of the respective
marks, applicant argues in her brief that, while she does not
dispute the Examining Attorney's contention that the word
"CHIPPER" is the primary or dominant element of both marks, she
maintains that "the respective marks are quite different,"
thereby precluding any likelihood of confusion. In particular,
applicant contends that (emphasis in original):
[T]o understand the commercial impression of
CHIPPER CHAT, the goods for which CHIPPER
CHAT is registered must be considered. Those
goods are "Teaching and motivational aids in
the nature of a game that consists of
magnetic chips, magnetic wand, and game
boards for use by the general public, public
and private teachers, [and] health
professionals or therapists" (emphasis
supplied). The "CHIPPER" in the mark CHIPPER
CHAT refers to the fact that it is a board
game which utilizes "chips." CHAT refers to
talking. Thus, the mark CHIPPER CHAT is
suggestive of a board game played with chips
that involves "chat" or talking.

On the other hand, THE CHIPPER TRAVEL
SERIES is suggestive of a group of videos,
CD's and other recordings which feature the
travels of someone named "CHIPPER," in this

essential characteristics of the goods and differences in the marks."
192 USPQ at 29.

Ser. No. 78811345
4
case a squirrel named "CHIPPER." Chipper is
applicant's copyrighted squirrel. A copy of
applicant's US Copyright Certificate for her
squirrel character was made of record during
the prosecution of this application. CHIPPER
will travel around the world and be the
subject of a series of children's books,
videos, CD's and other recordings sold under
THE CHIPPER TRAVEL SERIES mark.

Applicant consequently urges that "[i]n light of the differences
between the respective marks, CHIPPER CHAT for a game which uses
'chips' to encourage children to 'chat,' and THE CHIPPER TRAVEL
SERIES for a series of books, videos and CD's featuring the
travels of a squirrel named CHIPPER, the respective marks are not
confusingly similar in sound and appearance when viewed in their
entireties and certainly not in light of the differences in
meaning and overall commercial impression."
The Examining Attorney, emphasizing that applicant does
not dispute in her brief that the term "CHIPPER" is the primary
or dominant element of both marks, argues on the other hand that:
Neither the term "travel series" in
applicant's mark nor the term "chat" in the
registered mark alters the connotation of the
term "chipper," from that in the other mark.
In both cases the term "chipper" primarily
suggests cheerfulness or liveliness. The
examining attorney refers to the dictionary
definition attached to the final office
action ....

Such definition, from The American Heritage Dictionary of the
English Language (4th ed. 2000), defines "chipper" as an
adjective meaning "[i]n lively spirits; cheerful." In view
thereof, the Examining Attorney maintains that:
Applicant's assertion that "chipper" suggests
game chips would require consumers to ignore
the dictionary definition of the word
["]chipper.["] Moreover, consumers would
Ser. No. 78811345
5
have to ignore the fact that the dictionary
definition of the word ["]chipper["] more
clearly fits in the combination CHIPPER CHAT
than any meaning suggestive of chip pieces in
a game. Notably, there is no evidence ...
such as a dictionary definition of the term
"chipper" that relates to game chips.

As to applicant's assertion that the term "CHIPPER" in
her mark would be regarded as identifying a worldly traveling
squirrel character who is the subject of applicant's books and
recordings, the Examining Attorney contends that:
[T]he fact that the word CHIPPER may also be
the name of a squirrel does not change the
fact that the word CHIPPER connotes something
lively or cheerful. Squirrels are generally
thought of as having these traits. The term
["]chipper["] used to identify a character
still gives the impression of something
lively or cheerful.

The Examining Attorney consequently insists that because "the
term CHIPPER has the same connotation and commercial impression
in both marks" and constitutes the dominant element of each, "the
marks as a whole are sufficiently similar to be likely to cause
confusion when used on related goods."
While the issue is a close one, we find that confusion
is likely from contemporaneous use of the respective marks in
connection with the related goods at issue. In this regard, it
must be kept in mind that it is well settled that the issue of
likelihood of confusion must be determined on the basis of the
goods at issue as they are set forth in the involved application
and the cited registration rather than in light of what the goods
may actually be as shown, for instance, by extrinsic evidence.
See, e.g., Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
Ser. No. 78811345
6
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus,
although applicant's goods may indeed feature applicant's
copyrighted squirrel character, as indicated by the copy of
record of her U.S. Copyright Certificate for such, it is improper
to limit or restrict the goods identified and distinguished by
applicant's THE CHIPPER TRAVEL SERIES mark to children's books
and recordings featuring music and/or children's stories which
have as their central character or subject matter a globe-
trotting squirrel named "Chipper." Rather, such goods must at
the very least be regarded as including books and recordings on a
wide variety of travel topics.
Similarly, it is impermissible to confine the subject
matter of registrant's "CHIPPER CHAT" teaching and motivational
aids in the nature of a game consisting of magnetic chips, a
magnetic wand, and game boards for use by the general public,
public and private teachers, and health professionals or
therapists to those which do not involve children's games on such
topics as world travel or geography. Instead, such goods must be
treated as encompassing, inter alia, a game which involves
travel-related themes.
In light thereof, we think that even if consumers were
to view the word "CHIPPER" in registrant's "CHIPPER CHAT" mark as
Ser. No. 78811345
7
suggestive of the magnetic chips used in its motivational games
pertaining to travel, it is still the case that as the dominant
part of the mark such word also conveys, as it does as the
dominant element of applicant's "THE CHIPPER TRAVEL SERIES" mark,
a connotation and overall commercial impression of a lively,
spirited or cheerful activity when used in connection with,
respectively, registrant's motivational games which could have a
travel-related theme and applicant's children's books and
recordings for children on travel subjects. Moreover, the
Examining Attorney in any event has additionally made of record
excerpts from the MyToyBox.Com website which show the same
character name mark used in connection with games for children as
well as children's books (including sound books), videos and
DVD's. In view of such evidence, it would be likely that even if
purchasers were familiar or acquainted with the term "CHIPPER" as
the name of the squirrel who constitutes the principal character
or subject matter of the travel books and recordings for children
offered by applicant under the mark "THE CHIPPER TRAVEL SERIES,"
those consumers are also likely to assume that registrant's
motivational games feature the same character and, hence, that
they emanate from or are sponsored by the same source when
marketed under the similar mark "CHIPPER CHAT."
Nonetheless, as a final consideration, to the extent
that applicant's contention with respect to specific differences
in the marks at issue as to their connotation and overall
commercial impression may serve to raise any doubt as to our
conclusion with respect to the issue of likelihood of confusion,
Ser. No. 78811345
8
we resolve such doubt, as we must, in favor of the registrant.
See, e.g., In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1948 (Fed. Cir. 2004); In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 156, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
and In re Pneumatiques Caoutchouc Manufacture et Plastiques
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA 1973).
We accordingly conclude that purchasers who are
familiar or otherwise acquainted with registrant's "CHIPPER CHAT"
mark for "teaching and motivational aids in the nature of a game
that consists of magnetic chips, magnetic wand, and game boards
for use by the general public, public and private teachers, [and]
health professionals or therapists" would be likely to believe,
upon encountering applicant's similar "THE CHIPPER TRAVEL SERIES"
mark for "musical sound recordings; pre-recorded CD's, video
tapes, laser disks and DVD's featuring stories for children;
prerecorded audio cassettes featuring music and stories for
children"; and "children's books," that such commercially related
products emanate from, or are sponsored by or affiliated with,
the same source. Consumers, for example, could reasonably regard
applicant's and registrant's goods as constituting a line of
"CHIPPER" branded products.
Decision: The refusal under Section 2(d) is affirmed.