Rocket Box Inc.

Trademark Trial and Appeal Board

Feb 3, 2021

88360870 (T.T.A.B. Feb. 3, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rocket Box Inc.
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Serial No. 88360870
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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.
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On Request for Reconsideration

Before Bergsman, Goodman, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
On September 4, 2020, the Board issued a final decision affirming the Examining
Attorney’s Section 2(d) refusal of registration to Rocket Box Inc. (“Applicant”) for the
composite mark on the Principal Register (with “jacks” and “quality”
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disclaimed) for “tabletop games, namely, jacks”1 in view of the registered mark
ROCKET BOX (in standard characters) for “toys, games and playthings, namely, toy
vehicles and accessories therefor” on the Principal Register.2 On September 8, 2020,
Applicant filed a Request for Reconsideration of the final decision under Trademark
Rule 2.144, 37 C.F.R. § 2.144.
In its Request for Reconsideration, Applicant argues that the Board incorrectly
concluded that Applicant did not submit evidence of any third-party registrations of
ROCKET BOX or ROCKET-formative marks. Applicant is correct, and this was a
technical mistake. In its September 24, 2019 Response to Office Action (TSDR 6-7),
Applicant listed the following three third-party registrations, but did not include
print outs thereof: Registration No. 4264284 for ROCKET BOX allegedly identifying
“cargo containers for use on vehicles,” Registration No. 5850942 for ROCKETBOX
allegedly identifying “cigarette filling and rolling machines,” and Registration No
3476711 for ROCKIT allegedly identifying “business advice.” The list was repeated
in the November 5, 2019 Request for Reconsideration after Final Action (TSDR 13-
14).

1 Application Serial No. 88360870 filed on March 28, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on 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. Once again we treat the identification
of goods as if Applicant’s earlier amendment had been entered. See 13 TTABVUE 2 n.1; April
3, 2019 Preliminary Amendment TSDR 1.
2 Registration No. 3146503, issued September 19, 2006; renewed.
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Usually, the mere listing of third-party registrations is not sufficient to make the
registrations of record; however, where, as here, the Examining Attorney did not
advise Applicant that the listings were insufficient to make the registrations of
record, and without objection mentioned the registrations in the Office actions issued
after the lists were submitted, the registrations should have been treated as
stipulated into the record. See TBMP § 1208.02; TMEP § 710.03.
These registrations, however, are not helpful to Applicant. As Applicant
acknowledges in its request, “these third-party registrations [do] not relate directly
to toys.” 14 TTABVUE 3. The third party marks listed by Applicant are used in
connection with seemingly unrelated goods and services; therefore, they do not
demonstrate that the term ROCKET BOX or any other ROCKET-formative term is
descriptive, suggestive, commonly used, or weak. See, e.g., Omaha Steaks Int’l v.
Greater Omaha Packing, 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018)
(error to rely on third-party evidence of similar marks for dissimilar goods, as Board
must focus “on goods shown to be similar”); In re i.am.symbolic, llc, 866 F.3d 1315,
123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (applicant failed to point out any evidence
to support finding that multiple third parties use the mark for the listed goods); TAO
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017)
(third party registrations in unrelated fields “have no bearing on the strength of the
term in the context relevant to this case”); TMEP §1207.01(d)(iii).
Applicant’s argument that “since the filing of the appeal, the USPTO has approved
the registration of ROCKETBOX for ‘masonry veneer units.’ (U.S. TM Appl. No.
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88/611,518),” 14 TTABVUE 2, is similarly unavailing. Not only are the goods
unrelated to those at issue in this appeal, but that application is not of record. A
request for reconsideration of a final decision is not a proper venue for submitting
additional factual information and evidence, as the record on an appeal should be
complete prior to the filing of an appeal. Trademark Rule 2.142(d). See also, TBMP
§ 1207.01.
In a related argument, Applicant asks the Board to “reconsider how the extensive
third-party use of ‘rocket box’ should impact the analysis,” particularly “the impact of
such usage on the strength of [the cited Registrant’s] ROCKET BOX mark.” 14
TTABVUE 3. Applicant argues that “the common usage of ‘rocket box’ for the many
other goods and services” must be considered and “strongly suggests that the
ROCKET BOX mark is weak.” Id.
“The Federal Circuit has held that evidence of the extensive registration and use
of a term by others can be powerful evidence of the term’s weakness.” Tao Licensing
v. Bender Consulting, 125 USPQ2d at 1057 (citing Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). “[I]n determining the degree of
weakness, if any, in the shared terms, we must ‘adequately account for the apparent
force of [third-party use and registration] evidence,’ regardless of whether ‘specifics’
pertaining to the extent and impact of such use have been proven.” Id. (citing Juice
Generation, 115 USPQ2d at 1674-75). The registrations “may bear on conceptual
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weakness if a term is commonly registered for similar goods or services.” Tao
Licensing, 125 USPQ2d at 1057.
The listed third-party registrations, noted above, and the third-party uses for
unrelated goods and services discussed in the final decision have very little, if any,
probative value on the issue of the weakness of the cited mark because the involved
goods are limited to toy vehicles and accessories therefor, or, more broadly, toys and
playthings. See Omaha Steaks Int’l v. Greater Omaha Packing, 128 USPQ2d at 1693-
95 (citing Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19
USPQ2d 1424, 1430 (Fed. Cir. 1991)). The Examining Attorney repeatedly counseled
Applicant on this, and we explained it fully in the final decision. Similarly, we
specifically pointed out why each of the remaining four third-party websites that
contained toy-related uses of “rocket box” were of diminished probative value. See 13
TTABVUE 6. Nonetheless, we stated that even if we were to consider the four toy-
related uses particularly probative, such evidence would be “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. 13 TTABVUE 8-9 (quoting In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018)).
Likewise, in further determining that the cited mark was to be accorded a normal
scope of protection, we noted that it is entitled to all Section 7(b) presumptions,
including the presumption that it is distinctive and moreover, in the absence of a
Section 2(f) claim in the registration, that it is inherently distinctive for the goods.
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Inasmuch as Applicant’s minimal evidence, which was and has been discussed at
length, did not counter this, we appropriately found the cited mark to be inherently
distinctive, and neither commercially nor conceptually weak. We therefore accorded
it a normal scope of protection and found the sixth DuPont factor to be neutral in our
analysis of likelihood of confusion.
Similarly, in another portion of the final decision, we posited that even if we were
to assume that the cited mark was 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). We
see no error with our analysis.
Finally, and related to the repeated attempts to argue that the cited mark is weak,
Applicant argues that the Board failed to support its conclusion that Applicant’s
composite mark, when considered in its entirety with several components other than
the wording “rocket box,” is sufficiently similar to the cited mark ROCKET BOX that
confusion as to the source of the goods offered under the respective marks is likely.
14 TTABVUE 4. In the final decision we noted that the test under the first DuPont
factor is not whether the marks could be distinguished when subjected to a side-by-
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side comparison, but whether they were overall sufficiently similar that confusion
would be likely. We focused on the recollection of the average purchaser, in this case
an ordinary consumer, who normally would retain a general rather than a specific
impression of the trademarks. Although we pointed to the identical portions of the
marks, we acknowledged the fundamental rule that the marks must be considered in
their entireties, and we noted the specific differences pointed out by Applicant, but
we found the differences were outweighed by the similarities of the marks,
particularly that the cited mark is wholly encompassed within Applicant’s mark. We
recognized that there is no explicit rule that marks are automatically similar where
the entirety of the cited mark is incorporated in the junior mark; and we noted that
where, as here, there was no evidence of record to demonstrate that the cited mark
was either conceptually or commercially weak, the cited mark was entitled to the
normal scope of protection accorded an inherently distinctive mark.
The bases for the Board’s decision have been carefully reviewed in light of
Applicant’s Request for Reconsideration. We do not find any error in the Board’s
determination affirming the refusal to register the subject mark based on a likelihood
of confusion with the cited mark. In view of the foregoing, Applicant’s Request for
Reconsideration of the Board’s final decision is DENIED.