Sakar International, Inc.

Trademark Trial and Appeal Board

Sep 29, 2008

No. 78955234 (T.T.A.B. Sep. 29, 2008)

Mailed: September 29, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sakar International, Inc.
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Serial Nos. 78955234 and 78955305
_______

James C. Tuttle of Tuttle Law Offices for Sakar
International, Inc.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Hairston and Zervas, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications were filed by Sakar International, Inc.
to register the mark MAXIMO CONCEPTS (standard character
form) for the following goods:
computer game accessories, namely, joysticks, game
controllers, cases, namely, game protective cases
and gaming accessory carrying cases, video screen
and hand-held game guards, USB cables, car
chargers, AC adapters, steering wheels for video
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78955234 and 78955305
2
games, gel skins, battery packs, FM transmitters,
extension cables, and dancing mats in International
Class 9; and

television home console game accessories, portable
electronic console game accessories and computer
game accessories, namely, joysticks, game
controllers, cases, namely, game protective cases
and gaming accessory carrying cases, video screen
and hand-held guards, USB cables, car chargers, AC
adapters, steering wheels for video games, gel
skins, battery packs, FM transmitters, headphones,
extension cables and dancing mats in International
Class 9.1

The trademark examining attorney refused registration
in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), in view of the following
registrations owned by the same entity:
Registration No. 2633190, issued October 8, 2002,
for the mark MAXIMO GHOSTS TO GLORY for “computer
game software, computer game cartridges; computer
game cassettes; computer game discs; computer game
tapes; video game cartridges; video game machines
for use with television receivers,” and

Registration No. 2978772, issued July 26, 2005, for
the mark MAXIMO VS ARMY OF ZIN for “computer game
software, computer game cartridges, computer game
cassettes, computer game discs, computer game
tapes, video game cartridges, video game machines
for use with television receivers, downloadable
game software and downloadable computer games.”

When the refusals were made final, applicant appealed.

1 Application Serial Nos. 78955234 and 78955305, respectively.
Both applications were filed on August 18, 2006, alleging first
use anywhere and first use in commerce on March 15, 2005. Also,
both applications include a disclaimer of the word CONCEPTS, and
the statement that “[t]he English translation of the foreign word
‘MAXIMO’ is ‘MAXIMUM’.”

Ser Nos. 78955234 and 78955305
3
Applicant and the examining attorney have filed briefs.
In view of the similar records and issues in these two
applications, we have consolidated the applications for
purposes of final decision. Thus, we have issued this
single opinion.
Insofar as applicant’s goods and the goods in the
cited registrations are concerned, applicant argues that
they are very different in nature and are sold in different
sections of retail stores. Applicant maintains that there
is no per se rule that computer hardware and computer
software are related products, and that its computer game
accessories and television home console and portable
electronic console game accessories are unrelated to
registrant’s computer and video games. Insofar as the
respective marks are concerned, we note that applicant does
not argue that its mark is dissimilar from the registered
marks.
The examining attorney, on the other hand, maintains
that applicant’s and registrant’s good are complementary
and related goods; and that such goods would travel in the
same channels of trade to the same classes of purchasers.
Furthermore, the examining attorney argues that the marks
are similar in that applicant’s mark and the cited marks
share the identical term, MAXIMO.
Ser Nos. 78955234 and 78955305
4
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 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services.
We first turn to the similarity or dissimilarity of
the involved goods. In comparing the goods, it is not
necessary that they be identical or competitive in nature
in order to support a finding of likelihood of confusion.
It is sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks used therewith, to
the mistaken belief that the goods originate from or are in
some way associated with the same source. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978). The issue of likelihood
of confusion must be determined on the basis of the goods
Ser Nos. 78955234 and 78955305
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as set forth in the applications and the cited
registrations. Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Applicant’s goods are computer game accessories and
television home console and portable electronic console
game accessories while registrant’s goods are computer and
video games. Clearly, applicant’s and registrant’s goods
are not identical, but we cannot agree with applicant that
they are unrelated. While there is no rule that considers
all computer products to be related, applicant’s and
registrant’s goods are sufficiently related. Applicant’s
television home console, portable electronic console and
computer game accessories may be used with registrant’s
computer and video games, and the goods are therefore
complementary in nature.
Moreover, there are no limitations in applicant’s
identifications of goods and registrant’s identifications
of goods. We must accordingly presume that applicant’s and
registrant’s goods are marketed in all normal trade
channels for such goods (including consumer electronic
stores and mass merchandisers) to all normal classes of
purchasers for such goods (including ordinary consumers).
In re Elbaum, 211 USPQ 639 (TTAB 1981).
Ser Nos. 78955234 and 78955305
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Applicant argues that applicant’s and registrant’s
types of goods are sold in different sections of retail
stores. Even assuming that applicant’s and registrant’s
types of goods would be sold in different sections of a
retail store, an individual on a shopping trip may select a
computer and/or video game from one section of the store
and accessories for use in connection therewith from a
different section of the store.
In addition, applicant argues that the purchasers of
the involved goods are discriminating and are careful in
making their decision to purchase such goods. However,
this argument is unsupported by any evidence in the record,
and we find it to be unpersuasive in any event. Computer
and video games and accessories for use in connection
therewith are marketed to the same classes of purchasers
including ordinary consumers who would exercise nothing
more than ordinary care in purchasing these goods.
The examining attorney has made of record several
use-based third-party registrations in an attempt to show
that goods of the type identified in the applications and
the cited registrations may be sold under a single mark by
a single source. Third-party registrations which
individually cover a number of different goods and which
are based on use in commerce are probative to the extent
Ser Nos. 78955234 and 78955305
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that they suggest that the listed goods are of a type which
may emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). In this case, the
registrations show adoption of the same mark by the same
entity for, inter alia, several of the accessories
identified in applicant’s applications and the computer and
video games identified in the cited registrations. In sum,
we find that applicant’s and registrant’s goods are clearly
related, and would be offered in the same channels of trade
and be bought by the same classes of purchasers.
Turning then to a consideration of the marks, we must
determine whether applicant’s mark and registrant’s marks,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Although the marks 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). Furthermore, 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 commercial
Ser Nos. 78955234 and 78955305
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impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the 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).
We find that when applicant’s mark MAXIMO CONCEPTS and
registrant’s marks MAXIMO GHOSTS TO GLORY and MAXIMO VS
ARMY OF ZIN are considered in their entireties, the overall
similarities in the marks far outweigh their differences.
Applicant’s mark and registrant’s marks begin with the
identical term MAXIMO, and it often the first part of a
mark which is most likely to be impressed upon the mind of
a purchaser and remembered. Presto Products Inc. v. Nice-
Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988). Also, MAXIMO
is the dominant feature in applicant’s mark because the
additional word, CONCEPTS, has been disclaimed. The result
is that applicant’s mark is similar to each of the cited
marks in sound and appearance.
With respect to meaning, we acknowledge that the cited
marks MAXIMO GHOSTS TO GLORY and MAXIMO VS ARMY OF ZIN
appear to connote a character and game titles, and give
registrant’s marks somewhat different connotations from
applicant’s mark MAXIMO CONCEPTS. Nonetheless, we find
Ser Nos. 78955234 and 78955305
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that the similarities in sound and appearance outweigh any
differences in connotation.
Further, when applicant’s mark and each of
registrant’s marks are considered in their entireties, the
marks engender sufficiently similar overall commercial
impressions that when related goods are offered thereunder,
confusion would be likely to result among consumers.
Purchasers familiar with registrant’s MAXIMO GHOSTS TO
GLORY and MAXIMO VS ARMY OF ZIN computer and video games
may well believe that MAXIMO CONCEPTS identifies computer
game accessories and television home console and portable
electronic game accessories originating from registrant.
Indeed, several of applicant’s accessories are specifically
designed for use in playing computer and video games.
Also, as previously noted, applicant does not argue that
its mark is dissimilar from the registered marks.
Applicant asserts that there have been no instances of
actual confusion, and this shows that confusion is not
likely to occur. We are not persuaded by this argument.
Applicant has not provided any evidence as to the extent of
its use, nor is there any evidence as to registrant’s use
(indeed, as indicated below, applicant contends that
registrant’s products are not currently listed at
registrant’s website), such that we can determine whether
Ser Nos. 78955234 and 78955305
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there has been a meaningful opportunity for confusion to
occur. “Uncorroborated statements of no known instances of
actual confusion are of little evidentiary value…. The
lack of actual confusion carries little weight … especially
in an ex parte context.” Majestic Distilling, 65 USPQ2d at
1205.
As noted, applicant maintains that registrant’s
products are not currently listed at registrant’s website
and therefore there is no possibility of confusion. To the
extent that applicant implies that registrant is no longer
using its marks, applicant’s argument is in the nature of
an impermissible collateral attack on the cited
registrations and is not persuasive.
Applicant also refers to an application filed by a
third-party for the mark MAXIMO that was brought to
applicant’s attention by the examining attorney. Applicant
states that this application has now matured into
Registration No. 3415714 for computer hardware accessories.
Even if this registration was properly of record, a third-
party registration cannot be used to justify the
registration of another confusingly similar mark. In re
J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB 1988).
Ser Nos. 78955234 and 78955305
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In sum, because similar marks are to be used in
connection with related goods, we find that there is a
likelihood of confusion.
To the extent that there is any doubt on the
likelihood of confusion, we resolve that doubt in favor of
the prior registrant. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed in each application.