TriStar Pictures, Inc.v.Christian St. Fort

Trademark Trial and Appeal Board

Jul 13, 2021

91239967 (T.T.A.B. Jul. 13, 2021)

Mailed: July 13, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

TriStar Pictures, Inc.
v.
Christian St. Fort
___

Opposition No. 91239967
___

Richard S. Mandel, Lynn S. Fruchter and Joelle A. Milov
of Cowan, Liebowitz & Latman, P.C. for Opposer TriStar Pictures, Inc.

Robert Varkonyi of Zabrebelsky Law P.A.
for Applicant Christian St. Fort.
______
Before Kuczma, Adlin and Hudis,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Christian St. Fort seeks registration of JU’MAÑJI, in standard
characters, for “clothing, namely t-shirts” in International Class 25.1 In its amended
notice of opposition, Opposer TriStar Pictures, Inc., a movie studio, alleges prior use
of JUMANJI in connection with a film “franchise,” including associated merchandise,

1 Application Serial No. 87581011, filed August 23, 2017 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on Applicant’s alleged bona fide intent to use the mark in
commerce. The application was later amended to allege first use dates of October 12, 2017.
This Opinion is Not a
Precedent of the TTAB
Opposition No. 91239967
2
and pleads ownership of several registrations of the mark, in typed/standard
character form, for:
equipment sold as a unit for playing a parlor type game, in
International Class 28;2

production of an animated television series, in
International Class 41;3

board games, jigsaw puzzles, battery-operated, hand-held
and table-top diskette segment LCD games with and
without sound effects, in International Class 28;4

toys, games and playthings, namely, pvc vinyl toy figures;
dolls; stuffed toys; plush toys; action figures; board games;
trading cards; jigsaw puzzles; plastic interlocking toy
building block sets; plastic figures for interlocking toy
building block sets; collectible toy figures; squeeze toys;
hand held units for playing electronic games, in
International Class 28;5

downloadable video game software; dvds featuring motion
pictures in the field of action, adventure, comedy and
fantasy; video game discs; computer game software for use
with personal computers, computer software for betting,
gaming and gambling services, smartphone software
applications for playing games; downloadable sound,
image, and music files containing motion pictures; compact
discs featuring movie soundtracks; downloadable movie
soundtracks; downloadable e-books in the field of action,
adventure, comedy and fantasy motion pictures, in
International Class 9;6

posters; stickers; pen and pencil holders; trading cards,

2 Registration No. 2041007, issued February 25, 1997 (the “’007 Registration”); renewed.
3 Registration No. 2154633, issued May 5, 1998 (the “’633 Registration”); renewed.
4 Registration No. 2457533, issued June 5, 2001 (the “’533 Registration”); renewed.
5 Registration No. 5634194, issued December 18, 2018 (the “’194 Registration”).
6 Registration No. 5657119, issued January 15, 2019 (the “’119 Registration”).
Opposition No. 91239967
3
other than for games; hardbound and paperback books in
the field of action, adventure, comedy and fantasy;
children's activity books; children's story books; notepads;
greeting cards; diaries, in International Class 16;7 and

entertainment services in the nature of the production and
distribution of motion pictures and television series;
entertainment services, namely, providing on-line
computer games; providing entertainment content in the
nature of audiovisual works, motion pictures, television
programs, trailers, music and video games via an
interactive global computer network, in International
Class 41.8

As grounds for opposition, Opposer alleges that: use of Applicant’s mark would be
likely to cause confusion with, and dilute, Opposer’s mark, and falsely suggest a
connection with Opposer; Applicant did not use his mark in interstate commerce prior
to filing his amendment to allege use; and Applicant committed fraud by falsely
claiming bona fide use of his mark with the intent to deceive the USPTO.9
In his answer, Applicant admits that he is not associated with Opposer and that
Opposer “is listed as the owner” of its pleaded registrations, but otherwise denies the
salient allegations in the amended notice of opposition. Applicant asserts as an
affirmative defense that Opposer is guilty of “unclean hands,” but he did not pursue
or prove the defense at trial and it is accordingly waived. Miller v. Miller, 105

7 Registration No. 5752227, issued during this proceeding on May 14, 2019 (the “’227
Registration”). This registration issued from Applicant’s pleaded application Serial No.
87642798.
8 Registration No. 5795158, issued during this proceeding on July 2, 2019 (the “’158
Registration”). This registration issued from Applicant’s pleaded application Serial No.
87642026.
9 Opposer also pleaded ownership of application Serial No. 87642032 to register the same
mark for clothing, including “shirts.”
Opposition No. 91239967
4
USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am. Wine Trade
Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
In addition, Applicant filed counterclaims to cancel Opposer’s pleaded ’533 and
’007 Registrations on the ground of fraud, alleging that Opposer submitted knowingly
false Statements of Use to maintain those registrations with the intent to deceive the
USPTO. In its answer, Opposer denies the salient allegations in Applicant’s
counterclaims. 6 TTABVUE.10
We deny Applicant’s counterclaims and sustain the opposition on Opposer’s
Section 2(d) claim, and decline to reach Opposer’s other claims. Multisorb Tech., Inc.
v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
I. The Record and Evidentiary Objections
Some of Applicant’s trial evidence was stricken, 62 TTABVUE, pursuant to
Opposer’s motion to strike, 55 TTABVUE, but thereafter the parties nevertheless
continued to battle over the stricken evidence and other evidence, through trial. Our
description of the record in subsection I(B) below reflects the interlocutory ruling on
Opposer’s motion to strike, as well as Opposer’s closely related objection to
Applicant’s testimony affidavits, discussed in subsection I(A) below.

10 In accepting Applicant’s answer to the amended notice of opposition, the Board ordered
that “[t]he counterclaim that Applicant incorporated into its original answer, 4 TTABVUE 5-
9, and Opposer’s answer thereto, 6 TTABVUE, also remain operative.” 18 TTABVUE.
Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the electronic page number(s) of the docket entry
where the cited materials appear.
Opposition No. 91239967
5
A. Objections and Motion to Strike
During his trial period, Applicant filed affidavits from some of his alleged
customers, 42 TTABVUE, but the affidavits were stricken because they were
executed prior to Applicant’s testimony period. 62 TTABVUE. Applicant was given
until July 8, 2020 “to submit newly executed customer testimony affidavits” id. at 4,
but Applicant did not meet the extended deadline, filing them late on August 6, 2020.
66 TTABVUE. Therefore, Opposer’s objection to these affidavits, 69 TTABVUE 55-
59, including Ms. Blackwood’s affidavit, is sustained.
Applicant argues that the premature customer affidavits he originally filed, 42
TTABVUE, should nevertheless be considered because Opposer questioned Rachel
Garcia about them during her testimony deposition, which was taken before the
affidavits were stricken. 53 TTABVUE 33-39, 53-70. Applicant is mistaken. Applicant
could not submit the affidavits through the “front door” because they were executed
prematurely, and cannot submit the affidavits through the “back door” via the Garcia
deposition for the same reason (among others) − they still bear the same signature
dates, which are still prior to the opening of Applicant’s testimony period. This is why
they were stricken in the first place. Robinson v. Hot Grabba Leaf, LLC, 2019
USPQ2d 149089 at * 3-4 (TTAB 2019).
B. The Record
With the exclusion of the customer affidavits, the record consists of the pleadings
and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of
Applicant’s involved application, as well as Opposer’s pleaded registrations that are
subject to Applicant’s counterclaims. In addition, Opposer introduced:
Opposition No. 91239967
6
First Notice of Reliance (“Opp. NOR 1”) on its pleaded
registrations and applications. 19 TTABVUE.

Second NOR (“Opp. NOR 2”) on portions of its discovery
depositions of Applicant, Andre Rice, Rochelle Blackwood,
Arnold Celeste Jr. and Muriel Grant. 20 TTABVUE.11

Third NOR (“Opp. NOR 3”) on Applicant’s discovery
responses. 21 TTABVUE.

Fourth NOR (“Opp. NOR 4”) on Internet printouts. 22-23
TTABVUE.

Fifth NOR (“Opp. NOR 5”) on printed publications. 24
TTABVUE.

Sixth NOR (“Opp. NOR 6”) on third-party registrations. 25
TTABVUE.

Seventh NOR (“Opp. NOR 7”) on portions of the file history
of one of its pleaded applications. 26 TTABVUE.

Eighth NOR (“Opp. NOR 8”) on Internet printouts. 29
TTABVUE.

Testimony Declaration of Kevin C. Olsen, a paralegal with
its counsel’s law firm, and the exhibits thereto (“Olsen
Dec.”). 27-28 TTABVUE.

Testimony Declaration of Jamie Stevens, Vice President,
Worldwide Consumer Products for its “indirect parent”
Sony Pictures Entertainment, Inc., and the exhibits
thereto (“Stevens Dec.”). 30-32 TTABVUE.

Rebuttal NOR (“Opp. Reb. NOR”) on one of its cancelled
registrations. 67 TTABVUE.

Applicant introduced:

11 The parties stipulated that Opposer may submit the Rice, Blackwood, Celeste and Grant
discovery depositions “during the testimony period of this case.” 14 TTABVUE 2-3. The Board
approved the stipulation. 15 TTABVUE.
Opposition No. 91239967
7
First NOR (“App. NOR 1”) on additional portions of
Opposer’s discovery deposition of Ms. Blackwood pursuant
to Trademark Rule 2.120(k)(4). 43 TTABVUE.

Second NOR (“App. NOR 2”) on additional portions of
Opposer’s discovery deposition of Applicant pursuant to
Trademark Rule 2.120(k)(4). 45 and 65 TTABVUE.

Third NOR (“App. NOR 3”) on Opposer’s interrogatory
responses. 46 TTABVUE.

Fourth NOR (“App. NOR 4”) on Opposer’s responses to
requests for admission. 47 TTABVUE.

Fifth NOR (“App. NOR 5”) on an Internet printout. 48
TTABVUE.

Sixth NOR (“App. NOR 6”) on an Internet printout. 49
TTABVUE.

Seventh NOR (“App. NOR 7”) on third-party registrations.
50 TTABVUE.

Eighth NOR (“App. NOR 8”) on third-party registrations.
51 TTABVUE.

Testimony Deposition of Rachel Garcia and the exhibits
thereto (“Garcia Tr.”). 53 TTABVUE.12

Testimony Deposition of Jordan Williams (“Williams Tr.”).
54 TTABVUE.

Cross-Examination of Ms. Stevens on written questions
(“Stevens Cross”). 58-60 TTABVUE.13

12 While the affidavits attached to Ms. Garcia’s deposition have been stricken, we have
considered Ms. Garcia’s testimony about them.
13 Applicant also filed Opposer’s discovery deposition of Britney Gonzalez, 44 TTABVUE, but
it was stricken because its introduction into evidence is neither permissible under Trademark
Rule 2.120(k), nor covered by the parties’ stipulation regarding the introduction of certain
other discovery depositions. 62 TTABVUE.
Opposition No. 91239967
8
II. The Parties
Opposer is a prominent movie studio, and part of Sony Pictures Entertainment,
Inc. (“SPE”), the Motion Picture Group of which includes not just Opposer, but also
Columbia Pictures and Sony Pictures Classics, among others. 30 TTABVUE 3-4
(Stevens Dec. ¶ 2). SPE’s film “franchises” include Ghostbusters and Men in Black.
Applicant is a substitute teacher. 20 TTABVUE 14, 17. He also designs and sells
t-shirts. Id. at 50-52.
III. Relevant Facts
Opposer’s mark identifies the JUMANJI films first and foremost, but is also
licensed for use in connection with collateral products typically associated with
movies. Applicant’s mark has only been used for t-shirts.
A. Opposer’s Use of JUMANJI
Opposer produced and distributed the movie JUMANJI in 1995. The film, based
on a children’s book by Chris Van Allsburg, is about a man (played by Robin Williams)
who has been trapped in a supernatural board game called “Jumanji” for 25 years. 30
TTABVUE 4 (Stevens Dec. ¶ 4). The movie “opened as number one at the box office
and grossed in excess of $100 million in the United States.” Id. (Stevens Dec. ¶ 5). It
was 1995’s 7th highest grossing movie. Id.
Since its theatrical release, the movie “has remained in continuous distribution
through the present via broadcast television, cable television, video on demand,
download and/or streaming services, as well as DVDs and/or Blu-ray discs.” Id. at 5
and 32 TTABVUE 20-22 (Stevens Dec. ¶ 6 and Ex. B). The movie has been distributed
on Netflix, Amazon, DirecTV and Comcast, among others. Id. While the dollar figures
Opposition No. 91239967
9
are confidential, Opposer has earned significant revenue from selling the movie in
“home entertainment formats,” and has spent a significant sum on advertising the
movie for home viewing “over the past twenty years.” 30 TTABVUE 5 and 32
TTABVUE 24-26, 42 (Stevens Dec. ¶ 7 and Exs. D and O).
An animated JUMANJI television series ran from 1996-1999. It was distributed
and remains available on DVD, and is still available on streaming services. Id. at 6
(Stevens Dec. ¶ 9).
“As is typical with successful motion pictures, Opposer also licensed the use of the
JUMANJI mark at the time of the original movie’s release for use in connection with
a wide variety of merchandise,” with a JUMANJI board game “of course a natural tie-
in to the movie.” Id. at 7 (Stevens Dec. ¶ 10). This game “and other products in the
toys and games category” have “generated millions of dollars in revenues.” Id.
“Opposer also licensed the JUMANJI mark for use on such products as T-shirts,
sweatshirts, golf shirts and tank tops,” other types of clothing, mugs, magnets, jars,
cups, plates, bowls, bottles, lunch boxes, key chains, children’s books, trading cards,
plush figures, posters and treasure boxes. Id. (Stevens Dec. ¶ 11). For example, in
the mid-1990s Opposer licensed the JUMANJI mark to several different companies
for a variety of clothing and clothing accessory products. 59 TTABVUE 4-18, 19-35,
70-86, 129-144. Opposer also granted licenses to use the JUMANJI mark for t-shirts
and other clothing items in 2017 and 2018. Id. at 197-218, 240-316; 60 TTABVUE 26-
36, 147-161.
Opposition No. 91239967
10
While some of these licenses have expired, “[n]umerous of Opposer’s licensed
products associated with the original movie remained publicly available for sale” for
“many years following the movie’s release, continuing for decades and into the
present in some instances,” on websites including Amazon and eBay. 30 TTABVUE
7, 94-165 (Stevens Dec. ¶ 12 and Ex. G). However, it appears that at least the licensed
clothing items which were offered for sale prior to 2014 and remain for sale today are
being resold after their original sale years ago. Id. at 144-149.
In 2002, Chris Van Allsburg published a follow-up to his JUMANJI children’s
book, called ZATHURA, and Opposer adapted the book into a movie in 2005.
“Although the ZATHURA movie was not technically a sequel to JUMANJI in that the
characters and events in the two movies were completely distinct, press reports often
referred to it as such in view of the movies’ common heritage with Van Allsburg’s
books and their shared plot line of a board game that comes to life.” Id. at 8, 167-215
(Stevens Dec. ¶ 14 and Ex. H) (articles referring to “the ‘JUMANJI’ sequel
‘ZATHURA’,” or to the “sort-of” or “unofficial” sequel to JUMANJI). Opposer took
advantage of this association, using the tagline “From The World of JUMANJI” in
promoting ZATHURA:
Opposition No. 91239967
11

Id. at 9 (Stevens Dec. ¶ 14).
Because JUMANJI was so successful, “Opposer believed that JUMANJI had
strong potential to become a successful film franchise,” and for several years after its
release took steps to create an “official” sequel, but “those plans did not come to
fruition at the time.” Id. at 10, 297-325 (Stevens Dec. ¶ 17 and Ex. J). Eventually,
however, the project was completed and Opposer released the JUMANJI sequel
JUMANJI: WELCOME TO THE JUNGLE in 2017. Id. at 11 (Stevens Dec. ¶ 19).
Unlike the original, which involved a character trapped in a board game, in
JUMANJI: WELCOME TO THE JUNGLE, characters were trapped in a video game.
Id. at 12 (Stevens Dec. ¶ 21).
The sequel’s development and release generated a publicity campaign and
significant press coverage. Id. at 11-12 (Stevens Dec. ¶¶ 20, 22); 31 TTABVUE 4-93
Opposition No. 91239967
12
(Stevens Dec. Exs. L and M). In fact, Opposer spent “many millions of dollars
advertising JUMANJI: WELCOME TO THE JUNGLE beginning in 2017,” including
this billboard displayed in Times Square:

Id. at 12-13 (Stevens Dec. ¶ 22).
The movie, which stars Dwayne “The Rock” Johnson, Jack Black and Kevin Hart,
grossed over $400 million in the United States, placing it “in the top fifty grossing
domestic films of all time.” Id. at 13 (Stevens Dec. ¶ 23). The movie generated
extensive press coverage. Id.; 31 TTABVUE 95-163 (Stevens Dec. Ex. N) (articles
about or reviews of JUMANJI: WELCOME TO THE JUNGLE in the Washington
Post, Forbes, Fox News, Variety, Vanity Fair, Hollywood Reporter, USA Today and
The New York Times, among others). The movie was released on DVD and Blu-ray
in March 2018, “and these home entertainment products have already generated tens
of millions of dollars in sales.” 30 TTABVUE 13 (Stevens Dec. ¶ 24). At the time of
trial, Opposer had completed filming a third movie in the franchise, JUMANJI: THE
Opposition No. 91239967
13
NEXT LEVEL, featuring the same stars as the sequel, as well as Awkwafina, Danny
Glover and Danny DeVito. Id. at 13-14 (Stevens Dec. ¶ 24).
“As it did with the original JUMANJI movie and consistent with typical industry
practices for successful movie franchises, Opposer also embarked on a broad-based
merchandising campaign in connection with the JUMANJI: WELCOME TO THE
JUNGLE sequel.” Id. at 14 (Stevens Dec. ¶ 25). Specifically, Opposer licensed the
JUMANJI mark in connection with “a wide variety of goods and services, including
t-shirts and other clothing.” Id. at 14; 31 TTABVUE 167-205 (Stevens Dec. ¶ 26 and
Ex. P). “Such apparel items are generally part of any significant licensing program
given the enormous popularity among consumers of clothing branded with the marks
of well-known entertainment properties.” 30 TTABVUE 14 (Stevens Dec. ¶ 26). In
contrast to the licensed JUMANJI clothing associated with the original JUMANJI
movie that remains on sale, the licensed JUMANJI clothing associated with the
sequel JUMANJI: WELCOME TO THE JUNGLE is apparently new and being sold
for the first time. In fact, as shown below, it was offered for sale in late 2018, a year
after the sequel’s release, and the licensee is identified as Isaac Morris, one of
Opposer’s licensees:
Opposition No. 91239967
14

Id. at 14 and 31 TTABVUE 178 (Stevens Dec. ¶ 26 and Ex. P). A January 28, 2018
article entitled “Retail Demand for Jumanji: Welcome to the Jungle Merch Grows as
Sony Awaits DVD Release” in “licensing.biz,” a licensing publication, states “Apparel
and the collectable categories continue to add placement with robust sales at
specialty, mid and mass … Isaac Morris created apparel lines based on the
classic and new film for men, women and kids.” 31 TTABVUE 198 (emphasis
Opposition No. 91239967
15
added). Furthermore, Opposer has directly sold licensed JUMANJI clothing at The
Studio Store at Sony Pictures Studio, but Opposer did not provide the dates of any of
these direct sales. 47 TTABVUE 6.
B. Applicant’s Use of JU’MAÑJI
Applicant selected his mark JU’MAÑJI on November 21, 2013. He testified that
he remembered that date because it was a “special day” for him, the day his choice of
trademark came to him a dream, or, as he put it during his deposition, “I guess you
could say a nightmare.” 20 TTABVUE 24-25. Applicant described the
dream/nightmare in his response to Opposer’s Interrogatory No. 2 as follows:
Applicant had dream wherein poachers were killing
elephants, lions, greater kudus, white rhino, elands,
impala, cheetah, duiker, Hippopotamus, reedbuck, giraffe,
bushback, zebra, bushpig, common warthog, chacma
baboon. During the dream, Applicant screamed out
(phonetic spelling; see,
https://www.phon.ucl.ac.uk/home/wells/phoneticsymbolsfo
renglish.htm) in an effort to inform the poachers their
actions were wrong and instruct the poachers to stop.
Applicant wanted to use the wording “wrong” and later
performed a search of wording that mirrored the wording
and identified the JU’MAÑJI mark for “wrong” taken from
translations found at MyMemory
(https://mymemory.translated.net/en).

21 TTABVUE 14.
During his deposition, Applicant testified that after his dream, he speculated that
the word JU’MAÑJI might mean “wrong” in another language, because what the
poachers in his dream/nightmare were doing was wrong. Id. at 31-32. He therefore
went to the MyMemory website, which “translates words from different languages to
English or English to different languages” and entered the term JU’MAÑJI. Id. at
Opposition No. 91239967
16
33-36. Applicant testified that MyMemory translated his mark into “wrong” in three
languages: Uzbek; Kazakh; and Azerbaijani. 20 TTABVUE 34, 40-45, 160-163 (St.
Fort Tr. at 29, 35-40 and Ex. 2).
Applicant pronounces the word JU’MAÑJI as “na-man-ji.” Id. 18. Indeed, when
asked whether “the J-U, to your understanding, should be pronounced as ‘na,’”
Applicant responded “yes.” He also indicated that the apostrophe following the “U” in
the mark signals a pause: “When you say ‘na,’ you take a – you just pause and say
‘man-ji.’” 20 TTABVUE 38. As for the punctuation above the “N” in the mark
(elsewhere referred to as a tilde), it has “no effect” on how Applicant’s mark is
intended to be pronounced. Id. at 39.
In 2013, with help from a family friend, Applicant, who had never sold clothing
before, created t-shirts bearing his JU’MAÑJI mark. Id. at 50-52, 110-117. Applicant
did not “make any [t-shirt] sales from Florida to another state before October 12,
2017.” Id. at 89. However, he sold t-shirts within Florida in 2014, including to Ms.
Blackwood, although Ms. Blackwood did not recall seeing the involved mark
JU’MAÑJI on the shirts she purchased. Id. at 90, 107, 109, 117-119, 150-157; Id. at
717-721, 725-729 (Blackwood Tr. 16-23, 27-31) (Ms. Blackwood’s testimony about her
purchase of a t-shirt from Applicant in 2014). He also sold shirts to Ms. Garcia and
Mr. Williams in 2014. 53 TTABVUE 6-15; 54 TTABVUE 6-11. In any event, Applicant
admits that: Opposer used its mark for entertainment services prior to Applicant
using his mark; and Applicant does not have any receipts or other documentation
Opposition No. 91239967
17
“reflecting” his t-shirt sales or the dates of any sales. 21 TTABVUE 25, 41-42
(Applicant’s Responses to Requests for Admission Nos. 16-21).
IV. Applicant’s Fraud Counterclaims
We address Applicant’s counterclaims first, because if successful they would
impact our analysis of Opposer’s claims.
A. Applicant’s Entitlement to a Statutory Cause of Action
Applicant’s entitlement to assert its counterclaims is inherent, as he is the
defendant in the opposition. Finanz St. Honore, B.V. v. Johnson & Johnson, 85
USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the
Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005) (“Applicant, by virtue of its
position as defendant in the opposition, has standing to seek cancellation of the
pleaded registration.”).
B. Fraud
“Fraud in procuring a trademark registration occurs when an applicant knowingly
makes false, material representations of fact in connection with its application with
intent to deceive the USPTO.” Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d
1361, 1365 (TTAB 2014) (citing In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938
(Fed. Cir. 2009)) (emphasis added). Here, Applicant has not presented any evidence,
direct, indirect or circumstantial, let alone the requisite “clear and convincing”
evidence, In re Bose, 91 USPQ2d at 1939, that Opposer made false statements with
the requisite intent to deceive the USPTO.
First, Applicant’s counterclaims to cancel Opposer’s ’533 and ’007 Registrations,
both for games, are based on pure speculation. Specifically, Applicant points out that
Opposition No. 91239967
18
certain of Opposer’s licenses to use the JUMANJI mark for games expired several
years prior to Opposer renewing its involved registrations, and Applicant alleges that
the specimens submitted in support of the renewals were packaging for games “no
longer under license.” 71 TTABVUE 30, 34. Yet, Applicant does not provide a single
evidentiary cite to the record which supports his implicit assumption that at the time
of the renewals: (1) there were no valid licenses to use JUMANJI for the identified
games; (2) Opposer was not still offering the identified games itself or through any
licensees; or (3) use of the mark on the licensed games which remained available for
sale did not still insure to Opposer’s benefit.14 Applicant does not attempt to address
the evidence that many JUMANJI products, including games, remained available for
sale “for decades and into the present in some instances.” 30 TTABVUE 7, 106-117
(Stevens Dec. ¶ 12 and Ex. G).
In any event, even if Applicant’s speculation was supported by evidence of record
rather than mere attorney argument, there is no evidence whatsoever that Opposer
intended to deceive the USPTO when it filed its renewals. DaimlerChrysler Corp. v.
American Motors Corp., 94 USPQ2d 1086, 1090 (“It is clear that under the holding of
Bose that intent must be separately proved ….”). That is, even if Applicant’s
speculation that the only licenses to use JUMANJI for the identified games had

14 Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
("Attorney argument is no substitute for evidence.") (quoting Enzo Biochem, Inc. v. Gen-Probe
Inc., 424 F.3d 1276, 1284, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see also In re U.S.
Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there was no proof to
support the statements in the record by counsel).

Opposition No. 91239967
19
expired prior to the renewals is correct, and Applicant had also established that
neither Opposer nor any licensee or related company was offering the identified
games at the time, Opposer could have believed in good faith that because formerly-
licensed parties were still selling the identified games, it was entitled to claim
current/continuous use and renew the involved registrations. Applicant’s fraud
counterclaims are denied, because there is no evidence that Opposer intended to
deceive the USPTO.
V. Opposer’s Likelihood of Confusion Claim
Having disposed of Applicant’s counterclaims, we now consider Opposer’s
likelihood of confusion claim, including Opposer’s pleaded registrations which
survived Applicant’s challenge.
A. Opposer’s Entitlement to Statutory Cause of Action15
Entitlement to a statutory cause of action is a requirement in every inter partes
case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370,
2020 USPQ2d 10837 at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control
Components, Inc., 572 U.S. 118, 125-26 (2014)). A party in the position of plaintiff
may oppose registration of a mark when doing so is within its zone of interests and it
has a reasonable belief in damage that is proximately caused by registration of the
mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7

15 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to a statutory cause of action. Despite the change in nomenclature,
our prior decisions and those of the Federal Circuit interpreting Sections 13 and 14 remain
equally applicable.
Opposition No. 91239967
20
(Fed. Cir. 2020) (holding that the test in Lexmark is met by demonstrating a real
interest in opposing or cancelling a registration of a mark, which satisfies the zone-
of-interests requirement, and a reasonable belief in damage by the registration of a
mark, which demonstrates damage proximately caused by registration of the mark).
Here, Opposer’s pleaded registrations, 19 TTABVUE 5-24, establish its
entitlement to a statutory cause of action. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In addition, Opposer’s application to
register its mark in Class 25 is suspended based on the USPTO finding a potential
likelihood of confusion with the mark in Applicant’s involved application. 19
TTABVUE 25-27; 26 TTABVUE 5-6; Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982) (“Thus, to have standing in this
case, it would be sufficient that [plaintiff] prove that it filed an application and that
a rejection was made because of [defendant’s] registration.”); Tri-Star Mktg., LLC v.
Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“petitioner has
standing to bring the petition for cancellation based on the fact that its application to
register [its mark] was refused registration by the office under Section 2(d) based on
a likelihood of confusion with respondent’s previously registered mark”).
B. Priority
Because Opposer’s pleaded registrations are of record, 19 TTABVUE 5-24, and
Applicant’s counterclaims to cancel two of them were unsuccessful, priority is not at
issue with respect to the goods and services identified therein. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Opposition No. 91239967
21
As for clothing, and more specifically the “t-shirts” identified in the involved
application, Opposer has established common law use of JUMANJI by its licensees
for, inter alia, t-shirts, starting 20 years prior to Applicant’s alleged first use in
2014.16 30 TTABVUE 7 (Stevens Dec. ¶ 11); 59 TTABVUE 4-18, 19-35, 70-86, 129-
144 (confidential licensing information). Applicant argues, however, based on its
cross-examination of Ms. Stevens and other evidence, that “Opposer has not licensed
its mark on clothing since May 31, 1997, when the last license expired, and did not
resume licensing the mark on clothing until years after Applicant began selling
shirts.” 71 TTABVUE 21 (citing 58 TTABVUE 9-10 (Stevens Cross ¶ 29)). In other
words, while Applicant did not plead abandonment as an affirmative defense, it now
argues that while Opposer was the first user of JUMANJI for clothing, it abandoned
the mark prior to Applicant’s first sale of JU’MAÑJI t-shirts in 2014. See Kemi
Organics, LLC v. Rakesh Gupta, 126 USPQ2d 1601, 1605 (TTAB 2018) (“Section 2(d)

16 Where, as here, “an applicant seeks to prove a date [of first use] earlier than the date
alleged in its application,” the applicant must prove the “earlier date by clear and convincing
evidence.” Hydro-Dynamics Inc. v. George Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772,
1773-74 (Fed. Cir. 1987). However, as explained below, we need not resolve Applicant’s
precise date of first use. If we were to do so, the intrastate nature of Applicant’s 2014 sales is
not determinative in and of itself. Christian Faith Fellowship Church v. adidas AG, 841 F.3d
986, 120 USPQ2d 1640 (Fed. Cir. 2016). See also Gonzales v. Raich, 545 U.S. 1 (2005);
Wickard v. Filburn, 317 U.S. 111 (1942); Larry Harmon Pictures Corp. v. Williams Rest.
Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991). Indeed, as used in the Lanham Act,
“[t]he word ‘commerce’ means all commerce which may lawfully be regulated by Congress,”
15 U.S.C. § 1127, and Congress may regulate even local, intrastate activities which have a
“substantial economic effect on interstate commerce.” Raich, 545 U.S. at 17; Wickard, 317
U.S. at 127-128; In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261, 264 (CCPA 1977)
(“Thus, we hold that intrastate sale of goods, by the party who caused those goods to move in
regulatable commerce, directly affects that commerce and is itself regulatable.”). In short,
“[b]ecause one need not direct goods across state lines for Congress to regulate the activity
under the Commerce Clause, there is likewise no such per se condition for satisfying the
Lanham Act’s ‘use in commerce’ requirement.” Christian Faith Fellowship, 120 USPQ2d at
1647.
Opposition No. 91239967
22
provides a ground … based upon a likelihood of confusion with ‘a mark … previously
used in the United States … and not abandoned ….’ [Opposer] bears the burden of
proving that its mark was ‘previously used in the United States’ before [Applicant’s
priority date]. In this case, [Applicant’s] ‘abandonment allegation is, in effect, in the
stance of a defense to a prior use assertion.’”) (cleaned up).
Applicant takes some liberties with the evidence upon which his abandonment
defense is based. In fact, during her cross-examination, Ms. Stevens testified that the
mid-1990s licenses to use JUMANJI for clothing which it provided to Applicant
during discovery were not necessarily all of Opposer’s licenses to use JUMANJI for
clothing. Rather, the licenses Opposer produced were “everything we were able to
locate up to the time we provided them. It’s obviously been a long time so there may
be others that were no longer available decades later.” 58 TTABVUE 9-10 (Stevens
Cross ¶ 29). Thus, Opposer has not conceded that use of JUMANJI for clothing was
discontinued in the 1990s. At the same time, however, Opposer does not specifically
deny that there was a gap in its use of JUMANJI for clothing, through licensees or
otherwise, nor does it specifically deny that the gap continued or may have continued
from the late 1990s through around the time JUMANJI: WELCOME TO THE
JUNGLE was promoted and finally released in 2017 (other than pointing out that
some JUMANJI clothing remains available for apparent resale on eBay).
There are two problems with Applicant’s abandonment defense. First, it was not
pleaded. In fact, while Applicant alleged in its answer to the amended notice of
opposition that Opposer “was not continuously providing the recited goods, either
Opposition No. 91239967
23
directly or through a licensee, from September 30, 1995,” in reference to Opposer’s
pleaded ’194 and ’119 Registrations and one of its pleaded applications for goods in
Classes 9, 16 and 28, Applicant never asserted the same defense with respect to
JUMANJI clothing until doing so in its Trial Brief. Compare 17 TTABVUE 13, 14
(Answer to Amended Notice of Opposition ¶¶ 76, 79, 85, 87) with 71 TTABVUE 21.
In West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1666 (Fed.
Cir. 1994), the Federal Circuit found that the Board erred in considering an
unpleaded defense of abandonment, pointing out that the plaintiff in that case “was
never put on notice that it was faced with an abandonment allegation, and thus
[plaintiff] was not provided an adequate opportunity to address this issue.”
Second, to prevail on his abandonment defense, Applicant “bears at a minimum a
burden of coming forth with some evidence of abandonment.” Kemi Organics, 126
USPQ2d at 1605 (quoting West Fla. Seafood, 31 USPQ2d at 1666). Here, Applicant
has not come forth with specific evidence establishing that Opposer has abandoned
its mark for clothing. At the same time, we recognize that Opposer’s licenses to use
JUMANJI for clothing expired over 20 years ago, and Opposer failed to come forth
with specific evidence of its own establishing sales of new JUMANJI clothing from
2000-2014. This may tend to support a claim of abandonment, though it appears that
new JUMANJI clothing may have remained on sale for an unknown number of years
after the 1990s licenses expired.
In any event, as explained in more detail below, we need not resolve which party
has priority with respect to clothing. Rather, in considering whether the parties’
Opposition No. 91239967
24
marks are likely to be confused, we focus on Opposer’s goods and services unrelated
to clothing, which are sufficient to resolve this proceeding.
C. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”). Opposer bears the burden of establishing that there
is a likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). We consider the
likelihood of confusion factors about which there is evidence and argument. See In re
Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
1. Strength/Fame of Opposer’s Mark
Before addressing the marks and goods and services, we consider the strength of
Opposer’s mark, to ascertain the scope of protection to which it is entitled. There are
two types of strength: conceptual and commercial. In re Chippendales USA, Inc., 622
F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured
both by its conceptual strength … and its marketplace strength ….”).
Opposition No. 91239967
25
Turning first to conceptual strength, there is no evidence, and Applicant does not
argue, that Opposer’s mark is conceptually weak. The evidence is to the contrary.
Opposer introduced “negative” dictionary evidence from, inter alia, Dictionary.com,
Lexico.com (“Powered by Oxford”) and Merriam-Webster showing that JUMANJI is
not an English word. 29 TTABVUE 1-18, 21. According to Definitions.com and
Abbreviations.com (which appear to be connected), the term is instead the name of
Opposer’s movies JUMANJI and JUMANJI: WELCOME TO THE JUNGLE. Id. at
19, 24. We therefore find that JUMANJI is arbitrary, and thus conceptually strong.
As for commercial strength, we must determine where to place Opposer’s mark on
the “spectrum” of marks, which ranges from “very strong to very weak.” Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340,
68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). See also, Joseph Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734-35 (Fed. Cir. 2017).
The record in this case fully supports Opposer’s claim that its mark is not only very
strong, but famous, at least for likelihood of confusion purposes.17
While Opposer has not introduced any consumer surveys showing fame, they are
not necessary; indeed, they “rarely appear.” Bose Corp. v. QSC Audio Prods. Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Rather, “fame of a mark may be

17 Applicant appears to concede that Opposer’s mark was famous at one point for audiovisual
works. 71 TTABVUE 25 (“Opposer has not propounded evidence to show its mark had
retained its fame in 2014, or even 2017.”) (emphasis added).

Opposition No. 91239967
26
measured indirectly, among other things, by the volume of sales and advertising
expenditures of the goods traveling under the mark, and by the length of time those
indicia of commercial awareness have been evident.” Id. Other relevant factors
include “length of use of the mark, market share, brand awareness, licensing
activities, and variety of goods bearing the mark.” Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
By each of these measures, Opposer’s JUMANJI mark is famous. Indeed, the
mark has been in the public consciousness for a quarter century, since the original
JUMANJI film opened as number one at the box office in 1995 and eventually became
that year’s 7th highest grossing film. While Applicant argues that the mark’s fame
went downhill from there, the evidence reveals that JUMANJI in fact became a
classic, at least in its genre, is now in Opposer’s words a “franchise,”18 and was famous
both before Applicant’s claimed date of first use in 2014, and in the ensuing years,
during which two more JUMANJI films were released. For example:
The original JUMANJI has “remained in continuous
distribution” for the last 25 years, via television (broadcast,
cable, video on demand and streaming) and home video
such as DVDs and Blu-ray discs. 30 TTABVUE 5 and 32
TTABVUE 20-22 (Stevens Dec. ¶ 6 and Ex. B).

Opposer has spent a confidential but significant sum
promoting home viewing of the film, and its efforts have
apparently been quite successful because Opposer has
earned a confidential but substantial sum from home

18 Opposer never explains exactly what it means by “franchise” in this context, but from the
record as a whole it appears that the term refers to a film which becomes a series, spawning
not only related films, but also, film or concept-related merchandise and perhaps even
services.
Opposition No. 91239967
27
viewing. 32 TTABVUE 5-6, 24-26, 37-67. (Stevens Dec. ¶ 7
and Exs. D and E).

The animated JUMANJI television series ran for several
years (1996-1999) after the original JUMANJI movie was
released. 30 TTABVUE 6 (Stevens Dec. ¶ 9). The show’s
first season was released on DVD in 2012, re-released in
2015 and, in 2017, the entire series was released on DVD,
and it remains available on video, by download and via
streaming. Id. at 6, 69-93 (Stevens Dec. ¶ 6 and Ex. F).

Opposer released ZATHURA − often referred to as an
“unofficial” or “sort of” sequel to JUMANJI and billed as
“from the world of JUMANJI” − in 2005, generating
significant press coverage. Id. at 8-9, 167-215 (Stevens Dec.
¶ 14 and Ex. H).

Opposer has licensed the JUMANJI mark for use in
connection with a wide variety of products collateral to the
film, including t-shirts and other clothing, toys and games,
trading cards, key chains, magnets, mugs, lunch boxes,
posters, etc., etc. Id. at 7, 95-165 (Stevens Dec. ¶¶ 10-12
and Ex. G).

The JUMANJI film franchise, including its associated
actors, television series, home video products and licensed
collateral products, has been in the public eye continuously
over the past quarter century, as illustrated by extensive,
widespread and sustained press coverage mentioning or
focusing on the JUMANJI mark and movie from 1995
through 2019. Id. at 8 (Stevens Dec. ¶ 13); 24 TTABVUE 1-
539; 27 TTABVUE 1-430; 28 TTABVUE 1-240.

After Applicant’s claimed first use date, but prior to trial,
JUMANJI became more famous as a result of the series’
second and third films, JUMANJI: WELCOME TO THE
JUNGLE and JUMANJI: THE NEXT LEVEL. Press
reports speculated on the sequel for years, some perceiving
it as a “reboot,” and press attention only increased at the
time it was officially announced and when it was being
heavily promoted in advance of its release. 30 TTABVUE
10-14, 31 TTABVUE 4-205 and 32 TTABVUE 28-51
(Stevens Dec. ¶¶ 17-26 and Exs. L-P).

Opposition No. 91239967
28
Opposer “spent many millions of dollars advertising
JUMANJI: WELCOME TO THE JUNGLE beginning in
2017,” including via the large Times Square billboard. 30
TTABVUE 12-13 (Stevens Dec. ¶ 22).

JUMANJI: WELCOME TO THE JUNGLE grossed “more
than $400 million in the United States alone. That figure
places the movie in the top fifty grossing domestic films of
all time.” Id. at 13 (Stevens Dec. ¶ 23) (emphasis added).
Sales of the movie on DVD, Blu-ray and 4K Ultra HD Blu-
ray have generated tens of millions in sales. Id. (Stevens
Dec. ¶ 24).

Where fame exists, as here, it “plays a ‘dominant role in the process of balancing
the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude of legal
protection.’” Bose, 63 USPQ2d at 1305 (quoting Recot, Inc. v. Benton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). A strong mark such as Opposer’s “casts a
long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). This factor
weighs heavily in favor of finding a likelihood of confusion.
2. The Marks
The marks are virtually identical “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691
(quoting du Pont, 177 USPQ at 567). Indeed, they are comprised of the exact same
letters in the exact same order, the only difference between them being what
Applicant claims to be two nonstandard punctuation marks (typically referred to as
an apostrophe and a tilde). These minor distinctions make no meaningful difference.
As for appearance, Opposer’s and Applicant’s marks are dominated by their
identical letters which appear in the identical order. The letters dwarf the
Opposition No. 91239967
29
punctuation marks, which by their nature are usually less important than the letters
they may impact. In fact, we have previously found an apostrophe to be “insignificant”
for likelihood of confusion purposes, as it is here because the marks are otherwise
virtually identical. Pinocchio’s Pizza Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228
(TTAB 1989).
The punctuation over the “N” in Applicant’s mark calls to mind a tilde and thus
the Spanish letter eñe (ñ), but Applicant claims that this punctuation mark has “no
effect.” Even if this punctuation mark served its typical purpose, or another purpose,
its effect on the term’s appearance is quite minimal and insufficient to distinguish
the marks.
While Applicant argues that the marks sound somewhat different because his
mark is pronounced “na-man-ji” with a pause between “na” and “man,” while
Opposer’s is pronounced as it is spelled, there is no evidence that a meaningful
number of consumers would pronounce Applicant’s mark as he intends. Rather, in
the absence of evidence to the contrary, we find that American consumers would most
likely pronounce Applicant’s mark as it is spelled, i.e. the same or substantially the
same as they would pronounce Opposer’s mark.19 This finding is supported by a
printout from “howtopronounce.com,” to the extent that it indicates that Opposer’s
mark JUMANJI is pronounced “joo-MON-jee.” 29 TTABVUE 28-29. Because the
parties’ marks are spelled essentially identically, the general proposition that “there

19 Even if consumers pronounced Applicant’s mark as he intends, it would still sound similar
to and rhyme with Opposer’s mark.
Opposition No. 91239967
30
is correct pronunciation of a trademark” is not particularly relevant here, because
whether the marks are pronounced “correctly” or not, they would be pronounced
similarly, as they consist of the same letters in the same order.
With respect to meaning, most of the dictionary entries and other evidence of
record indicate that Opposer’s mark has no meaning in English. Id. at 6-18 and 21.
There is no evidence that Applicant’s mark JU’MAÑJI has any meaning in English.
However, there is some evidence indicating that Opposer’s mark JUMANJI has a
meaning, specifically the title of Opposer’s film. Id. at 19, 24. In short, the marks are
so close, given that they consist of the same letters in the same order, that they would
both likely convey the same meaning, either no meaning as coined terms (as most of
the evidence of record suggests), or the title of Opposer’s film franchise (as indicated
by two reference works Opposer made of record).
To the extent Applicant continues to maintain that his mark JU’MAÑJI means
“wrong” in Uzbek, Kazakh or Azerbaijani, Opposer has introduced evidence calling
that claim into serious question. Specifically, Opposer relies on “negative” dictionary
evidence in all three languages, showing that the term has no meaning in any of
them. Id. at 34-36; 20 TTABVUE 164. Furthermore, Applicant’s MyMemory evidence
indicates that there are no “human” translations of the term JU’MAÑJI “from
professional translators, enterprises, web pages and freely available translation
repositories.” 20 TTABVUE 160-162. While the MyMemory entry states that
“computer translations” indicate that the term means “wrong” in each of the three
languages, there is no indication what a “computer translation” is, or what it is based
Opposition No. 91239967
31
on, other than the unilluminating statement that the computer translations are
“trying to learn how to translate from the human translation examples.” Id. This
unclear explanation is less persuasive than Opposer’s “negative” dictionary evidence,
and insufficient to support a finding that JU’MAÑJI means “wrong” in another
language.
Because the parties’ marks are so similar in appearance, sound, and meaning (or
lack thereof), we find that they create highly similar commercial impressions, either
as coined terms with no meaning or references to Opposer’s film franchise. See e.g.,
Inter Ikea Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1741 (TTAB 2014) (finding
IKEA and AKEA confusingly similar, stating “[w]here, as here, both marks are coined
terms that look alike and sound alike and there are no known differences in the
meaning to distinguish them, the marks engender a similar commercial impression”)
(citing cases); Atlas Supply Co. v. The Dayton Rubber Co., 125 USPQ 529, 530 (TTAB
1960) (“The marks ‘PLYCRON’ and ‘NYCRON’ are similar in composition, they bear
a marked resemblance in sound, and they are both coined terms having no apparent
meaning other than as trademarks. In view thereof, it is believed that purchasers of
tires might reasonably attribute a common origin to ‘PLYCRON’ tires and ‘NYCRON’
cord for making tires ….”).
We have not ignored the punctuation marks in Applicant’s mark, but have kept
in mind: (1) “the fallibility of memory over a period of time;” (2) that the “average”
purchaser “normally retains a general rather than a specific impression of
trademarks;” and (3) that Applicant’s and Opposer’s marks are comprised of the same
Opposition No. 91239967
32
letters in the same order. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). See also In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014) (“marks must be considered in light of the fallibility of memory”)
(citation, internal quotation marks, and ellipsis omitted). In short, typical consumers
are unlikely to remember the minor distinctions between the parties’ marks. We are
also mindful that “the Lanham Act’s tolerance for similarity between competing
marks varies inversely with the fame of the prior mark. As a mark’s fame increases,
the Act’s tolerance for similarities in competing marks falls.” Kenner Parker Toys, 22
USPQ2d at 1456. This factor also weighs heavily in support of finding a likelihood of
confusion.
3. The Goods, Services, Channels of Trade and Classes of
Consumers, and Variety of Goods and Services for Which Opposer
Uses its Mark
As we consider the goods and services, we keep in mind that they need not be
identical or even competitive in order to find a likelihood of confusion. Rather, the
question is whether the goods are marketed in a manner that “could give rise to the
mistaken belief that [the] goods emanate from the same source.” Coach Services, 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are
not identical, the consuming public may perceive them as related enough to cause
confusion about the source or origin of the goods and services.”); Recot, 54 USPQ2d
at 1898 (“even if the goods in question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind of the consuming public
Opposition No. 91239967
33
as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1109 (2007).
We must also keep in mind that fame remains “a dominant factor in the likelihood
of confusion analysis … independent of the consideration of the relatedness of the
goods.” Recot, 54 USPQ2d at 1898. That is, “when a product reaches the marketplace
under a famous mark, special care is necessary to appreciate that products not closely
related may nonetheless be confused as to source by the consumer because of the fame
of the mark.” Bose Corp., 63 USPQ2d at 1310.
Here, while Applicant and Opposer both offer t-shirts under their competing
marks, Opposer’s priority with respect to t-shirts is less than crystal clear. As
indicated in our discussion of priority, however, we need not resolve which party has
priority for clothing, because Opposer has established a clear relationship between
Applicant’s t-shirts and Opposer’s goods and services identified in its pleaded
registrations (for which priority is not at issue), as well those goods and services for
which Opposer has established common law priority through evidence of prior use.
More specifically, priority is not at issue with respect to Opposer’s DVDs featuring
motion pictures, downloadable motion pictures, video and board games, toys, posters,
books, animated television production services and other goods and services for which
its JUMANJI mark is registered. 19 TTABVUE 5-24; King Candy, 182 USPQ at 110.
In addition, Opposer has established priority through use, well prior to Applicant’s
claimed first use date in 2014, for, inter alia, mugs, magnets, jars, cups, plates, bowls,
bottles, lunch boxes, key chains and plush figures. 30 TTABVUE 5-7 and 32
Opposition No. 91239967
34
TTABVUE 20-22. (Stevens Dec. ¶¶ 6-11 and Exs. B-F, O). There is a clear
relationship between the goods and services for which Opposer has established
priority or for which priority is not at issue and the “t-shirts” identified in the involved
application.
In fact, “collateral merchandise” associated with entertainment, sports and other
properties is popular and common, as we have long recognized. See e.g., L.C.
Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) (“it is common
knowledge, and a fact of which we can take judicial notice, that the licensing of
commercial trademarks on ‘collateral products’ has become a part of everyday life”);
Turner Ent. Co. v. Nelson, 38 USPQ2d 1942, 1945 (TTAB 1996) (“It is common
knowledge, and, in the present case, undisputed that video games, t-shirts, beach
towels, caps and other logo-imprinted products are used as promotional items for a
diverse range of goods and services, not to mention for specific television shows
and movies.”) (emphasis added); In re Phillips-Van Heusen Corp., 228 USPQ 949,
951 (TTAB 1986) (“The licensing of commercial trademarks for use on ‘collateral’
products (such as clothing, glassware, linens, etc.), which are unrelated in nature to
these goods or services on which the marks are normally used, has become a common
practice in recent years.”). As the Federal Circuit’s predecessor court put it,
“‘collateral product’ use is a matter of textbook discussion.” Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 n.3 (CCPA 1981).
More to the point, where, as here, a mark is the type typically used for collateral
products, a junior user’s use of a similar mark for seemingly unrelated products is
Opposition No. 91239967
35
often found to cause confusion, precisely because consumers may assume that the
junior user’s seemingly unrelated products are among the collateral products licensed
by the senior user. For example: in L.C. Licensing we found confusion likely between
ENYCE for automobile accessories and the same mark for clothing, and in Turner
Ent. we found confusion likely between GILLIGAN’S ISLAND for a television show
and the same mark for suntan lotion. L.C. Licensing, 86 USPQ2d at 1883; Turner
Ent., 38 TTABVUE2d at 1942. In Phillips-Van Heusen we found confusion likely
between THE “21” CLUB in stylized form for restaurants and towels and 21 CLUB
for clothing, specifically pointing out that clothing, and “especially shirts … appear
to represent a particularly natural area for the ‘collateral product’ use of
commercial trademarks.” Phillips-Van Heusen, 228 USPQ2d at 951 (emphasis
added).
As Board and court cases have regularly found and commentators recognize, t-
shirts often bear marks used for goods or services unrelated to clothing, perhaps
especially marks for entertainment or sports products, such as movies or team names,
though the phenomenon goes well beyond that. See Black and Decker Mfg. Co. v. Big
Yank Corp., 231 USPQ 484, 486 (TTAB 1986) (“This record also supports the fact that
a number of companies have licensed relatively well-known marks (for example
COCA-COLA, CHAMPION, FIRESTONE, DUNLOP, GOODYEAR, etc.) in
connection with clothing.”) and MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 3:8 (5th ed. June 2021) (“Trademarks can serve to identify and distinguish a
‘secondary source’ in the sense of indicating sponsorship or authorization. The
Opposition No. 91239967
36
‘secondary source’ is the trademark owner and licensor who has permitted the use of
its mark on certain goods or services.”). Cf. In re Lululemon Athletica Canada Inc.,
105 USPQ2d 1684, 1689 n.4 (TTAB 2013) (“the consumer would understand the mark
on clothing to refer to the [mark owner’s] previously established mark for other goods
or services”) and In re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982)
(“The ‘ornamentation of a T-shirt can be of a special nature which inherently tells the
purchasing public the source of the T-shirt, not the source of manufacture but the
secondary source.”). As we stated in similar circumstances:
… consumers familiar with opposer’s television series and
licensed collateral products such as video games, clothing
items, beach towels, mugs and other diverse consumer
goods, all of which are marketed under opposer’s
GILLIGAN'S ISLAND mark, would be likely to believe,
upon encountering applicant’s mark GILLIGAN'S ISLAND
for suntan oil and lotion, sunblock, sunless tanning lotion,
after sun moisturizing lotion, lip balm, hand and body
lotion, hair shampoo and body bar soap, that the goods
originated with or were somehow associated with or
sponsored or licensed by the same entity.

Turner Ent., 38 USPQ2d at 1945-46 (citing cases).
In this case, Opposer has established a specific relationship between movies and
t-shirts bearing movie titles. Specifically, the following movie titles are registered
(some in stylized form or with designs) for motion pictures (or DVDs featuring motion
pictures) on the one hand and shirts or t-shirts on the other: THE GODFATHER,
BACK TO THE FUTURE, TOY STORY, HARRY POTTER, INDIANA JONES,
ALIEN, THE LION KING, MEN IN BLACK, STAR WARS, PLANET OF THE APES,
NAPOLEON DYNAMITE and PIRATES OF THE CARIBBEAN. 25 TTABVUE 1-
Opposition No. 91239967
37
129. “Third-party registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, although not evidence that the
marks shown therein are in use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to the extent that they may
serve to suggest that such goods or services are of a type which may emanate from a
single source.” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1998).
This evidence bears out what we said a quarter century ago: it is “common
knowledge” that t-shirts “and other logo-imprinted products are used as promotional
items for a diverse range of goods and services,” including movies and TV shows.
Turner Ent. 38 USPQ2d at 1945. It also establishes a relationship between the many
and various collateral goods identified in Opposer’s pleaded registrations, and those
for which Opposer has established prior use, and t-shirts. This factor also weighs in
favor of finding a likelihood of confusion.
As for channels of trade and classes of consumers, Applicant identifies his goods
as “clothing, namely t-shirts,” without any limitations on channels of trade. Opposer’s
pleaded registrations also contain no trade channel limitations. Given the lack of any
trade channel limitations in the parties’ identifications, we must presume that
Applicant’s identified goods and Opposer’s registered goods travel in all channels of
trade normal therefor. See Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An application with ‘no
restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s
Opposition No. 91239967
38
use is, in fact, restricted to a particular class of purchasers.’”); Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
Here, the evidence reveals that t-shirts may be sold in the same channels of trade
as some of the goods identified in Opposer’s pleaded registrations. For example, a
“target.com” listing for JUMANJI The Game includes a sponsored link by Ever
Apparel to a JUMANJI t-shirt. 30 TTABVUE 14 and 31 TTABVUE 167, 171 (Stevens
Dec. ¶ 26 and Ex. P). An “amazon.com” listing for a JUMANJI WELCOME TO THE
JUNGLE t-shirt includes a link to a JUMANJI game, the JUMANJI book and
additional JUMANJI t-shirts. 31 TTABVUE 178-82.20 An “amazon.com” listing for a
JUMANJI Doctor Bravestone Collectible Vinyl Figure includes a link to a JUMANJI
WELCOME TO THE JUNGLE t-shirt and JUMANJI board game. Id. at 189, 193.
More generally, the record reveals that merchandise bearing movie titles or other
“secondary source” identifiers is often in its own category, with its own trade
channels. For example, the “redbubble.com” website includes “The Official Jumanji
Merchandise Store!,” which includes JUMANJI drawstring bags, acrylic blocks, iPad
cases and skins and other products:

20 While JUMANJI: WELCOME TO THE JUNGLE was not released until after Applicant’s
claimed date of first use, this evidence is not cited in connection with priority, but instead in
order to show the relationship between different types of JUMANJI collateral merchandise.
At the same time, Opposer’s current use of JUMANJI for t-shirts may make consumers more
likely to confuse the source of Applicant’s goods, even if Opposer does not enjoy priority for
clothing.
Opposition No. 91239967
39

31 TTABVUE 195. Opposer introduced an “amazon.com” listing for the original
JUMANJI movie which not only offers the movie in streaming, DVD and Blu-ray
formats, but also links to other products under the heading “Customers who bought
this item also bought.” 30 TTABVUE 6, 41-46 (Stevens Dec. ¶ 8 and Ex. E). Among
the “also bought” items is JUMANJI The Game Action Game. Id. at 42. Similarly, the
listing also links, under the heading “Sponsored products related to this item,” to a
JUMANJI Handmade Vinyl Record Wall Clock.” Id. at 43; see also id. at 84. Similarly,
an “amazon.com” listing for the JUMANJI The Animated Series DVD includes, under
the heading “Related to this item” a link to the hardcover JUMANJI 50th Anniversary
Edition book by Mr. Van Allsburg, and links to JUMANJI games. Id. at 87-92. An
eBay listing for a vintage JUMANJI board game lists other JUMANJI games and the
Opposition No. 91239967
40
JUMANJI book under the heading “Frequently bought together.” Id. at 118-19.
Another eBay listing for a JUMANJI poster includes, under the heading “Similar
sponsored items,” a JUMANJI video.
In other words, as this evidence shows, there are essentially JUMANJI-related
channels of trade, which the Internet may enable or make more accessible, such as
Redbubble’s “Jumanji Merchandise Store.” This enables the relevant class of consum-
ers (JUMANJI fans) to search for a variety of JUMANJI-related products under “one
roof.” This factor also weighs in favor of finding a likelihood of confusion.21
In considering whether consumers would be likely to be confused as to source, we
find the related ninth du Pont factor, “the variety of goods on which a mark is or is
not used,” to be relevant as well. In re E.I. du Pont, 177 USPQ at 567. Specifically,
Opposer has established use of its JUMANJI mark in connection a broad range of
goods and services, including not just movies in various formats, but also various
types of toys and games, kitchen and household products, trading cards, posters, and,
for lack of a better description, assorted knick-knacks. Because Opposer has used its
mark for such a wide array of goods and services, we find that it would not be a
“stretch” for consumers to believe that Opposer also offers or licenses JUMANJI for
t-shirts.

21 It is easy to imagine college students or alumni visiting a school’s bookstore to purchase
school-affiliated merchandise, without knowing in advance whether they would purchase a
t-shirt, bumper sticker, coffee cup or other collateral product intended to show school spirit
or support. Similarly, grandparents may shop in a professional sports team’s “team store,”
intending to purchase a team poster for one grandchild, and a nerf basketball hoop bearing
the team’s name for another.
Opposition No. 91239967
41
In fact, in an analogous case, we found toy vehicles related to specifically different
collateral products offered by a record company, because “[i]t requires no stretch of
the imagination for consumers to believe that these varied collateral goods could
reasonably include toy cars … particularly in view of the fame of opposer’s MOTOWN
marks in connection with its music and entertainment services.” UMG Recordings
Inc. v. Mattel Inc., 100 USPQ2d 1868, 1884 (TTAB 2011). See also DC Comics Pan
American Grain Mfg. Co. Inc., 77 USPQ2d 1220, 1226 (TTAB 2005); Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1271 (TTAB 2003) (“this factor may favor a finding that
confusion is likely even if the goods are not obviously related”); Uncle Ben’s, Inc. v.
Stubenberg Int’l, Inc., 47 USPQ2d 1310, 1313 (TTAB 1998) (“Section 2(d) of the
Trademark Act also covers situations where the public, because of the similarity of
the marks, is likely to believe that a recognizably different product, because of the
similarity of the marks, emanates from, or is authorized, sponsored or licensed by the
prior user or registrant.”).
Finally, this case is closely analogous to The NASDAQ Stock Market, Inc. v.
Antartica, S.r.l., 69 USPQ2d 1718 (TTAB 2003) in a number of ways. There, a stock
market used its NASDAQ mark for its core stock market services as well as a variety
of collateral products, but, like Opposer in this case, failed to establish its “prior use
of NASDAQ for goods such as those identified in applicant’s application, or for
opposer’s collateral products that are closely related thereto.” Id. at 1727.
Nonetheless, the stock market’s use of its mark for less closely related collateral
Opposition No. 91239967
42
products “has been a natural outgrowth of its business, has expanded over time,” id.,
and therefore contributed to a finding of likelihood of confusion.
We conclude that countless individuals from market
traders to individual investors; those employed by or
directing "NASDAQ-listed" companies and those doing
business with them; academics, students and sports fans
have been exposed to opposer's NASDAQ mark and to its
use on or in conjunction with collateral products and as an
indicia of opposer’s sponsorship of a wide variety of events.
We also conclude that, under these circumstances,
individuals familiar with opposer, its services, collateral
products and event-sponsorship activities, when
confronted with applicant’s mark used on at least some of
its identified goods, will consider such goods either to be
promotional items of opposer or products branded with
opposer’s mark in conjunction with opposer’s sponsorship
of an event.

Id. at 1732. Similarly, here, movie fans and the many others exposed to Opposer’s
JUMANJI mark and its use in conjunction with collateral products will consider
Applicant’s t-shirts branded with a virtually identical mark to be Opposer’s
promotional items.22
4. Other Factors
Opposer argues, and we agree, that t-shirts are relatively inexpensive, and thus
unlikely to be purchased with significant care. In fact, Applicant’s t-shirts sell for $25,
and Opposer’s sell for less than that. 20 TTABVUE 147 (Applicant’s Response to
Interrogatory No. 6(d)); 31 TTABVUE 178. This also weighs in favor of finding a
likelihood of confusion.

22 This likelihood of confusion may be increased among fans who recall that Opposer itself
offered t-shirts well before Applicant’s claimed first use date, and those who know that
Opposer currently offers JUMANJI t-shirts, even if they also know that there was a gap in
Opposer’s use of JUMANJI for t-shirts.
Opposition No. 91239967
43
While Applicant’s explanation of how he came to choose his mark is quite a tale,
we disagree with Opposer’s argument that Applicant acted in bad faith. Even if
Applicant was aware of Opposer’s mark before choosing his own, that would not
establish bad faith or an intent to deceive. Action Temporary Services, Inc. v. Labor
Force, Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir. 1989) (“mere knowledge
of the existence of the prior user should not, by itself, constitute bad faith”). This factor
is neutral.
VI. Conclusion
Applicant failed to prove its counterclaims, leaving Opposer’s pleaded
registrations intact. When we consider those registrations and Opposer’s prior
common law use of its mark for not just movies but many and varied collateral
products, we find that consumers are likely to be confused as to the source of
Applicant’s JU’MAÑJI t-shirts. In fact, all of the likelihood of confusion factors weigh
in Opposer’s favor or are neutral. Confusion is likely.

Decision: The opposition is sustained on Opposer’s Section 2(d) claim. Registration
of Applicant’s mark is refused.