Vicious Cycle Software, Inc.

Trademark Trial and Appeal Board

Feb 12, 2008

No. 76646528 (T.T.A.B. Feb. 12, 2008)

Mailed:
Feb. 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Vicious Cycle Software, Inc.
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Serial No. 76646528
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Richard C. Jenkins of Jenkins, Wilson, Taylor & Hunt, PA
for Vicious Cycle Software, Inc.

Pamela N. Hirschman, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
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Before Seeherman, Grendel and Walsh, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Vicious Cycle Software, Inc., applicant herein, seeks
registration on the Principal Register of the mark MONKEY
BAR GAMES (in standard character form; GAMES disclaimed)
for goods identified in the application as “interactive
video game programs.”1

1 Serial No. 76646528, filed on September 12, 2005. The
application is based on applicant’s asserted bona fide intention
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76646528
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the goods identified in the
application, so resembles the mark MONKEY BARS, previously
registered (in standard character form) for goods
identified in the registration as “gaming devices, namely,
gaming machines and associated software for use therewith,”
as to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusal to register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidence submitted by applicant
for the first time with its appeal brief. Such evidence is
untimely, and we shall give it no consideration. See
Trademark Rule 2.142(d), 37 C.F.R. §2.142(d). Also, with
its response to the first Office action, applicant
submitted a TESS listing of third-party applications and
registrations. As the Trademark Examining Attorney
informed applicant in her final Office action, third-party
registrations may not be made of record in that manner, and

to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).
Ser. No. 76646528
3
we therefore have given the list no consideration. See In
re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re
Duofold Inc., 184 USPQ 638 (TTAB 1974).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
The test, under the first du Pont factor, is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
Ser. No. 76646528
4
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). Furthermore, although
the marks at issue 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
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
as follows. First, we find that the dominant feature in
the commercial impression created by applicant’s mark is
the designation MONKEY BAR. The word GAMES is generic for
the identified goods, and it therefore contributes little
or nothing to the source-indicating significance of the
mark. It is the designation MONKEY BAR that would be
viewed by purchasers as the primary source indicator in
applicant’s mark. Although we do not disregard the word
GAMES, we accord it less weight in our comparison of the
marks at issue. See In re Chatam International Inc.,
supra; In re National Data Corp., supra.
Ser. No. 76646528
5
In terms of appearance and sound, we find that
applicant’s mark MONKEY BAR GAMES and the cited registered
mark MONKEY BARS are highly similar. Indeed, the marks
look and sound exactly the same except for the plural “s”
added to the word “bar” in the cited registered mark and
the generic word “games” appearing in applicant’s mark.
Considering the marks in their entireties in terms of
appearance and sound, we find that these minor points of
dissimilarity are greatly outweighed by the overall
similarity between the marks which results from the
presence in both marks of the words MONKEY BAR(S).
In terms of connotation, we find that the marks are
highly similar. The record includes a dictionary
definition of registrant’s mark MONKEY BARS which defines
the term as “a three-dimensional structure of poles and
bars on which children can play, as in a playground; a
jungle gym.” (The American Heritage Dictionary of the
English Language (4th ed. 2000)). We find that purchasers
are likely to understand the designation MONKEY BAR in
applicant’s mark to have exactly the same meaning. We
further find that the generic word GAMES in applicant’s
mark does not suffice to distinguish the two marks in terms
of meaning. Viewed in their entireties, we find that the
marks are highly similar in meaning.
Ser. No. 76646528
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In terms of commercial impression, we find that the
marks are highly similar. Applicant’s mark essentially
takes the registered mark in its entirety and merely adds
the generic word GAMES. The designation MONKEY BAR(S), on
this record, is highly distinctive if not arbitrary as
applied to the goods identified in the application and in
the cited registration, and its presence in both marks (as
the whole of the cited registered mark and as the dominant
feature in applicant’s mark) gives the marks essentially
the same commercial impression.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that they are similar. The first du Pont factor
weighs in favor of a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration. It is
settled that it is not necessary goods be identical or even
competitive in order to find that the goods are related for
purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the goods be
Ser. No. 76646528
7
related in some manner, or that the circumstances
surrounding their use be such, that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
We will assume for purposes of this decision (and most
favorably to applicant) that registrant’s “gaming machines
and associated software for use therewith” solely or
primarily comprise gambling game machines, such as slot
machines, which are played in casinos by casino patrons.
We further will assume that MONKEY BARS is used by
registrant as the name of one of the casino gambling
machine games identified in the registration.
Applicant’s goods are broadly identified as
“interactive video game programs.” In the absence of any
restriction or limitation in the identification of goods,
we must presume that applicant’s “interactive video game
Ser. No. 76646528
8
programs” include video games of all types, including games
which are based upon or derived from the gambling machine
games which are played in casinos. These could be non-
gambling “home versions” of the casino games. We further
must presume that applicant’s interactive video game
programs would be sold in all normal trade channels for
such goods, including large electronics and computer
retailers such as Circuit City or Best Buy.
We find that the casino patrons who visit casinos to
play gambling machine games such as MONKEY BARS would
include ordinary consumers. These are the same consumers
who would shop at video game retailers such as Circuit City
or Best Buy. We find that a casino patron and ordinary
consumer who has played and enjoyed the MONKEY BARS
gambling machine game in a casino, and who later encounters
at Circuit City or Best Buy a video game called MONKEY BAR
GAMES, is likely to mistakenly assume that there is a
source, sponsorship, licensing or other relationship
between the two games. That is, such a consumer is likely
to assume that the MONKEY BAR GAMES video game he or she
encounters in the retail environment is the home version
of, or is otherwise based upon or derived from, the MONKEY
BARS game he or she played and enjoyed at the casino.

Ser. No. 76646528
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For these reasons, we find that the second du Pont
factor weighs in favor of a finding of likelihood of
confusion.
In summary, we find that applicant’s mark is highly
similar to the cited registered mark. We further find that
applicant’s goods as identified in the application are
sufficiently related to the goods identified in the cited
registration that use of the highly similar marks involved
in this case on such goods is likely to cause confusion.
We have carefully considered applicant’s arguments to the
contrary, but we are not persuaded. To the extent that any
doubts might exist as to the correctness of our likelihood
of confusion determination, we resolve such doubts against
applicant. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc. supra.

Decision: The refusal to register is affirmed.