Imagination Holdings Pty., Ltd.

Trademark Trial and Appeal Board

Mar 3, 2008

No. 78635569 (T.T.A.B. Mar. 3, 2008)

Mailed: March 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Imagination Holdings Pty., Ltd.
________

Serial No. 78635569
_______

Vincent M. Amberly of Litman Law Offices, Ltd. for
Imagination Holdings Pty., Ltd.

Maria-Victoria Suarez, Trademark Examining Attorney, Law
Office 102 (Karen Strzyz, Managing Attorney).
_______

Before Rogers, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Imagination Holdings Pty., Ltd., seeks registration of
the mark SPIN THE BOTTLE (standard characters) on the
Principal Register for
DVDs and CD-ROMS containing games, board games,
interactive games, video games, computer games,
game shows, and games containing interactive
questions and answers; all the foregoing
containing instructions; video games from
television shows, cartoon and films; multimedia
games that may be played via a DVD machine,
computer and television or monitor; software,
namely multimedia software recorded on DVD or CD-
ROM to provide the above functions.

International Class 9.
THIS DECISION IS NOT
A PRECEDENT
OF THE TTAB
Serial No. 78635569
2
The examining attorney issued a final refusal to
register under Trademark Act § 2(d), 15 U.S.C. § 1052(d),
on the ground that applicant’s mark so resembles the marks
in the registrations set out below that it would, if used
on or in connection with the identified goods, be likely to
cause confusion.
Registration Mark Goods/Services
22673251 SPIN THE BOTTLE (typed mark)
Entertainment in the nature of ongoing television
programs featuring musical, variety and general
interest segments dealing with events and
personalities. International Class 41.
26694462
Electrical and mechanical toys; action games;
and puzzles. International Class 28.

ELECTRONIC and SPIN THE BOTTLE
disclaimed

Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm.
I. Applicable Law
We base our determination under Trademark Act § 2(d)
on an analysis of all of the probative evidence of record
bearing on the issue of likelihood of confusion. See In re
E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973); Palm Bay Imports, Inc. v. Veuve Clicquot

1 Registered August 3, 1999, to Spin the Bottle, Inc. Affidavits
under Trademark Act §§ 8 & 15 accepted and acknowledged.
2 Registered December 31, 2002, and currently owned by Character
Games, Ltd.
Serial No. 78635569
3
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Rest., Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); In re Azteca Restaurant Enter., Inc., 50 USPQ2d 1209
(TTAB 1999).
II. Record on Appeal
The examining attorney submitted the records of
nineteen third-party registrations based on use in
commerce, to “suggest that the goods and/or services listed
therein ... are of a kind that may emanate from a single
source.”
Applicant submitted the following evidence:
• Search result lists from Google and MSN search engines
revealing web sites that include the phrase “spin the
bottle.” Applicant has submitted the first ten of
“about 615,000” entries from Google and the first
eleven of “752,492” entries from MSN.

Serial No. 78635569
4
• The declaration of David P. Johnson, an employee in
the offices of applicant’s counsel. Mr. Johnson
recounts his efforts (including two hours of Internet
research) to learn whether the mark in the ‘325
Registration is actually in use. Attached to the
declaration were the following:

o Specimens submitted with the cited registrant’s
Trademark Act §§ 8 & 15 filings;

o The results page from a “Hoovers” report returning
information allegedly concerning the cited
registrant, indicating that it did business in New
York under the trade name Tad2000;

o A reference on AskMen.com stating that
“SpinTheBottle.com is a cool interactive site
that’ll keep you entertained with wacky features.”

o A Wikipedia article which, according to Mr. Johnson,
indicates that the cited registrant created a
television show (airing in Canada and Europe) called
“Pop-Up Video.” (While we have examined this page
carefully, the Board is unable to discern any
reference to the registrant on this exhibit.)

o Articles from WINDU.com and www.thefutoncritic.com
purporting to refer to the cited registrant or its
principals. (The Board is unable to find a
reference to the registrant in the first article;
the second contains the reference quoted below.)

The music channel is set to go ahead with
the series, a pseudo-sequel to the networks
popular “Pop-Up Video” series. Woody
Thompson and his Spin the Bottle production
company is behind the project, which is set
to roll out in the spring or early summer.

III. Preliminary Matter
Applicant suggests that the owner of the ‘325
Registration never used (or is not currently using) its
registered mark, and that the registrant’s Trademark Act
Serial No. 78635569
5
§ 8 filing was defective. Applicant urges that the refusal
should be reversed, “given that doubt exists in the record
as to the use of [Registration No. 2267325] in regard to
television services.”
Contrary to applicant’s argument, an examination of
the validity of the cited registration or of the
registrant’s use of its mark lies well beyond the scope of
this appeal. By statute, an issued registration is
prima facie evidence of the validity of the
registered mark and of the registration of the
mark, of the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use
the registered mark in commerce on or in
connection with the goods or services specified
in the certificate....

Trademark Act § 7(b).
It is long-settled that an attack on the validity of a
registration will not be heard in an ex parte proceeding,
in which the owner of the cited registration has no right
to appear. See, e.g., Dixie Rest., 41 USPQ2d at 1534-35
(Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168
USPQ 278, 280 (CCPA 1971); In re Pollio Dairy Prod. Corp.,
8 USPQ2d 2012, 2014-15 (TTAB 1988). The examining attorney
was correct to disregard these arguments, and we have too.
Serial No. 78635569
6
IV. Likelihood of Confusion
We consider the question of likelihood of confusion
with respect to each of the cited registrations.
A. Registration No. 2267325
1. Similarity of the Marks
The marks at issue with respect to the ‘325
Registration consist of the identical words SPIN THE
BOTTLE. Moreover, both marks are registered without
respect to any particular typeface, stylization, or color.
Accordingly, we must consider the marks to be identical in
every respect. Phillips Petroleum Co. v. C.J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35 (CCPA 1971); Jockey Int’l Inc.
v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992).
Applicant argues that both cited registrants’ marks
are weak, relying on its Google and MSN searches for “spin
the bottle.” We agree with the examining attorney,
however, that result summaries from search engines are of
very little probative value. They do not necessarily
reflect the way a term is used on the webpage itself, nor
do they show use of a particular term in context.3 In re

3 Further, it is quite possible that at least some of the
displayed hits refer to (or are owned by) the ‘325 Registrant.
E.g., “Spin the Bottle – Cast, Crew, Reviews, Plot Summary....”
us.imdb.com/title?0131596; “Spin The Bottle”
www.spinthebottle.com. But without further examination of the
webpage itself, even this cannot be determined.

Serial No. 78635569
7
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828
(Fed. Cir. 2007); In re Fitch IBCA Inc., 64 USPQ2d 1058,
1060 (TTAB 2002). This case is no exception; most of the
references on the Google and MSN results lists include just
a few words in which the term is embedded, and some offer
no words purportedly appearing on the web page. And as the
examining attorney notes, just because a term is often used
does not demonstrate that the mark is weak in this context.
The identical marks at issue is a factor which
strongly supports the refusal to register with respect to
the ‘325 Registration. In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
2. Similarity of the Goods and Services
We begin our analysis of the respective goods and
services with the premise that, because applicant’s mark is
identical to that in the ‘325 Registration, the extent to
which the applicant’s and registrant’s goods and services
must be similar or related to support a finding of
likelihood of confusion with respect to that registration
is lessened. See In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001). It is only necessary that there be a viable
relationship between the two to support a finding of
Serial No. 78635569
8
likelihood of confusion. See In re Concordia Int’l
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Further, our analysis is limited to the goods or
services set out in the application and those in the cited
registration. Where those goods or services are identified
broadly, we must construe them as such, despite any
extrinsic evidence purporting to show that the applicant or
registrant is engaged in different or more limited
activities than would be covered by its registration. See,
e.g., Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981); In re Linkvest S.A., 24
USPQ2d 1716, 1717 (TTAB 1992).
In the case at bar, applicant identifies its goods as:
DVDs and CD-ROMS containing games, board games,
interactive games, video games, computer games,
game shows, and games containing interactive
questions and answers; all the foregoing
containing instructions; video games from
television shows, cartoon and films; multimedia
games that may be played via a DVD machine,
computer and television or monitor; software,
namely multimedia software recorded on DVD or CD-
ROM to provide the above functions.

The cited registration recites entertainment services in
the form of television programs, specifically featuring
musical, variety and general interest segments dealing with
events and personalities.
Serial No. 78635569
9
We find that applicant’s goods and the ‘325
Registrant’s services are significantly related, at least
in part. For instance, applicant’s goods include “DVDs and
CD-ROMs containing ... computer games, game shows, ...
games containing interactive questions and answers...;
[and] video games from television shows,” while the cited
registrant provides musical, variety, and general interest
“television programs.” Although the cited registration
does not specifically include game shows, we find that
consumers would nonetheless be likely to believe that
recordings of game shows and video games from television
shows on the one hand and musical, variety, and general
interest television shows on the other, emanate from or are
sponsored by a common source.
Our conclusion is further buttressed by the examining
attorney’s evidence of several registrations indicating the
offering of both computer games and television programs and
production under the same mark. Third-party registrations
which individually cover a number of different items and
which are based on use in commerce may serve to suggest
that the listed goods are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1469 (TTAB 1988), aff'd No. 88-1444 (Fed. Cir.
Serial No. 78635569
10
Nov. 14, 1988). We find the following registrations
relevant here:
Reg. No. Mark Class Goods/Services
3006625 DARK AGE OF
CAMELOT:
CATACOMBS
9 game software...; computer game cartridges;
computer game disks; ... video game cassettes
41 production and distribution of motion pictures and
television programs; entertainment in the nature of on-
going television programs in the field of ...
entertainment
2557042 RUTHLESS.COM 9 computer game cartridges, computer game programs;
video game cartridges, video game programs
41 Entertainment in the nature of on-going television
shows featuring action/adventure programs, ...
television show production ....
3007341 JUDGE DREDD 9 Video game discs, cartridges, software, tape cassettes
and electronic games programs; ... computer game
programs
41 Production of films for cinema, television and DVD
2886015 DUALSTAR 9 Computer software for video games and computer
games; video game cartridges and disks
41 Production of and distribution of motion pictures, films,
television shows; .... production of videotapes

These registrations tend to suggest that applicant’s
goods and the services in the ‘325 Registration are of a
type which can and do emanate from a common source.
In light of the identical marks at issue, consumers
are likely to assume that the goods and services involved
here share a common source or sponsorship, and we find that
confusion is likely with respect to the ‘325 Registration.
B. Registration No. 2669446
1. Similarity of the Marks
The ‘446 Registration is for the words ELECTRONIC SPIN
THE BOTTLE as incorporated into the following design:
Serial No. 78635569
11

The words SPIN and BOTTLE dominate this mark; they are
visually larger than either the image of the spinning
bottle or the words ELECTRONIC and THE. Moreover, the
drawing image of a spinning bottle clearly reinforces the
literal phrase SPIN THE BOTTLE, rather than providing a
distinguishing commercial impression. Finally, the literal
portion of the mark is likely to be the most significant to
the relevant purchasers, because it is that portion they
will use in requesting the goods. Dixie Rest., 41 USPQ2d
at 1534.
With respect to the ‘446 Registration, applicant
argues that
[t]he disclaimer made to the exclusive right to
use the “SPIN THE BOTTLE” term or words apart
from the entire mark ... is critical. The owner
of the [‘446 Registration] does not have rights
to the mark SPIN THE BOTTLE separate and apart
from use of those words as part of the overall
design mark for that registration. ...
[B]ecause the owner of the [‘446 Registration]
has disclaimed the term “SPIN THE BOTTLE”
separate and apart from its mark, [this
registration] should not be cited as an obstacle
to Applicant’s registration of its SPIN THE
BOTTLE trademark.

Serial No. 78635569
12
Appl. Br. at 4.
To the extent applicant argues that the disclaimed
matter in the cited mark must be ignored, it is simply
incorrect. Disclaimed matter is not removed from a mark,
and must be considered with the rest of the marks as a
whole in assessing their similarity. As the Court of
Appeals put it,
it is well settled that the disclaimed material
still forms a part of the mark and cannot be
ignored in determining likelihood of confusion.
Such disclaimers are not helpful in preventing
likelihood of confusion in the mind of the
consumer, because he is unaware of their
existence. Therefore, the disclaimed portions of
the mark must be considered in determining the
likelihood of confusion.

Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983); see also In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751-52
(Fed. Cir. 1985); V-M Corp. v. Mayfair Sound Prod., Inc.,
480 F.2d 898, 178 USPQ 477, 477-78 (CCPA 1973).
Nonetheless, applicant is correct to the extent that
it attempts to argue that a descriptive or highly
suggestive element of a mark is typically of less
significance in forming a commercial impression. Since
many disclaimers are made because the disclaimed term is
descriptive, disclaimed matter is frequently entitled to
relatively less weight in an overall comparison of marks.
Serial No. 78635569
13
But this is not true as a rule, because disclaimers may be
entered for a variety of reasons or – at least as far as
the USPTO is concerned – for no reason at all. See In re
MCI Communications Corp., 21 USPQ2d 1534 (Comm’r 1991)
(applicant may voluntarily disclaim any portion of a mark,
whether registrable or not); see also TRADEMARK MANUAL OF
EXAMINING PROCEDURE § 1213.01(c) (5th ed. 2007). Applicant has
not submitted evidence of the term’s descriptiveness, nor
has it even offered a theory as to how the term is
descriptive or should otherwise be entitled to less weight
in this context in determining commercial impression.
But even accepting applicant’s premise for the sake of
argument (and we make no such finding), it is undeniable
that even weak marks are entitled to protection. King
Foods, Inc. v. Town & Country Food Co., Inc., 159 USPQ 44
(TTAB 1968). Here, we are presented with substantially
similar marks used for closely related goods and services.
Under these circumstances, the mere weakness of the mark
does not obviate confusion, because it is the common
portion of the marks (and the whole of applicant’s mark)
that is allegedly weak.
Applicant’s mark is substantially similar to the
dominant, albeit disclaimed, portion of the ‘446
Registration. While we have not overlooked the design
Serial No. 78635569
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elements or applicant’s arguments regarding the weakness of
SPIN THE BOTTLE, we nonetheless conclude that – as a whole
– applicant’s mark shares significant similarities with the
mark in the ‘446 Registration.
The similarity of the marks is thus a factor which
supports the refusal to register as to both registrations.
B. Similarity of the Goods and Services
Applicant’s computer games and related items are
closely related to the goods identified in the ‘446
Registration. Applicant’s goods include
DVDs and CD-ROMS containing games, board games,
interactive games, video games, computer games,
game shows, and games containing interactive
questions and answers; ... video games from
television shows, cartoon and films; multimedia
games ...; software, namely multimedia software
recorded on DVD or CD-ROM to provide the above
functions.

The cited registrant’s goods are “electrical and mechanical
toys[,] action games[,] and puzzles.”
Neither registrant’s nor applicant’s games and puzzles
are limited to any particular type, and thus must be
considered to include all such goods. As such, we must
consider applicant’s game software to include computer
implementations of registrant’s electrical and mechanical
toys, action games and puzzles in a different medium, and
thus very closely related.
Serial No. 78635569
15
The close similarity of the respective goods and
services involved supports the examining attorney’s refusal
to register. We find that, in light of the substantially
similar marks and the close relationship of the goods and
services, confusion is likely with respect to the ‘446
Registration.
V. Conclusion
After careful consideration of the briefs and of all
the evidence of record, we conclude that, in view of the
substantial similarity in the commercial impressions of
applicant’s mark, SPIN THE BOTTLE, and registrants’ marks,
their contemporaneous use on the closely related goods and
services involved in this case is likely to cause confusion
as to the source or sponsorship of applicant’s goods.
Decision: The refusal under Trademark Act § 2(d) is
affirmed.