Imagination Holdings Pty., Ltd.

Trademark Trial and Appeal Board

Mar 3, 2008

No. 78692290 (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. 78692290
_______

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)1 on the
Principal Register for
Production of television programs; television
entertainment services, namely, an ongoing
television game show; production of television
game show programs. International Class 41

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 mark
THIS DECISION IS NOT
A PRECEDENT
OF THE TTAB
Serial No. 78692290
2
SPIN THE BOTTLE (typed mark), previously registered for
“entertainment in the nature of ongoing television programs
featuring musical, variety and general interest segments
dealing with events and personalities,”2 that it would, if
used on or in connection with the identified goods, be
likely to cause confusion.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm.
I. Applicable Law
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on the likelihood of confusion. See In re E.I. du Pont de
Nemours and 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., Inc., 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).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry

1 Filed August 14, 2005, alleging a bona fide intent to use the
mark in commerce.
2 Registration No. 2267325, issued August 3, 1999, alleging dates
of use and use in commerce as of October 1996. Trademark Act
§§ 8 & 15 affidavits accepted and acknowledged.
Serial No. 78692290
3
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
In response to the first office action, applicant
submitted 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 cited
registration was actually in use. Attached to Mr.
Johnson’s declaration were the following:
• Specimens submitted with the cited registrant’s
Trademark Act §§ 8 & 15 filing;

• The result 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;

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

• 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.

Serial No. 78692290
4
• Articles from WINDU.com and www.thefutoncritic.com
purporting to refer to the cited registrant or its
principals. Again, the Board is unable to find a
reference to the registrant in the first article; the
second contains the following reference:

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.

• Hit lists from Google and MSN resulting from a search
for “spin the bottle.” Applicant has submitted the
first ten of “about 615,000” hits from Google and the
first eleven of “752,492” hits from MSN.3

III. Preliminary Matters
Applicant devotes the bulk of its brief to suggestions
that the cited registrant never used (or is not currently
using) its registered mark, and that the registrant’s
Trademark Act § 8 filing was defective. Applicant
complains that the examining attorney “chose to
‘disregard’” these facts in refusing registration.
Applicant urges that “it is ... critical that the
Examiner’s Reference actually be in use to preclude
Applicant’s mark from being approved for registration.”

3 Both search result pages were submitted for the first time
attached to applicant’s brief on appeal. Normally, such evidence
would be disregarded as untimely. Trademark Rule 2.142(d).
However, because the examining attorney specifically addressed
these search results, and did not object to them, we have
considered this evidence. The other pages attached to
applicant’s brief are all duplicates of previously-submitted
evidence. See ITC Entm’t Group Ltd. v. Nintendo of Am. Inc., 45
Serial No. 78692290
5
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., In re
Dixie Rest., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (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 done the same.
IV. Likelihood of Confusion
A. Similarity of the Marks
The marks at issue in this case consist of the
identical words SPIN THE BOTTLE. Moreover, both marks are
registered without respect to any particular typeface,

USPQ2d 2021 (TTAB 1998)(filing of unnecessary papers strongly
discouraged).
Serial No. 78692290
6
stylization, or color. Accordingly, we must consider the
marks to be identical in every respect.
B. Similarity of the Services
We thus begin our analysis of the respective services
with the premise that, because the marks at issue are
identical, the extent to which the applicant’s and
registrant’s services must be similar or related to support
a finding of likelihood of confusion 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 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).
Serial No. 78692290
7
In the case at bar, applicant identifies services of
providing television production services, both generally
and with respect to game shows, and providing entertainment
services in the form of a television game show. The cited
registration also recites entertainment services in the
form of television programs, specifically featuring
musical, variety and general interest segments dealing with
events and personalities.
Because applicant’s services include “television
production services” without limitation, we must consider
the application to cover production of all television
programs, including the very types of programs identified
in the cited registration. The “viable relationship”
between producing a television program and providing the
program itself is obvious. We have little doubt that
viewers and advertisers, accustomed to seeing the
registrant’s mark used in connection with its television
entertainment services would, upon seeing applicant’s mark
used and credited for the production of television
programs, believe that there is a common source or
sponsorship of both services.
Applicant’s television programs and those of the cited
registrant are likewise closely related. Although
applicant identifies game shows and the registrant’s
Serial No. 78692290
8
television programs are directed toward other areas of
entertainment, both are in the same genre, namely,
television entertainment. Given the identical marks at
issue, we again have little doubt that viewers would
conclude that such programs have a common source.
We note that the selection of television programs
requires only a remote control and an opposable thumb.
Such decisions are not typically accompanied by long study
and careful deliberation, nor are viewers of such general-
interest programming necessarily sophisticated. Under such
circumstances, the likelihood that confusion will occur is
heightened.
C. Strength of Cited Mark
Applicant argues on appeal that the cited registrant’s
mark is 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
usually 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.4 In re Bayer Aktiengesellschaft, 488 F.3d 960, 82

4 Further, it is quite possible that at least some of the
displayed hits refer (or are owned by) the cited registrant.
See, e.g., “Spin the Bottle – Cast, Crew, Reviews, Plot
Summary....” us.imdb.com/title?0131596; “Spin The Bottle”
Serial No. 78692290
9
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 result listing include just a
few words in which the term is embedded, and some offer no
context at all. And as the examining attorney notes, just
because a term is often used in another context does not
demonstrate that the mark is weak in this context.
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 identical marks
used for closely related services. Applicant’s position
here would essentially give the registrant’s mark no
protection at all. Applicant’s arguments thus lack both
factual and legal support.
V. Conclusion
After careful consideration of the briefs and the
evidence of record, we conclude that, in view of the
identical marks at issue, their contemporaneous use on the
related services involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.

www.spinthebottle.com. But without further examination of the
webpage itself, it is unlikely that this could be determined.
Serial No. 78692290
10
Decision: The refusal under Trademark Act § 2(d) is
affirmed.