Kamagames Ltd.

Trademark Trial and Appeal Board

Apr 16, 2013

No. 85378900 (T.T.A.B. Apr. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kamagames Ltd.
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Serial Nos. 85377970, 85378900 and 85378952
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Jenna F. Karadbil of Pillsbury Winthrop Shaw Pittman LLP for Kamagames Ltd.

Katherine S. Chang, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
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Before Cataldo, Shaw and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Kamagames Ltd. (“applicant”) seeks registration of the marks KAMAGAMES
and KAMA GAMES (both in standard characters), and the mark shown below

for

Entertainment services all featuring online gaming,
namely, providing online computer and electronic games;
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Entertainment services, namely, providing on-line
computer games, enhancements within online computer
games, and game applications within online computer
games; providing online reviews of computer games, and
providing of information relating to computer games;
providing an Internet website portal in the field of
computer games and gaming; Entertainment services,
namely, providing virtual environments in which users
can interact through social games for recreational, leisure
or entertainment purposes.1
The word “GAMES” is disclaimed in the applications to register KAMA GAMES and
KG KAMA GAMES & Design.
The examining attorney refused registration of all three marks under Section
2(d) of the Act, on the ground that applicant’s marks, when used in connection with
applicant’s services, so resemble the previously-registered mark KAMA, in standard
characters, for “Video game controllers,”2 as to be likely to cause confusion.
After the refusals were made final, applicant appealed, and its requests for
reconsideration were denied. The Board then granted the examining attorney’s
motion to consolidate the three appeals. Applicant and the examining attorney
have filed briefs.
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

1 Application Serial Nos. 85377970 (filed July 21, 2011 based on applicant’s assertion
of an intent to use the mark), and 85378900 and 85378952 (both filed July 22, 2011 and
based on asserted first use dates of May 27, 2010), respectively.
2 Registration No. 3630288, filed September 4, 2008, issued June 2, 2009.
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(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 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/or 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.”). We discuss each of the
du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence. To the extent that any other du Pont factors for which no
evidence or argument was presented may nonetheless be applicable, we treat them
as neutral.
The Marks
Turning first to the similarity of the marks, we must compare them “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
That is, we may not dissect the marks into their various components. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
The test is not whether the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods
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and services offered under the respective marks is likely to result. San Fernando
Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB
1991). 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, 108 (TTAB 1975).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d
759, 105 USPQ 266, 268 (CCPA 1955).
In this case, the dominant element of each of applicant’s marks is KAMA,
which is identical to the mark in the cited registration. In fact, because applicant’s
services all directly relate to online, computer and social games, the word GAMES
in applicant’s marks is at best descriptive, and has been disclaimed in the marks
where it appears as a separate word. It is well-settled that disclaimed, descriptive
or generic matter may have little or no significance in a likelihood of confusion
determination. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
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‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re
Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re
Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word
ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”).
Moreover, KAMA appears first in applicant’s standard character marks,
further establishing that it is the dominant element of those marks. Presto Prods.
Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the
first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”); Palm Bay Imports Inc., 73 USPQ2d 1692; Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992). As for applicant’s design mark, our cases “reflect the principle that
if a mark comprises both a word and a design, the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services.” M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010);
see also, CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
(“in a composite mark comprising a design and words, the verbal portion of the
mark is the one most likely to indicate the origin of the goods to which it is affixed”);
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Katushiki Kaisha
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Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also, Giant Food,
Inc. v. Nation’s Food Service, Inc., 218 USPQ at 390.
In short, because the dominant element of applicant’s marks is identical to
the cited mark, we find that the parties’ marks are similar when considered in their
entireties. This factor therefore weighs in favor of a finding of likelihood of
confusion.3
The Parties’ Goods, Services and Channels of Trade
Turning to similarity of the parties’ goods and services, and their channels of
trade, it is well-settled that the goods need not be identical or even competitive in
order to support a finding of likelihood of confusion. It is enough that the goods are
related in some manner or that the circumstances surrounding their marketing are
such that they would be likely to be seen by the same persons under circumstances
which could give rise, because of the marks used, to a mistaken belief that the
parties’ goods or services originate from or are in some way associated with the
same source or that there is an association between the sources of each of the
parties’ goods or services. Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507

3 Applicant argued in its December 28, 2011 Office Action response that the marks
are not likely to be confused because the cited mark is used “under the house mark NYKO,”
while KAMAGAMES is itself applicant’s house mark. As the examining attorney pointed
out in the January 20, 2012 Office Action, however, we must compare the marks in
applicant’s drawings to the drawing of the mark in the cited registration. Blue Cross and
Blue Shield Ass’n v. Harvard Community Health Plan Inc., 17 USPQ2d 1075, 1077 (quoting
Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA
1959)); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).

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(TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854
(TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue is not whether purchasers would confuse the goods or
services, but rather whether there is a likelihood of confusion as to the source of the
goods or services. In re Rexel Inc., 223 USPQ at 832.
Here, applicant offers a variety of services in the field of online, computer and
social games, while the mark in the cited registration is used for video game
controllers. Neither party’s identification of goods or services includes any
limitations as to the specific type of goods or services or their channels of trade.
That is, registrant’s video game controllers are not limited to any particular type of
controller, such as a joystick, and may include controllers intended to be used with
any type of video game, including applicant’s online or computer games. Applicant’s
games, in turn, are also not limited to a particular type, and may include games not
requiring a controller, and games requiring a particular type of controller, such as a
personal computer or cell phone keyboard, or a joystick or other controller of the
type registrant offers. If goods are complementary in nature, or used together, this
relatedness can support a finding of likelihood of confusion. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re
Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272 (TTAB 2009).
This is why applicant’s strenuous efforts to establish that the parties’ goods
are unrelated and move in different channels of trade are unpersuasive. It simply
does not matter that the evidence shows that registrant’s goods are used for
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Nintendo Wii games, or that applicant’s games are played on smartphones. Indeed,
where, as here, the parties’ identifications of goods and services contain no
limitations, they are presumed to encompass all goods or services of the type
described, and the goods and services are presumed to move in all normal channels
of trade and be available to all classes of consumers. 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). We are bound by the parties’ identifications and we simply
cannot limit the goods, services, channels of trade or classes of customers to what
applicant’s evidence shows them to be. In re Bercut-Vandervoort & Co., 229 USPQ
763, 764-65 (TTAB 1986) (“It is well settled that in a proceeding such as this, the
question of likelihood of confusion must be determined by an analysis of the marks
as applied to the goods identified in the application vis-à-vis the goods recited in the
registration, rather than what extrinsic evidence shows those goods to be.”); see
also, Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38
(TTAB 2009) (“we must also analyze the similarity or dissimilarity and nature of
the goods based on the description of the goods set forth in the application and the
registration at issue … we may not limit or restrict the trailers listed in the cited
registration based on extrinsic evidence”).
In any event, the examining attorney submitted evidence establishing that
applicant’s services and registrant’s goods are at least related. See e.g., Denial of
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Request for Reconsideration, August 10, 2012 (Wikipedia entries stating that a
computer game “is a video game played on a personal computer” and that an online
game “is a video game played over some form of computer network or on a video
game console such as the Xbox 360, Wii and Playstation 3”). In fact, the examining
attorney has established that video game controllers, which registrant offers, may
be used for computer games, which applicant offers. Id. (Amazon.com listing for
“Usb 2.0 Pc Computer Video Game Pad Controller Joypad”); Office Action, January
20, 2012 Exhibits (Amazon.com listing and review for “Konami Live! Online Game
Controller”). And even if applicant’s identification of services included the
limitation that applicant’s services are offered in connection with smartphone or
mobile games only, which it does not, the examining attorney has established that
third parties offer video game controllers for such games. Office Action, January 20,
2012 Exhibits (listings for video game controllers for iPhone, iPad and iPod).
Finally, the examining attorney has established through a number of use-based
federal trademark registrations that several third-parties offer both video game
controllers on the one hand and online, computer or social games on the other.
Office Action, November 15, 2011 Exhibits. “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.” In re Mucky
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Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); In re Davey Prods. Pty.
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).4
The examining attorney did not err in failing to consider the parties’ actual
channels of trade. As stated above, the examining attorney properly relied on the
parties’ identifications of goods and services, which are unlimited with respect to
channels of trade, and therefore we must presume that the parties’ goods and
services travel in all normal channels of trade for video game products and services.
In short, the evidence establishes that registrant’s goods are at least
complementary or related to applicant’s services. And neither applicant’s nor
registrant’s identifications contain any limitations as to the specific type of goods or
services offered, or their channels of trade. Therefore, both the similarity of the
parties’ goods and services and their channels of trade weigh in favor of a finding of
likelihood of confusion.
Other Factors
Applicant argues that its customers and registrant’s customers are
sophisticated because they “often” spend over $50 for a video game or a game
controller, and over $200 for a video game console. Even assuming that consumers

4 Applicant’s reliance on the Board’s unpublished decision in Monster Cable Products,
Inc. and Monster Cable International, Ltd. v. Tecmo, Ltd. and Tecmo Kabushiki Kaisha,
Opposition Nos. 91154125, 91154136 and 91158681 and Cancellation No. 92041581 (TTAB
2007) is misplaced. There, the Board found that “opposers’ core products are consumer
electronic equipment for providing high quality connections between electronic equipment,”
and that while opposer’s products could be used with video game consoles, “neither
opposers, nor their competitors, sell video games” and “there is no evidence that any
gaming hardware companies sell gaming software or vice versa.” Here, there is such
evidence. Office Action, January 20, 2012 Exhibits (Amazon.com listing and review for
“Konami Live! Online Game Controller”); Office Action, November 15, 2011 Exhibits.

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of video game products and services are sophisticated, however, it is well-settled
that sophisticated purchasers are not immune from source confusion. This is
especially true where, as here, they are faced with similar marks and related goods.
In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986);
Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988). This
factor is therefore neutral.
As stated, in the absence of relevant evidence or argument, we find that the
remaining likelihood of confusion factors are also neutral.
Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors, including applicant’s arguments and evidence, even if not
specifically discussed herein. In view of our findings that the marks are similar, the
goods and services complementary or related and the channels of trade unlimited,
we find that use of each of applicant’s marks is likely to cause confusion with the
cited registered mark as applied to registrant’s goods. To the extent that
applicant’s arguments raise any doubt concerning the likelihood of confusion, we
resolve any such doubt in registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe,
223 USPQ at 1290.
Decision: The examining attorney’s refusals to register applicant’s marks
under Section 2(d) of the Act are affirmed.