Mary Jo Puma

Trademark Trial and Appeal Board

Jul 22, 2008

No. 76644762 (T.T.A.B. Jul. 22, 2008)

Mailed: 7/22/08

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mary Jo Puma
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Serial No. 76644762
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Clifford G. Franyne for Mary Jo Puma.

Kevin L. Chisolm, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Quinn, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Mary Jo Puma filed an application to register the mark
ON THE ROAD TO THE WHITE HOUSE (in standard character form)
for “[a] board game.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, as used in

1 Application Serial No. 76644762, filed August 15, 2005,
alleging a bona fide intention to use the mark in commerce.
Applicant subsequently filed an amendment to allege use alleging
first use anywhere on November 18, 2005, and first use in
interstate commerce on November 21, 2005.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76644762
2
connection with applicant’s goods, so resembles the
previously registered mark ELECTING A PRESIDENT THE ROAD TO
THE WHITE HOUSE (“ELECTING A PRESIDENT” disclaimed) (in
typed form) for “[a] board game.”2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant contends that the marks, when considered in
their entireties, are dissimilar, with the words “ELECTING
A PRESIDENT” in registrant’s mark serving to sufficiently
distinguish the marks in terms of sound and appearance.
Although applicant admits that “both board games may be
sold in toy or game departments,” “they are not related and
cannot be played together, nor can they be sold together in
order to be played.” (Brief, p. 4). Applicant also
contends that applicant began using her mark prior to the
date of first use set forth in the cited registration.
The examining attorney maintains that the goods are
identical and that the marks are similar.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic

2 Registration No. 3071334, issued March 21, 2006.
Ser No. 76644762
3
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the goods, it is well settled that the
question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods identified in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992). Where the goods in the application
at issue and/or in the cited registration are broadly
identified as to their nature and type, such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
Ser No. 76644762
4
(TTAB 1981). In the present case, both the application and
the cited registration identify the goods as “[a] board
game.” Thus, for purposes of our analysis, the goods are
considered to be identical. We presume that the goods move
through the same trade channels to the same purchasers,
including ordinary consumers. The identity in these
factors heavily favors a finding of likelihood of
confusion.
Turning next to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. In comparing the
marks, we focus on the fallibility of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Finally, where, as in
the present case, the marks are used in connection with
identical goods, the degree of similarity between the marks
Ser No. 76644762
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that is necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In a likelihood of confusion analysis, 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. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the
past, disclaimed matter has been accorded subordinate
status relative to the more distinctive portions of a mark.
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); and In re Code Consultants
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) [Disclaimed matter
is often “less significant in creating the mark’s
commercial impression”]. In the present case, applicant
adopted the dominant portion of registrant’s mark, THE ROAD
TO THE WHITE HOUSE; applicant then merely deleted the
disclaimed portion of registrant’s mark, “ELECTING A
PRESIDENT,” and added the word “ON” to its mark. Any
differences in sound and appearance are clearly outweighed
by the identity in meaning, and the very similar overall
commercial impressions engendered by the marks. Both marks
convey the same thought, namely the board game involves a
Ser No. 76644762
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Presidential race; “the road to the White House”
necessarily includes electing a President and, thus, in
registrant’s mark, the “ELECTING A PRESIDENT” portion
reinforces “THE ROAD TO THE WHITE HOUSE” portion.
We conclude that consumers familiar with registrant’s
board game sold under the mark ELECTING A PRESIDENT THE
ROAD TO THE WHITE HOUSE would be likely to believe, upon
encountering applicant’s mark ON THE ROAD TO THE WHITE
HOUSE for a board game, that the goods originated with or
are somehow associated with or sponsored by the same
entity.
Finally, applicant relies on the fact that her alleged
dates of first use are earlier than the dates of first use
set forth in the cited registration. To the extent that
applicant’s allegations constitute a collateral attack on
registrant’s registration, they are impermissible. Section
7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal
Register shall be prima facie evidence of the validity of
the registration, of the registrant’s ownership of the mark
and of the registrant’s exclusive right to use the mark in
connection with the goods or services identified in the
certificate. During ex parte prosecution, including an ex
parte appeal, an applicant will not be heard on matters
Ser No. 76644762
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that constitute a collateral attack on the cited
registration (e.g., applicant’s claim of priority over the
cited mark). In re Dixie Restaurants, Inc., 41 USPQ2d at
1534; and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5
(TTAB 1992). See TMEP §1207.01(d)(iv) (5th ed. 2007).
Further, there is nothing to indicate that applicant has
sought to cancel the cited registration. Accordingly, no
consideration has been given to applicant’s arguments in
this regard.
Decision: The refusal to register is affirmed.