Novomatic AGDownload PDFTrademark Trial and Appeal BoardDec 11, 202087685169 (T.T.A.B. Dec. 11, 2020) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: December 11, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Novomatic AG _____ Serial No. 87685169 _____ Peter H. Ajemian of Brownstein Hyatt Farber Schreck, LLP, for Novomatic AG. Barney L. Charlon, Trademark Examining Attorney, Law Office 104, Zachary B. Cromer, Managing Attorney. _____ Before Thurmon, Deputy Chief Administrative Trademark Judge, Kuczma and Pologeorgis, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Novomatic AG (“Applicant”) seeks registration on the Principal Register of the mark CHARMING LADY’S WILD SPELL (in standard characters) for: Computer game software for gaming machines, namely, slot machines with or without video output, in International Class 9; and Serial No. 87685169 - 2 - Arcade game machines for amusement arcades; Gaming machines; Gaming machines for casinos, in International Class 28.1 The Trademark Examining Attorney refused registration of Applicant’s mark under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No. 5566920 owned by Incredible Technologies, Inc. (“Registrant”), for the mark WILD SPELL (standard character mark) for “computer game software for gaming machines and gaming devices, namely, slot machines and machines which accept a wager” in International Class 9,2 as a bar to registration. After the Examining Attorney made the refusal final, Applicant appealed to this Board. Applicant and the Examining Attorney have submitted briefs. As set forth below, the refusal to register is affirmed. I. Evidentiary Objection The Examining Attorney objects to evidence submitted by Applicant with its Appeal Brief that was not made of record during examination and requests that the Board disregard it. The evidence consists of a printout of Applicant’s U.S. Application Serial No. 88770676 for the mark CHARMING LADY’S BOOM from the Trademark Status & Document Retrieval (TSDR) website. The evidentiary record in an application file should be complete prior to the filing of an ex parte appeal to the Board and evidence submitted with an appeal brief is 1 Application Serial No. 87685169 was filed on November 15, 2017, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Issued September 18, 2018. Serial No. 87685169 - 3 - usually not considered. Thus, materials not previously made of record during prosecution of the application are untimely if submitted for the first time at briefing. Trademark Rule 2.142(d), 37 C.F.R. §2.142(d); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §1203.02(e) (2020). If the applicant or the examining attorney desires to introduce additional evidence after an appeal is filed, they should submit a request to the Board to suspend the appeal and to remand the application for further examination. TBMP § 1207.01; TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 710.01(c) (Oct. 2018). Because the evidence Applicant submitted with its Appeal Brief was untimely, the Examining Attorney’s objection is sustained and the evidence will not be considered. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per curiam, 777 F. App’x 516 (Fed. Cir. 2019). II. Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act 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 enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 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 services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Serial No. 87685169 - 4 - Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); 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.”). Additionally, we consider the similarity of the trade channels, purchasers of the goods, and the strength of the cited mark. We have considered each DuPont factor for which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (not all of the DuPont factors are relevant to every case, only factors of significance to the particular mark need be considered). A. Similarity of the Marks It is well settled that marks are compared in their entireties for similarities in appearance, sound, connotation and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Serial No. 87685169 - 5 - Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)). Where the goods of the applicant and registrant are identical and/or closely related, as they are in this case as discussed more fully below, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004). Because the similarity or dissimilarity of the marks is determined by considering the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. 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) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). However, 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 a consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. Applicant contends that the arbitrary term “CHARMING LADY’S” as the first term in its mark is the dominant feature of its mark and this feature distinguishes Serial No. 87685169 - 6 - Applicant’s mark from Registrant’s mark.3 In support of this argument, Applicant points to its prior registration for the mark CHARMING LADY (Registration No. 4568826) for goods that are “essentially identical” to the goods in its current application.4 That Applicant owns a prior registration for the mark CHARMING LADY does not render the remaining wording in its subject mark, i.e., WILD SPELL, any less distinctive or otherwise diminish its significance in its present mark. Applicant presents no evidence supporting that the wording “WILD SPELL” lacks distinctiveness when used in connection with its goods. Applicant’s ownership of a single registration, Registration No. 4568826, for the mark CHARMING LADY, has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark Applicant seeks to register, rather than other marks Applicant has used or registered. In re Cynosure, 90 USPQ2d 1644, 1645-46 (TTAB 2009). Because Applicant’s mark begins with the term “CHARMING LADY’S,” potential purchasers will be aware of the partial differences in appearance and sound between Applicant’s mark and Registrant’s mark. However, customers familiar with Registrant’s WILD SPELL goods are likely to assume that the “CHARMING LADY’S” 3 Applicant’s Appeal Brief pp. 10, 11 (4 TTABVUE 11, 12). 4 Applicant’s Appeal Brief p. 10 (4 TTABVUE 11) citing the September 30, 2019 Response to Office Action, TSDR 191-196. Page references to the application record refer to the .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. Applicant also cites to the TSDR record for its “published” application for CHARMING LADY’S BOON (Serial No. 88770676) which was untimely submitted with Applicant’s Appeal Brief and for the reasons set forth above, is not considered. Serial No. 87685169 - 7 - in Applicant’s mark is a house mark or the name of a parent company, or that Applicant’s CHARMING LADY’S WILD SPELL goods are a new or additional product line from the same source as the goods sold under Registrant’s WILD SPELL mark. See e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); SMS, Inc. v. Byn-Mar Inc., 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer’s preexisting mark [ANDREA SIMONE] for its established line of clothing.”); In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985) (addition of house mark in LE CACHET De DIOR does not avoid likelihood of confusion with registered CACHET mark). Thus, the fact that Registrant’s mark is subsumed in Applicant’s mark increases the similarity between the marks. Applicant also asserts that its entire mark, CHARMING LADY’S WILD SPELL, “conjure[s] up a commercial impression of a female figure, or enchantress, being the one casting the ‘wild spell’ of luck for the consumer playing the gaming machine.” On the other hand, the cited mark WILD SPELL, according to Applicant, “conveys no such commercial impression of an actual figure casting a spell, leaving the consumer only with impressions of a wildly good time using the respectively named gaming software.”5 Although Applicant argues that “the addition or deletion of words to a mark may avoid a likelihood of consumer confusion if the marks in their entireties 5 Applicant’s Appeal Brief pp. 10-11 (4 TTABVUE 11-12). Serial No. 87685169 - 8 - convey different commercial impressions,”6 there is no evidence indicating what the commercial impression of either Applicant’s mark or Registrant’s mark means to potential customers. Further, the addition of the wording “CHARMING LADY’S” to “WILD SPELL” does not obviate the similarity between Applicant’s and Registrant’s marks. Although exceptions may arise when: (1) the matter common to the marks is merely descriptive or diluted and not likely to be perceived as a distinguishing source, or (2) the compared marks in their entireties convey a significantly different commercial impression, see Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); TMEP § 1207.01(b)(iii), neither of these are present here. There is no evidence showing that “CHARMING LADY’S” is descriptive or diluted, and both Applicant’s and Registrant’s marks contain the identical term “WILD SPELL,” which renders the marks similar in appearance and sound. As for the strength of the cited mark, Applicant notes that the cited mark coexists on the Principal Register with “a host of third-party registrations and allowed/published applications for other WILD-formative and SPELL-formative marks used in connection with related goods in the gaming industry” citing the following registrations for the marks indicated:7 6 Applicant’s Appeal Brief p. 8 (4 TTABVUE 9). 7 See September 30, 2019 Response to Office Action, TSDR pp. 108-190; July 10, 2018 Response to Office Action, TSDR pp. 254-333. Applicant also cited Registration Nos. 4472457 and 4305379, for GOLDEN SPELL and MERMAID’S SPELL respectively, which have been cancelled for failure to file a Section 8 declaration and therefore, are not considered. Serial No. 87685169 - 9 - • WILD WAVE (Reg. No. 5376697) • FROZEN WILD (Reg. No. 5369146) • WILD SURPRIZE (Reg. No. 5356698) • BEASTS OF THE WILD (Reg. No. 5346388) • WILD FURY JACKPOTS (Reg. No. 5347158) • WILD YUKON (Reg. No. 5338257) • WILD DRAGON (Reg. No. 5335503) • WILD EXOTIC ROSE (Reg. No. 5317942) • WILD INNOVATIONS (Reg. No. 5297834) • WILD TIMES RISING (Reg. No. 5262083) • WILD HIDE (Reg. No. 5241620) • WILD WISHES (Reg. No. 5147561) • WILD ROCKET (Reg. No. 5242641) • THE WILD CHASE (Reg. No. 5203250) • SUPER 5X WILD GAMBLER (Reg. No. 5149859) • SMOKIN’ WILD JACKPOTS (Reg. No. 5402077) • GREAT WILD ELK (Reg. No. 5237924) • WILD TRAIL (Reg. No. 4668434) Applicant also cited pending applications for WIZARD’S SPELL (Serial No. 87266084) and TIGER SPELL (Serial No. 87402095) which have since been abandoned on March 16, 2020 and November 9, 2020, respectively. Moreover, even if those applications were not abandoned, third-party applications have no probative value because they evidence only the fact that they were filed. See Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Serial No. 87685169 - 10 - • LOVE SPELL (Reg. No. 5336418) • SPELLTOWER (Reg. No. 5171857) • HALLOWEEN SPELLS (Reg. No. 4990142) • CRYSTAL SPELLS (Reg. No. 4568411) • BOOK OF SPELLS (Reg. No. 4779700) • SECRET SPELL (Reg. No. 5598083) Applicant argues that the Examining Attorney erred in finding a likelihood of confusion between Applicant’s mark and the cited mark because the marks exist in a crowded field heightening customers’ ability to distinguish between marks sharing common weak terms.8 We find this argument unpersuasive. We initially note that the cited mark issued on the Principal Register without a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. Accordingly, we find Registrant’s WILD SPELL mark, when viewed in its entirety, is inherently distinctive and, therefore, is entitled to the normal scope of protection accorded an inherently distinctive mark. With regard to Applicant’s third-party registration evidence, the Federal Circuit has held that if there is evidence that a mark, or an element of a mark, is commonly adopted by many different registrants, that may indicate that the common element has some non-source identifying significance that undermines its conceptual strength as an indicator of a single source. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 8 Applicant’s Appeal Brief p. 12 (4 TTABVUE 13). Serial No. 87685169 - 11 - (Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense in which a mark is used in ordinary parlance,’ … that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak’”) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). Here, however, Applicant’s third-party registration evidence merely identifies marks that include either the terms “WILD” or “SPELL” as part of composite marks that encompass other distinguishing words, none of which are as close to the cited mark in connotation or commercial impression. Furthermore, the search results submitted by the Examining Attorney show that Applicant’s and Registrant’s marks are the only two marks in the X-Search database9 for the same or related goods that contain the term “WILD SPELL.”10 Thus, Applicant has not presented any evidence demonstrating that the cited mark is conceptually weak. We also observe that there is no evidence of record demonstrating that third parties use marks similar to the cited mark WILD SPELL for similar goods. 9 X-Search is the USPTO’s computerized search system, containing text and images of registered marks, and marks in pending and abandoned applications. X-Search is used by examining attorneys when searching for conflicting marks during examination. See TMEP § 104 (Oct. 2018). 10 See October 24, 2019 Final Office Action at TSDR 6-8. The third mark found in the Examining Attorney’s X-Search database was for a dissimilar mark containing the words “Spell” and “Wildly” not used in connection with each other, for unrelated goods, i.e, beer. See Serial No. 86910450 at TSDR 8, issued as Registration No. 5098991. Serial No. 87685169 - 12 - Therefore, the cited mark WILD SPELL, based on this record, is not commercially weak. Taken in their entireties, we find the marks more similar than dissimilar and, therefore, the first DuPont factor weighs in favor of finding a likelihood of confusion. B. Similarity of the Goods, Customers and Channels of Trade We next turn to the DuPont factors involving the similarity of the goods, customers and trade channels, keeping in mind that determining likelihood of confusion is based on the identification of the goods as stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 123 USPQ2d at 1749). Applicant’s goods in Class 9, i.e., computer game software for gaming machines, namely, slot machines with or without video output,11 are legally identical to Registrant’s “computer game software for gaming machines and gaming devices, namely, slot machines . . . .” Because these goods are legally identical, we must presume that they travel through the same channels of trade and are offered to the same or overlapping classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 11 Applicant does not address the identity or relatedness of the goods of Applicant and Registrant. Serial No. 87685169 - 13 - 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). Additionally, Applicant’s goods in Class 28, including gaming machines and gaming machines for casinos, are related to Registrant’s “computer game software for gaming machines and gaming devices, namely, slot machines,” since gaming machines and software for gaming machines, emanate from a common source. In support of the relatedness of these goods, the Examining Attorney submitted third-party Internet evidence from AGS LLC (playags.com), Everi (everi.com) and Bluberi Gaming Canada Inc. (bluberi.com)12 showing that Applicant’s gaming machines and Registrant’s computer game software for gaming slot machines are goods marketed by the same entities under the same marks through the same trade channels. Thus, Applicant’s gaming machines and Registrant’s computer game software for gaming machines and gaming devices are related for likelihood of confusion purposes. See, e.g., Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis”); In re I-Coat, 126 USPQ2d at1 1738-39; In re C.H. Hanson, 116 USPQ at 1355-56; In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009). 12 See October 24, 2019 Final Office Action: and at TSDR 61-67; , and at TSDR 68-75; and at TSDR 76-81. Serial No. 87685169 - 14 - Additionally, the Examining Attorney submitted fifteen third-party registrations, owned by fourteen different entities, identifying both gaming machines and software.13 While use-based third-party registrations alone are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless may have some probative value to the extent they suggest the goods of Applicant and Registrant are of a kind that may emanate from a single source under a single mark. See In re I-Coat, 126 USPQ2d at 1738-39; In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). The Internet and third-party registration evidence demonstrate that the goods for which Applicant and Registrant use their marks emanate from the same sources, and are offered in common channels of trade to the same purchasers under similar marks. Thus, the 2nd and 3rd DuPont factors weigh in favor of a finding of likelihood of confusion. 13 See evidence submitted with: October 24, 2019 Final Office Action identifying thirteen registrations owned by different registrants: Registration No. 4891617 at TSDR 13-16, Registration No. 5845870 at TSDR 17-19, Registration No. 5686638 at TSDR 20-22, Registration No. 5784522 at TSDR 23-25, Registration No. 5638794 at TSDR 26-29, Registration No. 5728770 at TSDR 30-32, Registration No. 5829485 at TSDR 33-38, Registration No. 5549329 at TSDR 39-41, Registration No. 5776580 at TSDR 42-46, Registration No. 5852429 at TSDR 47-49, Registration No. 5580136 at TSDR 50-52, Registration No. 5725105 at TSDR 53-57, Registration No. 5759191 at TSDR 58-60; and March 31, 2019 Office Action identifying two registrations: Registration No. 4722915 at TSDR 9-12, Registration No. 5687288 at TSDR 13-15 (same owner as Registration No. 5852429). Serial No. 87685169 - 15 - C. Conclusion We have considered all of the arguments and evidence of record. Every DuPont factor we considered favors a finding that confusion is likely. Accordingly, Applicant’s CHARMING LADY’S WILD SPELL mark, as used in connection with the goods identified in its involved application, so resembles the cited mark WILD SPELL for Registrant’s identified goods as to be likely to cause confusion or mistake, or to deceive under § 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s mark CHARMING LADY’S WILD SPELL under § 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation