Palladium Books, Inc.

Trademark Trial and Appeal Board

Jun 11, 1997

EX (T.T.A.B. Jun. 11, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB June 11, 1997
Paper No. 23
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Palladium Books, Inc.
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Serial No. 74/395,149
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Lawrence R. Jordan of Seeligson & Jordan for Palladium Books, Inc.
Michael A. Szoke, Trademark Examining Attorney, Law Office
103 (Kathryn D. Erskine, Managing Attorney).
_______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 27, 1993, applicant applied to register the mark
"TRIAX" on the Principal Register for "characters and items
in books which contain rules and data for playing role
playing games involving science fiction and fantasy
adventures," in Classes 16 and 28. Use of the term as a
trademark on the goods in interstate commerce was claimed
since August 9, 1990.
The Examining Attorney noted that the Office had
apparently misplaced the specimens submitted in support of
registration, and asked applicant to supply additional
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copies of the originals. A more definite identification of
the goods on which the mark is used was also required. The
Examining Attorney suggested "books featuring rules and data
for role playing games involving science fiction and fantasy
adventure." Applicant responded with an amendment changing
the identification clause to "characters and items in books
featuring rules and data for playing games involving science
fiction and fantasy adventures." Three additional
specimens, identical to those originally submitted, were
included with the response. The specimens are copies of a
soft-cover book one hundred and twenty pages long titled
"RIFTS Sourcebook Number One."
The Examining Attorney rejected the amended version of
the identification of goods clause and suggested the
following: "books featuring rules and data for role playing
games involving science fiction and fantasy adventures,
characters and items." The specimens were held unacceptable
on the ground that they do not show use of the mark as a
source indicator, but rather show the term sought to be
registered used to identify a character in applicant's
books. New specimens were required by the Examining
Attorney.
Applicant responded by adopting the suggested
identification of goods clause and arguing that the original
specimens do show the term used as a trademark for the goods
set forth in the application, as amended. In support of its
position, applicant submitted "a copy of the cover of a new
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Palladium Books, Inc. product, the book entitled 'TRIAX and
the NGR." The title is shown in large print on the copy of
the book cover, with "RIFTS WORLD BOOK FIVE" presented in
smaller letters as a subtitle. Applicant conceded that this
book was not published until after the application to
register "TRIAX" had been filed, but contended that it is
evidence that shows a continuation of applicant's use of the
word as a trademark.
The Examining Attorney was not persuaded. He refused
registration under Sections 1, 2 and 45 of the Act on the
ground that the term sought to be registered does not
function as a trademark for the goods set forth in the
application, but rather identifies fictional subject matter
discussed in applicant's books. The text in the specimens
submitted with the application, "RIFTS Sourcebook Number
One," makes repeated references to "Triax Industries" as an
arms manufacturer in applicant's futuristic, war-torn world.
Specific products of this fictitious enterprise are listed
in the text, e.g., the "Triax T-21 Terrain Hopper Power
Armor"; the "Triax X-500 Forager Battlebot"; and the "Triax
DV-12 Dyna-Bot."
Referring to the previously submitted cover of the book
titled "TRIAX AND THE NGR," applicant argued in response to
the refusal to register that "applicant has continued its
use of the mark 'TRIAX' to designate its products (in this
case, a book) which contain stories relating to the above
referenced fictitious arms manufacturer."
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Applicant submitted a copy of its Fall 1994 catalog of
books. On page six thereof is a listing for "Rifts
Sourcebook Three: Mindwerks," which is described as "a
companion to Triax and the NGR," which is also promoted in
the same catalog. In that listing, Triax is referred to as
"the high-tech industrial giant of the world," and "Triax"
armor, tanks, aircraft and robot combat vehicles are listed
as "highlights" of the book.
One copy of applicant's "Mindwerks Rifts Sourcebook
Three" was also made of record. Additionally submitted was
the declaration of applicant's president, Kevin Siembieda.
Mr. Siembieda states therein that when the original
specimens were submitted to the Patent and Trademark Office,
he intended to have his corporation produce a book using
"TRIAX" in its title, and that he intended the specimen
submitted to use "TRIAX" as a trademark to designate
applicant's stories about a fictitious arms manufacturer.
He refers to the subsequently produced book, "TRIAX and the
NGR," as well as the even more recent book, "Mindwerks,"
which he calls the second book in the "TRIAX" series.
Further, he states that "it is likely that Palladium Books
will produce additional works in the TRIAX series which will
contain the trademark TRIAX in their titles."
The Examining Attorney made the refusal to register
final, stating that the term sought to be registered does
not function as a trademark for the books, but rather is
used to refer to fictional subject matter in the books.
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Applicant appealed concurrently with filing a request
for reconsideration. Included with the request for
reconsideration was additional evidence. The Board
instituted the appeal, but suspended action on it and
remanded the application to the Examining Attorney for
reconsideration.
The additional evidence submitted with the request for
reconsideration was a copy of a January, 1993 letter from
one of applicant's customers, Joe Iglesias, of Annandale,
Virginia. In the letter, he explains that he is fifteen
years old, enjoys playing applicant's games, and had
recently received a free promotional video game controller
from a company called "Triax." The letter goes on to
provide a copy of the promotional material which accompanied
the device, and to direct applicant to "check it out
yourself," and to get back to Mr. Iglesias quickly.
Applicant's contention was that it was "clear from the
attached letter that the author (Joe Iglesias) confused a
video game component from TRIAX Controls, Inc. with the
goods offered by applicant under the trademark TRIAX."
Upon reconsideration, the Examining Attorney remained
of the opinion that the refusal was proper, and the file was
returned to the Board for action on the appeal. Both
applicant and the Examining Attorney filed briefs, but an
oral hearing was not requested.
The sole issue for resolution in this case is whether
or not registration of the term "TRIAX" is barred by
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Sections 1, 2 and 45 of the Act because the word does not
function as a trademark for applicant's books. A careful
evaluation of the record in this application leads us to
conclude that the specimens submitted in support of
registrability do not evidence use of "TRIAX" as a trademark
for books. Instead, the term sought to be registered is
used simply as the name of the fictional arms manufacturer.
Even the additional materials submitted by applicant showing
use of the term after the filing date of the application
show the same thing: "TRIAX" is the name used in the text
of applicant's books in reference to the fictitious weapons
company, but "TRIAX" is not used as a trademark to indicate
the source of applicant's books.
As the Examining Attorney correctly points out,
contrary to applicant's arguments, there is only one
specimen in this record, the soft-covered book titled "RIFTS
SOURCEBOOK." The issue is whether this publication, which
is the only evidence in the application record of
applicant's use of the term sought to be registered before
the application was filed, shows "TRIAX" used as a trademark
for applicant's books. All the rest of the exhibits
applicant subsequently submitted are not specimens of use,
in that they do not show use prior to the filing date and
are not supported by declarations to that effect. These
exhibits can be used to establish how purchasers and
potential purchasers of applicant's books might perceive the
term, but the question remains whether the specimens of
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record, the 1993 edition of the "RIFTS SOURCEBOOK," show use
of the term as a trademark for applicant's books.
Just as applicant stated in the original language used
in the application as filed, what the specimens show is that
"TRIAX" is used in reference to "characters and items in
books..." The specimens show the term used only in
connection with the fictional company, and not as a
trademark which identifies the source of the books
themselves.
Further, none of the additional exhibits subsequently
submitted could possibly be evidence showing how the use of
"TRIAX" on the specimens would have been understood when the
application was filed, because none of the exhibits was in
existence at that time. Moreover, even if that were not the
case, the exhibits do not support applicant's position.
Instead, they show just what the specimens show, namely that
applicant has used "TRIAX" only in reference to the
fictitious "TRIAX INDUSTRIES" and its fictitious products,
and not as a trademark for books.
The closest applicant can come to a plausible argument
is with the March 29, 1994 submission of the cover from the
book "TRIAX and the NGR." Applicant argues that the use of
the term in this title is analogous to the situation in In
re Scholastic Inc., 23 USPQ2d 1775 (TTAB 1992), where use of
a term in the titles of several books was held to
demonstrate use as a trademark for books. That case is not
analogous to the case now before us, however, because when
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this application was filed, "TRIAX" had not been used as
part of the title for a series of books; it had not yet been
used as part of the title of even a single book. To date
the record shows that the only book title to incorporate the
term has been the aforementioned "TRIAX and the NGR," which
was after the application's filing date. Applicant asserts
that "'TRIAX' is used as a trademark for a series of games
and stories by applicant" (brief, p.1), but the evidence
does not show that the term was used as part of the title of
any such book prior to the filing of the application.
Applicant's other main argument, that "the public
recognizes 'TRIAX' services (sic) as originating from
applicant," (brief, P.1), is likewise unsupported by the
evidence. Applicant contends that the letter from young Mr.
Iglesias shows that he confused the video game device with
applicant's books, but the question is not whether he
thought the controller was a book. A reasonable
interpretation of the letter evidence would be that it
indicates the writer's concern that the electronic device
manufacturer had appropriated the name of applicant's
fictional arms maker, but even if we adopt this analysis, it
does not show that he was confused as to the source of
either applicant's books or the video game controller, much
less that he considers "TRIAX" to be a trademark for
applicant's books.
In summary, neither the specimens nor the additional
exhibits submitted by applicant show the term sought to be
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registered used as a mark to identify the source of
applicant's books. The refusal to register under Sections
1, 2 and 45 of the Act is accordingly affirmed.
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial & Appeal Board
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