Sony Computer Entertainment Europe Limited

Trademark Trial and Appeal Board

Sep 30, 2009

No. 79045306 (T.T.A.B. Sep. 30, 2009)

Mailed: September 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Sony Computer Entertainment Europe Limited
________

Serial No. 79045306
Filed: July 24, 2007
_______

William R. Hansen, Lathrop & Gage LLC, for Sony Computer
Entertainment Europe Limited.

Myriah A. Habeeb, Trademark Examining Attorney, Law Office
105, Thomas G. Howell, Managing Attorney.
_______

Before Quinn, Taylor, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of GO! PUZZLE (in
standard characters) for “computer games software;
electronic games software,” in International Class 9.1
Registration has been finally refused pursuant to
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark GO! THE GAME
STORE (typed) registered for “retail store services
featuring board games, electronic games, games of chance,

1 Based upon a request for extension of protection under
Trademark Act § 66(a), 15 U.S.C. § 1141f(a), and International
Registration No. 0941216, issued July 24, 2007.

THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79045306
2
collectible cards, toys and game related merchandise,”2 as
to be likely, if used on the identified goods, to cause
confusion, to cause mistake, or to deceive.
The trademark examining attorney also made final the
requirement that applicant disclaim the term “PUZZLE” in
applicant’s mark pursuant to Trademark Act § 6(a), 15 U.S.C.
§ 1056(a), on the ground that the term is merely descriptive
of a feature of the identified goods and services.
Applicant appealed the refusal under Trademark Act
§ 2(d) and the disclaimer requirement.
We affirm on both grounds.
I. Evidentiary Matter
Attached to applicant’s opening brief were ten pages
of new evidence applicant argues should be considered on
appeal. The examining attorney objects to consideration of
this evidence.
The record in the application should be
complete prior to the filing of an appeal. The
Trademark Trial and Appeal Board will ordinarily
not consider additional evidence filed with the
Board by the appellant or by the examiner after
the appeal is filed. After an appeal is filed,
if the appellant or the examiner desires to
introduce additional evidence, the appellant or
the examiner may request the Board to suspend the
appeal and to remand the application for further
examination.

2 Registration No. 2791814, issued December 9, 2003, alleging
first use and use in commerce as of September 1, 2000.
Registrant disclaimed the exclusive right to use "THE GAME STORE"
apart from the mark as shown. Filings under Trademark Act §§ 8
and 15 accepted and acknowledged.
Serial No. 79045306
3

Trademark Rule 2.142(d).
When a timely request for reconsideration of
an appealed action is filed (with or without new
evidence), the examining attorney may submit,
with his or her response to the request, new
evidence directed to the issue(s) for which
reconsideration is sought. However, the
applicant may not submit additional evidence in
response to any evidence submitted by the
examining attorney unless the examining
attorney’s action is a nonfinal action to which a
response may be filed. Otherwise, if the
applicant wishes to submit additional evidence,
it must file a request for remand.

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 1207.04 (2d ed. rev. 2004).
Applicant argues that its new evidence should be
considered because it responds to evidence submitted for the
first time with the examining attorney’s denial of
applicant’s request for reconsideration. App. Br. n.2-3.
We agree with the examining attorney that this evidence
should not be considered. As the examining attorney
correctly notes, upon request for reconsideration, she may
clearly “introduce additional evidence directed to the
issues for which reconsideration is sought.” Ex. Att. Br.
at 4.
If applicant wanted to submit its own new evidence
after the examining attorney’s denial of reconsideration,
the proper procedure would have been to “request the Board
Serial No. 79045306
4
to suspend the appeal and to remand the application for
further examination.”3 Trademark Rule 2.142(d); TBMP
§ 1207.04. The Board does not examine applications; we
review the decisions of examining attorneys. With the
narrow exception of judicial notice, we do not consider
evidence which was not submitted during examination.
Although applicant complains in its reply brief that the
evidence introduced by the examining attorney with her
request for reconsideration “was significantly different
from any previous evidence,” citing TMEP § 715.03, we do not
find this to be the case. The examining attorney’s new
evidence was simply further support for a refusal which had
already been well-articulated and supported. But even if
this evidence was substantially different from that
previously of record, applicant’s remedy was a request for
remand, not a request that the Board examine applicant’s own
evidence in the first instance.4
II. Disclaimer – Descriptiveness
We consider first the question of whether the term
“PUZZLE” is descriptive, as the answer bears on both the

3 Applicant requests for the first time in its reply brief that
the application be remanded “in order to introduce the evidence”
attached to its opening brief. Applicant’s request is denied as
untimely; a request for remand should have been made prior to
briefing.
4 We hasten to add that consideration of applicant’s new evidence
would not change the result in this case.
Serial No. 79045306
5
disclaimer requirement and the examining attorney’s finding
of a likelihood of confusion.
A. Applicable Law
“The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a). Merely descriptive or generic terms
are unregistrable under Trademark Act § 2(e)(1), 15 U.S.C.
§ 1052(e)(1), and therefore are subject to disclaimer if
the mark is otherwise registrable. Failure to comply with
a disclaimer requirement is a ground for refusal of
registration. See In re Omaha Nat’l Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987); In re Box Solutions Corp.,
79 USPQ2d 1953, 1954 (TTAB 2006).
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the products for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). In other words, the issue is whether someone
Serial No. 79045306
6
who knows what the products are will understand the mark to
convey information about them. In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In
re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209
USPQ 165, 166 (TTAB 1980). Even where individual terms are
descriptive, combining them may evoke a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the goods,
without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., 64 USPQ2d at 1317-
1318.
B. Discussion
Serial No. 79045306
7
Applicant’s goods are identified as “computer games
software; electronic games software.” Applicant does not
deny that this description of its goods is broad enough to
encompass puzzles. Rather, applicant’s argument is summed
up as follows:
“PUZZLE” describes “a game or toy designed to
test skill or intelligence.”[5] The instant
application covers “computer games software” and
“electronic games software.” Here, “PUZZLE” does
not immediately communicate to prospective
customers the kind, nature or quality of goods in
which the mark will be used. Instead, the mark
GO! PUZZLE, when viewed by the consumer, suggests
in a remote manner what the goods offered under
the mark may be, a mere suggestion of what the
customer can expect. Thus, Applicant’s mark is
at most suggestive of the goods and thus, the
entire mark GO! PUZZLE is registrable without
“PUZZLE” being disclaimed.

Moreover, Applicant contends that consumers
encountering the mark would not necessarily know
that the mark relates to computer games software
and electronic games software. ... Applicant
submits, when applied to the goods in question,
the mark GO! PUZZLE[6] fails to describe
Applicant’s goods in a direct or immediate manner
but functions as an identifier of source of the
goods offered by Applicant.

App. Br. at 6.
Beginning with applicant’s latter contention, we find
that this argument reflects a misunderstanding of the

5 There is no disagreement as to the definition of the term
“PUZZLE.” Applicant uses here one of the definitions of the term
proffered by the examining attorney with her first Office Action;
we agree that this is an acceptable definition.
Serial No. 79045306
8
proper test for descriptiveness. The test is not whether a
prospective consumer would be able to guess at the nature
of the goods from the descriptive term alone, but whether
the term – with reference to the identified goods –
describes any feature, function, or characteristic of them.
In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
We have no doubt that prospective consumers, viewing the
term “PUZZLE” applied to applicant’s goods, would
immediately, and without further reflection, understand the
mark to be descriptive, i.e., that applicant’s computer and
electronic game software includes a “game ... designed to
test skill or intelligence.”7 The fact that applicant’s
goods are identified as “computer” and “electronic” game
software is of little significance in this context because
virtually any type of game – including many puzzles – can
be implemented in software.

6 To be clear, the issue here is not whether applicant’s entire
mark is descriptive, but whether the term PUZZLE is descriptive
and must be disclaimed.
7 In order to uphold the examining attorney’s requirement for a
disclaimer, we need not reach the question of whether PUZZLE is a
generic term for computer and electronic game software; it is
sufficient to find that the mark is merely descriptive.
Nonetheless, we recognize that “descriptiveness” is but one part
of a spectrum ranging from fanciful marks on one end to generic
terms on the other. E.g. Abercrombie & Fitch Company v. Hunting
World, Inc., 537 F.2d 4, 189 USPQ 759, 764 (2d Cir. 1976). In
this case, we find that the term PUZZLE as applied to the
identified goods is at least highly descriptive of such goods.
Serial No. 79045306
9
Applicant’s first argument fares no better. We
understand applicant to contend here that “PUZZLE” is not
descriptive because it does not describe all of the
features of applicant’s goods – or intended goods. But a
term need not describe all features of the goods in order
to be held descriptive – it is enough that it describe one
such feature. In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982). Again, applicant’s broadly-worded identification of
goods clearly encompasses electronic or computer-based
puzzle games. The fact that “PUZZLE” does not describe all
of the features of such games does not mean that the term
is not descriptive of at least one such feature. Likewise,
the fact that applicant’s identification of goods may
encompass computer and electronic games which are not
puzzles is of no significance. When goods are described
broadly, it is sufficient to find that a term is
descriptive of any of the encompassed goods.
Finally, we agree with the examining attorney that the
terms in applicant’s mark GO! PUZZLE do not form a unitary
mark such that a disclaimer of PUZZLE would be
inappropriate. The terms are not physically joined nor
does the combination of the terms create a single meaning
separate from the meaning of the terms individually. To
the extent that any meaning could be gleaned from the
Serial No. 79045306
10
phrase “go puzzle,” the exclamation mark after the word
“GO” separates the two terms of the mark both physically
and conceptually.
Although applicant argues that the examining attorney
has “dissected the mark” by considering its constituent
parts, App. Br. at 6, such an analysis is precisely what is
contemplated under Trademark Act § 6(a), which explicitly
permits a requirement for a disclaimer of a portion of an
applied-for mark. Without consideration of the separate
elements of a mark, a disclaimer would never be required.
While such a requirement is not appropriate if the
descriptive term is part of a unitary phrase which is not
descriptive as a whole, applicant has made no convincing
argument that this is the case.
The requirement for a disclaimer of PUZZLE is
accordingly AFFIRMED.8
III. Likelihood of Confusion
A. Applicable Law

8 When affirming a disclaimer requirement, our practice is to
allow applicant the opportunity to submit the required
disclaimer, in which case the refusal of registration would be
set aside. However, in light of our affirmance of the refusal to
register under Trademark Act § 2(d), compliance with the
disclaimer requirement would be futile. Nonetheless, in the
event applicant ultimately prevails on the § 2(d) issue,
applicant will be allowed an opportunity to submit the required
disclaimer.
Serial No. 79045306
11
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imp., 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 Rests. 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 mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
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 Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
B. Discussion
1. The similarity or dissimilarity of the marks
in their entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
Serial No. 79045306
12
USPQ2d at 1692. “[T]he 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 offered under
the respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008).
Applicant’s mark is GO! PUZZLE, while the mark in the
cited registration is GO! THE GAME STORE. Both marks are
depicted in typed or standard character form, and thus
could be displayed in any – or the same – color, type
style, or font. Phillips Petroleum Co. v. C.J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35 (CCPA 1971); Jockey Int’l Inc.
v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992).
As can be readily seen, both marks begin with the same
word: “GO!” As we have frequently held, “it is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.” Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988); see Palm Bay Imports Inc., 73 USPQ2d at
1692 (“The presence of this strong distinctive term as the
first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and
hence non-source identifying) significance of ROYALE.”).
Serial No. 79045306
13
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed,
in articulating reasons for reaching a conclusion
on the issue of confusion, 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.

In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
In this case, we agree with the examining attorney
that the term “GO!” is the dominant portion of both marks.
Both marks consist of the initial term “GO!” followed by
highly descriptive matter. As noted above, “PUZZLE” is at
least highly descriptive of applicant’s identified goods.
Likewise, the wording “THE GAME STORE” in the cited
registration is at least highly descriptive of the
registrant’s “retail store services,” and has been
disclaimed by the registrant. While we have considered
this descriptive or generic wording in both marks, we
conclude nonetheless that it has little source-identifying
significance.
Serial No. 79045306
14
While applicant emphasizes the fact that its mark as a
whole “has fewer words and a vastly different sound when
spoken,” Reply Br. at 4, a syllable counting exercise is
not the correct approach. The similarities of marks often
outweigh their differences, e.g. Esso Standard Oil Co. v.
Sun Oil Co., 108 USPQ 161 (D.C. Cir. 1956), and the
appropriate analysis is not a side-by-side comparison of
the marks. 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 (TTAB 1975).
Applicant argues that the term “GO!” in the cited
registration is not arbitrary. Reply Br. at 5 (“[W]hat is
invoked is a clear message that the viewer should proceed
immediately to the game store.”). We disagree. As with
applicant’s mark, the exclamation point in the cited
registration physically and conceptually separates the term
“GO” from “THE GAME STORE” and implies that “GO!” is the
name of the store, not that one should proceed to any
particular store.
While we acknowledge that the marks at issue contain
different descriptive or generic wording, and thus look and
sound somewhat different, we conclude that they are
nonetheless substantially similar in the impression they
Serial No. 79045306
15
would make upon the relevant consumers. This factor thus
supports a finding of a likelihood of confusion.
2. The similarity or dissimilarity and nature
of the goods or services

It is a general rule that goods or services
need not be identical or even competitive in
order to support a finding of likelihood of
confusion. Rather, it is enough that goods or
services are related in some manner or that some
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 or intended to be
used therewith, to a mistaken belief that they
originate from or are in some way associated with
the same producer or that there is an association
between the producers of each parties’ goods or
services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Applicant’s goods are identified as “computer games
software; electronic games software” while the cited
registrant’s services are identified as “retail store
services featuring board games, electronic games, games of
chance, collectible cards, toys and game related
merchandise.”
Applicant argues that the registrant “sells only board
games, not video games,” and has introduced extrinsic
evidence purporting to support its contention. See App.
Br. at 14. Applicant’s evidence on this point is
irrelevant.
Serial No. 79045306
16
The authority is legion that the question of
registrability of an applicant's mark must be
decided on the basis of the identification of
goods set forth in the application regardless of
what the record may reveal as to the particular
nature of an applicant's goods, the particular
channels of trade or the class of purchasers to
which sales of the goods are directed.

Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)(citations
omitted). We must thus look to the services recited in the
registration to determine what services the registrant
offers and in what channels of trade.9
Here, the registration clearly covers items other than
board games. Of particular relevance for our analysis, the
prior registration covers “retail services featuring ...
electronic games.” We may not ignore this part of the
cited registration based on applicant’s extrinsic evidence.
Further, it is patently obvious that the “electronic
games” which are the subject of the registrant’s retail
services are very closely related to the “electronic games
software” recited in the subject application. Software is
what makes an electronic game function, and is usually sold
with or in the same places as the games themselves. The

9 Applicant and the examining attorney argue about whether the
prior registrant’s retail store services are rendered in a
“brick-and-mortar” store or (possibly) online. While we note
that the services set out in the prior registration do not
exclude retail services rendered online, we need not definitively
Serial No. 79045306
17
examining attorney submitted a number of third-party
registrations reciting computer games and game software on
the one hand, and retail services featuring such goods on
the other. See Final Office Action, Attach. #2. Third-
party registrations which individually cover a number of
different items and which are based on use in commerce may
serve to suggest that the listed goods and services are of
a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988),
aff'd (unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
The fact that the prior registration recites retail
services, while the subject application identifies goods is
of relatively little significance. As the examining
attorney points out, it has often been held that goods are
related to services involving the sale of such goods. See,
e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (retail general merchandise
store services compared to furniture); In re H.J. Seiler
Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (catering
services compared to smoked and cured meats); In re U.S.
Shoe Corp., 229 USPQ 707 (TTAB 1985) (retail women’s

answer this question because our analysis would be the same
either way.
Serial No. 79045306
18
clothing store services compared to uniforms); In re United
Service Distributors, Inc., 229 USPQ 237 (TTAB 1986)
(distributorship services in the field of health and beauty
aids compared to skin cream). Here, customers encountering
applicant’s GO! PUZZLE mark are likely to conclude that
they share a common source with the prior registrant’s
retail services involving very closely related goods.
We conclude that applicant’s goods are closely related
to registrant’s services. This factor likewise supports a
finding of a likelihood of confusion.
C. Sophistication of Purchasers; Channels of
Trade

Applicant argues that its mark
is used in connection with a video game on the
PLAYSTATION SYSTEM, which game is incompatible
with other game platforms. Given the experience
of purchasers and the sophistication of the
“gaming” marketplace, consumers of video games
that are interested in the games available either
with Applicant’s proprietary gaming system or
those distinctive systems sold by its competitors
make informed and careful purchasing decisions.

App. Br. at 15.
Contrary to applicant’s contention, however, we note
that neither applicant’s identified goods nor registrant’s
recited services are limited to – or are exclusive of – any
particular game platform or format. We must thus construe
applicant’s identified goods and registrant’s services to
Serial No. 79045306
19
include goods and services with respect to all computer and
electronic games and software, regardless of any
proprietary platform. Again, we must consider the goods
and services as they are recited in the application and
cited registration, not as they might otherwise be alleged
to be. Accordingly, we must consider applicant’s
electronic games software to be compatible with the
electronic games sold by the cited registrant, and we must
consider applicant’s software to be sold in all normal
channels of trade for such goods, including the
registrant’s stores.
Moreover, applicant does not point to any evidence of
the purported sophistication of those who purchase computer
and electronic games and software. But even if this were
so, we have often remarked that “[b]eing knowledgeable
and/or sophisticated in a particular field does not
necessarily endow one with knowledge and sophistication in
connection with the use of trademarks.” In re Decombe, 9
USPQ2d 1812, 1814-1815 (TTAB 1988).
We conclude that the channels of trade for applicant’s
goods and the prior registrant’s services are identical or
overlapping. Moreover, applicant has not demonstrated that
the relevant purchasers are unusually sophisticated such
Serial No. 79045306
20
that confusion would not be likely. This factor also
supports a finding of a likelihood of confusion.
D. The number and nature of similar marks in
use on similar goods

Finally, applicant argues that its mark should be
registered in light of the “evidence of many marks
containing” the common element “GO.” In support of this
contention, applicant points to the results list of a TESS
search attached to its request for reconsideration.10 See
Req. for Recon. Exh. C. This list of 334 records is of
little or no relevance for several reasons. First, the
list shows only the mark, registration or application
number, and whether the record is “live” or “dead.”
Without consideration of the goods or services in the
listed registration, it is impossible to tell if the mark
actually resides in a “crowded field” as applicant
contends. Second, it is noted that many of the records are
listed as “dead,” or are applications and are thus evidence
of little or nothing. Third, the vast majority of marks on
the list include “GO,” rather than “GO!” As noted above,

10 Such a list is normally not sufficient to make the cited
applications or registrations of record for consideration. E.g.,
In re Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 n. 3 (TTAB
1995); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB
1994). However, we consider the list in this case because while
the examining attorney apparently objected to the earlier
submission of such a list by applicant, she did not object to its
Serial No. 79045306
21
we find the exclamation point significant to the perception
of the marks at issue here.
Applicant also (properly) submitted the records of six
registrations comprising the term “GO!”11 Nonetheless, none
of the six include “GO!” as an initial element as in the
marks at issue here. The closest is GO GO! ROLLERS (for
“toy vehicles and accessories therefor, toy vehicle
playsets and accessories therefor”). Aside from listing
goods far different than applicant’s computer and
electronic game software, the mark has a different
connotation than the marks at issue here (implying that the
registrant’s toy vehicles “go” and “roll”). The other
listed marks, GO PUPPY, GO!, GO, DIEGO, GO!, SHAKE ‘N GO!,
TEDDY, SET GO!, and TOYS TO GO!, are all readily
distinguishable because they use the term “GO!” at the end
of the mark as part of a unitary phrase.
Because the evidence submitted by applicant does not
demonstrate widespread registration of similar marks for
goods similar to those at issue here, we find this factor
to be neutral in our analysis.

submission of this list in her denial of the request for
reconsideration.
11 Four are for toys and/or games, one for retail services
featuring toys, and one is for “entertainment services in the
nature of an on-going television series....”
Serial No. 79045306
22
IV. Conclusion
Applicant and the examining attorney have submitted a
considerable amount of evidence and argument in this case.
We have considered the entire record in this matter,
including evidence and arguments not specifically discussed
in this decision.
After careful consideration of the record evidence and
argument, we conclude that in light of the substantially
similar marks and the closely related goods and services at
issue, use of applicant’s mark on or in connection with the
identified goods is likely to cause confusion with the mark
in the cited prior registration.
Decision: The requirement for a disclaimer of
“PUZZLE” is affirmed. The refusal to register under
Trademark Act § 2(d) is likewise affirmed.