Summit Entertainment, LLC

Trademark Trial and Appeal Board

Sep 15, 2016

No. 85813593 (T.T.A.B. Sep. 15, 2016)

This Opinion is not a
Precedent of the TTAB

Hearing: August 24, 2016 Mailed: September 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Summit Entertainment, LLC
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Serial Nos. 85813593 and 858135961
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Jill M. Pietrini of Sheppard Mullin Richter & Hampton LLP,
for Summit Entertainment, LLC.
Mark V. Sparacino, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Shaw, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Summit Entertainment, LLC (“Applicant”) seeks registration on the Principal
Register of the mark INSURGENT, in standard characters, for:
Computer games, namely, computer game cartridges,
cassettes, tapes, discs, programs and software;
downloadable widget program for use in authoring,
downloading, transmitting, receiving, editing, extracting,
encoding, decoding, playing, storing and organizing
electronic games; electronic games downloadable via the
Internet and mobile devices; video games, namely, video

1 Because the appeals involve the same issues and nearly identical records, we hereby
consolidate them and issue a single opinion for both appeals. Citations to the record are to
Serial No. 85813593, unless otherwise noted.
Serial Nos. 85813593 and 85813596
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game cartridges, discs and software, all relating to motion
pictures and entertainment concerning motion pictures, in
International Class 9; and
Providing online computer games, all relating to motion
pictures and entertainment concerning motion pictures, in
International Class 41.2
The 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 connection
with the identified goods and services, so resembles the mark INSURGENCY, also in
standard characters, for “Computer game software for personal computers and home
video game consoles,” in International Class 9, as to be likely to cause confusion.3
When the refusals were made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the requests for reconsideration,
and the appeals resumed. The cases are fully briefed. We affirm the refusals to
register.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence 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 Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the goods or services and the similarities between the marks. See Federated Foods,

2 Application Serial Nos. 85813593 and 85813596 were filed on January 1, 2013, based upon
Applicant’s allegation of a bona fide intention to use the marks in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. § 1(b).
3 Registration No. 4392625, issued August 27, 2013.
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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.”). The
relevant du Pont factors discussed in this case are the similarity of the goods and
services, the similarity of the marks, the number and nature of similar marks in use
in connection with similar goods and services, consumer sophistication, and the
absence of fame of Registrant’s mark.
A. The nature and similarity or dissimilarity of the goods and services, the
established, likely-to-continue trade channels, and the classes of purchasers.
We first consider the similarity of the goods and services. We base our evaluation
on the goods and services as they are identified in the applications and registration.
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). It is settled that it is not necessary that the respective goods
and services be identical or even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is, the issue is not whether
consumers would confuse the goods and services themselves, but rather whether they
would be confused as to the source of the goods and services. See In re Rexel Inc., 223
USPQ 830 (TTAB 1984). The respective goods and services need only be “related in
some manner and/or if the circumstances surrounding their marketing are such that
they could give rise to the mistaken belief that they emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). Moreover, if there is likelihood of confusion with respect to any of Applicant’s
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goods in International Class 9, the refusal of registration must be affirmed as to the
entire class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981).
Regarding Applicant’s goods in International Class 9, the goods are, in part,
legally identical to Registrant’s goods. That is, Applicant’s wording “Computer games,
namely, computer game cartridges, cassettes, tapes, discs, programs and software”
would include Registrant’s “Computer game software for personal computers and
home video game consoles.”
Applicant’s attempt to limit the scope of its goods by adding the language, “all
relating to motion pictures and entertainment concerning motion pictures,” does not
obviate a finding that the goods are similar. Registrant’s goods identify computer
games without any limitation as to the subject matter, thus Registrant’s computer
games could feature motion pictures in some form or manner. See Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[W]here the likelihood of
confusion is asserted with a registered mark, the issue must be resolved on the basis
of the goods named in the registration and, in the absence of specific limitations in
the registration, on the basis of all normal and usual channels of trade and methods
of distribution.”).
Because Applicant’s and Registrant’s computer game software are legally
identical and unrestricted, they are presumed to move in the same channels of trade
and to be sold to the same classes of consumers. See In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992) (Because there are no limitations as to channels of trade or
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classes of purchasers in either the application or the cited registration, it is presumed
that the goods in the registration and the application move in all channels of trade
normal for those goods, and that the goods are available to all classes of purchasers
for the listed goods).
Regarding Applicant’s services in International Class 41, we find these services
are related to Registrant’s computer game software as well. The Examining Attorney
has made of record ten third-party registrations showing use of the same mark on
computer game software as well as in connection with providing online computer
games.4 These registrations show that both Registrant’s goods and Applicant’s
services are of a kind that may emanate from a single source under a single mark.
“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 Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). The
fact that Applicant intends to provide both computer game software and online games
only reinforces the finding that Registrant’s goods and Applicant’s services are of a
type which may emanate from a single source.
Citing TMEP section 1207.01(a)(i), Applicant argues that “[t]he marketplace
reality clearly demonstrates that each party’s respective goods and services are not

4 Serial No. 85813596, Office Action of November 8, 2013, pp. 4-33.
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‘marketed in such a way that they would be encountered by the same persons in
situations that would create the incorrect assumption that they originate from the
same source.’”5 This argument is unpersuasive inasmuch as the cases cited in TMEP
section 1207.01(a)(i) dealt with significantly differing goods and services, or were
inter partes cases decided on more developed records. Further, Applicant has not
explained precisely how it will market its identified goods and services so as to avoid
their being encountered by the consumers of Registrant’s goods. Regardless, we must
focus on the goods as identified in the application and cited registration, not on any
extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).
As with Applicant’s goods in International Class 9, the language in Applicant’s
identification of services, “all relating to motion pictures and entertainment
concerning motion pictures,” does not impose any meaningful limitation on the
marketing of Applicant’s services. See In re i.am.symbolic, llc, 116 USPQ2d 1406,
1410 (TTAB 2015) (“The [limiting] language does not, in any meaningful way, alter
the nature of the goods identified; nor does it represent that the goods will be
marketed in any particular, limited way, through any particular, limited trade
channels, or to any particular class of customers.”). The limitation in Applicant’s
identification of services simply is not sufficient to establish that prospective
consumers would be able to distinguish the source of Applicant’s services from
Registrant’s goods.

5 Serial No. 85813596, Applicant’s Br., p. 19.
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For these reasons, we find that the second and third du Pont factors weigh in favor
of finding a likelihood of confusion as to the goods.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Next, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The emphasis of our analysis must be on the recollection of the average
purchaser who normally retains a general, rather than specific, impression of
trademarks. Although we consider the mark as a whole, “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.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark is the term INSURGENT in standard characters whereas
Registrant’s mark is the term INSURGENCY, also in standard characters. Both
marks are similar in appearance and sound in that they share the same root term,
“INSURGEN-”. The marks differ only on their endings, “T” versus “CY.” This minor
difference in endings does little to distinguish them in sound. Additionally, both
marks are similar in connotation and commercial impression inasmuch as Applicant’s
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mark is the very definition of Registrant’s mark: INSURGENCY is defined as “the
state or condition of being insurgent.”6
Accordingly, we find INSURGENT and INSURGENCY to be similar for purposes
of the du Pont factor relating to similarity in appearance, sound, connotation and
commercial impression. This factor favors a finding of likelihood of confusion.
C. The number and nature of similar marks in use in connection with similar
goods and services
Applicant argues that “[t]he Cited Mark is weak and therefore confusion with
Applicant’s mark is unlikely” because “the Office has a history of registering other
INSURGENT and INSURGENT-related marks.”7 In support of its argument that
Registrant’s mark is weak, Applicant made of record three registrations for marks
containing the term “insurgency” or “insurgente” for goods or services unrelated to
computer games.8
The strength or weakness of a mark is generally determined in the context of the
number and nature of similar marks in use in the marketplace in connection with
similar goods or services. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors,
Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); du Pont, 177
USPQ at 567. Evidence of weakness consisting of three third-party registrations for
unrelated goods or services is entitled to little weight in determining the strength of
Registrant’s mark, because such registrations do not establish that consumers of

6 Dictionary.com, Office Action of June 5, 2014, p. 2 (emphasis in original).
7 Applicant’s Br., pp. 9-10.
8 Id.
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computer games “have become so conditioned by a plethora of such similar marks”
that they are able to distinguish among various INSURGENT-formative marks based
on small differences. Palm Bay, 73 USPQ2d at 1694. This du Pont factor is neutral.
D. Customer sophistication
Applicant next argues that confusion is unlikely because:
Registrant’s customers are sophisticated video game
players who are looking for the specific type of game,
namely, a multiplayer tactical first person shooter game
with an army combat theme set in Iraq and Afghanistan
and in particular, the Iraqi Insurgency. Such customers are
quite unlikely to confuse Registrant’s video games with
Applicant’s games associated with the Divergent trilogy of
motion pictures and books, which focuses on the life of a
young girl and which are set in a fictional dystopian
Chicago.”9
It is settled that we must decide likelihood of confusion based on the goods and
services as they are identified in the registration and application. Octocom, 16
USPQ2d at 1787. As discussed supra, there are no meaningful distinctions between
the goods in the cited registration and Applicant’s identified goods and services. Thus,
we cannot assume, as Applicant suggests, that Registrant’s goods are limited to a
“first person shooter game” and Applicant’s goods will be limited to a Divergent-based
game. Moreover, given the fact that both computer games appear to be directed to a
teen-age audience, it is possible that at least some adults, unfamiliar with either
product and therefore less sophisticated, may attempt to purchase the games for
others. Finally, even if we agree, arguendo, that some higher degree of care is taken

9 Applicant’s Br., p. 24.
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in purchasing computer games, it is settled that even sophisticated purchasers are
not immune from source confusion, especially in cases such as this involving similar
marks and identical goods and services. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“Human memories even of discriminating
purchasers... are not infallible.”) (quoting Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). We find this factor
neutral.
E. Fame
With respect to the fame of the registered mark, Applicant argues that there is no
evidence in the record regarding fame and the registered mark is not famous.
However, the absence of evidence of fame is not particularly significant in the context
of an ex parte appeal and is normally treated as neutral when no evidence of fame
has been provided. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009);
In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). Therefore, we find this factor
neutral.
F. Conclusion
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, as they pertain to the relevant du Pont likelihood of
confusion factors. Applicant’s marks are highly similar to the cited mark. In addition,
the goods and services identified in the subject applications and cited registration are
in-part identical or otherwise related such that source confusion is likely to arise.
Therefore, we find that Applicant’s marks are likely to cause confusion with the mark
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in cited Registration No. 4392625 when used in association with the goods and
services identified in the applications.
Decision: The refusal to register Applicant’s marks under Section 2(d) of the
Trademark Act is affirmed.