Times Mirror Magazines, Inc.

Trademark Trial and Appeal Board

Oct 5, 2000

EX (T.T.A.B. Oct. 5, 2000)

10/5/00
Paper No. 9
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Times Mirror Magazines, Inc.
________
Serial No. 75/467,099
_______
Avis Frazier-Thomas for Times Mirror Magazines, Inc.
Hannah M. Fisher, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Hanak, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Times Mirror Magazines, Inc., a corporation of New
York, has filed an application to register the mark “THE
SPORTING NEWS FANTASY FOOTBALL CHALLENGE,” for goods
described as “role playing games, namely, providing sports
fans with a format wherein they are able to draft
individual professional players from the field of football
and compete with these selected individuals in fictitious
playoff and championship games,” in International Class 28.1

1 Serial No. 75/467,099 filed on April 13, 1998, based upon
applicant’s claim of use in interstate commerce since January 31,
1993. On January 28, 1999, applicant amended the application to
seek registration of this matter under Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f). At that point, the Trademark
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/467,099
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to role playing
games, so resembles the mark, “FANTASY FOOTBALL,” (with the
word “Football” disclaimed), registered for “entertainment
services -- namely, conducting a mock football game,” as to
be likely to cause confusion, to cause mistake, or to
deceive.2
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Trademark
Examining Attorney filed briefs. Applicant did not request
a hearing.
We reverse the refusal to register.
The Trademark Examining Attorney argues that “… the
endeavors of both parties are likely to appeal to the same
group of consumers, football fans.” In spite of overall
differences between the marks, the Trademark Examining
Attorney takes the position that applicant has “…
improperly attempted to appropriate registrant’s mark.”

Examining Attorney’s initial requirement for a disclaimer of the
words “sporting” and “fantasy football challenge” was withdrawn.
2 Registration No. 1,335,992, issued to Midwest Television, Inc.
on May 14, 1985, based on a claim of use in commerce since
September 21, 1982; §8 affidavit accepted and §15 affidavit
received.
Serial No. 75/467,099
3
By contrast, applicant argues that its mark, “THE
SPORTING NEWS FANTASY FOOTBALL CHALLENGE,” is substantially
different from the trademark “FANTASY FOOTBALL” as to
appearance and sound, and that its marks, which includes
its previously registered house mark, conveys a
significantly different commercial impression than does the
cited mark. Applicant argues that given the extreme
weakness of “FANTASY FOOTBALL,” the cumulative difference
in the goods and services combined with the obvious
differences in the marks, will negate any likelihood that
their contemporaneous use will result in consumer
confusion.
Our resolution of the issue of likelihood of confusion
under Section 2(d) of the Act is based upon an analysis of
all the probative facts and evidence that are relevant to
the factors identified as bearing on the issue of
likelihood of confusion. See In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA
1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Serial No. 75/467,099
4
We turn our attention first to the relationship
between the goods as identified in the instant application
and the services as recited in the registration. As
demonstrated by evidence placed in the record by the
Trademark Examining Attorney, in this Internet age,
“fantasy football” has become a popular and sophisticated
gaming past time for many -- exactly the type of role-
playing game described in some detail in applicant’s
identification of goods. The record demonstrates that
applicant is just one of many organizations offering
“fantasy football” through online sites.
On the other hand, registrant’s services, recited as
“entertainment services -- namely, conducting a mock
football game,” appear to us to be a bit vague, and so we
are not confident that we know exactly the nature of the
entertainment services recited in the registration.
Although registrant is a television station, we cannot
narrow the services in any manner based upon this fact
alone. Accordingly, in attempting to ascertain how closely
related are registrant’s services to applicant’s goods, we
can only speculate that “mock football” services and
“fantasy football” games do appear to be related in some
fashion. By the same token, they are not identical,
inasmuch as there appear to be differences between
Serial No. 75/467,099
5
registrant’s recited services and the role-playing games
offered by applicant.
We turn next to the similarities and dissimilarities
between the respective marks. Applicant concedes, as it
must, that its mark contains registrant’s mark in its
entirety. While the Trademark Examining Attorney argues
that is the end of the inquiry, we agree with applicant
that there exist exceptions to this general rule cited by
the Trademark Examining Attorney.
The evidence in the file demonstrates that the term
“fantasy football” is descriptive of applicant’s goods.
Applicant argues that this matter must also be deemed
descriptive of registrant’s services. However, in light of
the fact that the cited mark is the subject of an
incontestable registration, we conclude that as this
combined term is understood today, it must be deemed highly
suggestive of registrant’s entertainment services.
Accordingly, to the extent that the cited trademark is a
relatively weak mark entitled to a narrow scope of
protection, the addition of applicant’s house mark should
be sufficient to preclude likelihood of confusion. See
MarCon Ltd. v Avon Products Inc., 4 USPQ2d 1474, 1476 (TTAB
1987) [applicant’s addition of its house mark “AVON” to
suggestive term “SILKEN” is sufficient to distinguish its
Serial No. 75/467,099
6
“AVON SILKEN SOAP” from opposer’s “SILK” for hair and skin
care products].
Decision: The refusal to register under Section 2(d)
of the Act is reversed.
E. W. Hanak
D. E. Bucher
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board