Tripp & Assocites, Inc.

Trademark Trial and Appeal Board

Apr 7, 2010

No. 77478223 (T.T.A.B. Apr. 7, 2010)

Mailed:
April 7, 2010
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tripp & Assocites, Inc.1
________

Serial No. 77478223
_______

Glenn M. Seager of Crompton, Seager & Tufte, LLC for Tripp
& Assocites, Inc.

Jay C. Besch, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Tripp & Assocites, Inc. (applicant) has applied to
register the mark TORCH in standard characters on the
Principal Register for goods now identified as “musical
instrument shaped interfaces for video and computer games”
in International Class 9. Applicant filed the application
on May 19, 2008 and based the application on its statement

1 Applicant spelled its name, including “Assocites,” as shown
here in the application and throughout the prosecution of this
application.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77478223
2
of a bona fide intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that applicant’s TORCH mark is likely to be
confused with the mark in Registration No. 932375, TORCH
ROCK in standard characters, registered on the Principal
Register for goods identified as “musical entertainment
recorded on cartridges, discs, cd-roms, cassettes, tapes
and mini discs; video and computer game software” in
International Class 9, with “ROCK” disclaimed. The
registration issued on March 18, 2008.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
Serial No. 77478223
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similarity of the marks and the similarity of the goods
identified in the application and the cited registration.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
The Goods
As to the goods, the goods of applicant and the
registrant need not be identical to find a likelihood of
confusion under Section 2(d). They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant purchasers mistakenly
believing that the goods originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels
of trade for those goods we must consider the goods as
identified in the application and registration. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
Serial No. 77478223
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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 the
sales of goods are directed.”).
The Examining Attorney argues that the goods
identified in the application and cited registration are
related, among other reasons, because the interfaces for
video and computer games identified in the application are
closely related to the video and computer game software
identified in the cited registration.
Applicant argues, “These marks deal with essentially
different categories. Musical entertainment and software
are fundamentally different from hardware such as musical
instrument shaped interfaces (e.g. game controllers).”
Applicant’s Brief at 3. Applicant also argues, based on
its review of certain websites, that the registered mark is
used exclusively with a particular musical album and that
there are “… no other products or services associated with
the mark.”
We reject out of hand applicant’s assertions that the
registrant uses the mark in the registration in a
particular manner, that is, as the title of an album, or on
fewer than all of the goods identified in the cited
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registration. The cited registration includes no
restrictions. We are precluded from considering extraneous
evidence offered to show that the goods identified in the
cited registration are restricted in some way not reflected
in the registration. In re Bercut-Vandervoort & Co., 229
USPQ 763 (TTAB 1986).
More generally, in comparing the respective goods
applicant discounts, or largely ignores, the presence and
importance of the “video and computer game software”
identified in the cited registration. In comparing the
respective goods, as identified in the application and the
cited registration, the focus of our attention is the
relationship between “interfaces for video and computer
games” (controllers) and “video and computer game
software.”
The Examining Attorney has provided copies of numerous
use-based, third-party registrations showing that the same
mark has been registered for both video and computer game
software and controllers. See, for example, Registration
Nos. 3401664, 3190100, 3292443, 3381826 and 3252556
attached to the Final Office Action of January 13, 2009.
These third-party registrations provide probative evidence
that the goods identified in the application and the cited
registration are the types of goods which may emanate from
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the same source. In re TSI Brands Inc., 67 USPQ2d 1657,
1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
The fact that applicant’s controller is in the shape
of a musical instrument in no way serves to distinguish the
goods. The goods identified in the cited registration
could include video and computer game software related to
music and/or musical instruments. Indeed, controllers and
computer and video game software are two of the essential
components of a game system.
Accordingly, we conclude that the goods identified in
the application and the cited registration are closely
related.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
The Examining Attorney argues that the marks are
similar because the TORCH and TORCH ROCK marks share the
dominant element, TORCH. As we noted, the Examining
Attorney also points out that “ROCK” is disclaimed in the
cited registration.
Serial No. 77478223
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Applicant does not argue directly that the marks
differ. Rather, applicant argues that TORCH ROCK is a weak
mark which is only entitled to a narrow scope of protection
and that TORCH ROCK can coexist with its TORCH mark without
confusion. Applicant asserts that TORCH ROCK is weak
because TORCH is part of the title for several musical
albums, because TORCH ROCK is a genre of music and because,
as applicant asserts, “‘TORCH’ was used to describe
software well prior to the application to register TORCH
ROCK or the date of first use in commerce.” Applicant’s
Brief at 5.
To support these arguments, among other evidence,
applicant submitted an entry from the WIKIPEDIA online
reference which states, “Torch Rock is a term that refers
to a heavier version of the traditional jazz or blues
structured style, such as a female fronted Stoner Rock
styled band.” See attachment to Response of December 10,
2008.
In this connection also, applicant again relies on
excerpts from a website applicant claims to be associated
with the registrant, to show that TORCH ROCK is merely used
as the title of an album.
To the extent applicant argues that TORCH ROCK is
generic or otherwise not distinctive, here too we reject
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the argument out of hand as an impermissible collateral
attack on the validity of the cited registration. In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1535
(Fed. Cir. 1997).
Furthermore, to the extent that applicant argues that
TORCH ROCK is weak because it is suggestive, we are not
persuaded. The use of TORCH in various song or album
titles is not particularly probative of the strength of the
registered mark, in particular, as used on the video and
computer game software identified in the cited
registration, the focus of our analysis here. In sum, we
find the evidence applicant offers to show that the cited
TORCH ROCK mark is weak insufficient in both quality and
quantity. We conclude that TORCH ROCK is a mark of
ordinary strength entitled to all protections accorded to
marks registered on the Principal Register consistent with
Trademark Act Section 7(b), 15 U.S.C. § 1051(b), including
the evidentiary presumption that TORCH ROCK is a valid
mark.
When we compare the marks, we find them highly similar
in appearance, sound, connotation and commercial
impression.
The similarity in appearance and sound is obvious.
The only difference between the marks in these respects is
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the presence of “ROCK” in the registered mark, a term which
has been disclaimed. Thus, TORCH is not only the first
term in both marks, but the only term in applicant’s mark
and the dominant term in the cited, registered mark. In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985) (“… 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.”).
As to the connotation and commercial impressions of
the marks, here too the marks are highly similar. Whether
we view torch as having a particular meaning in relation to
the identified goods derived from the music field or not,
we must conclude that both marks would convey the same
connotation and commercial impression.
Therefore, we conclude that the marks are highly
similar.
Fame
Applicant also argues that the registered mark is not
famous and implies that we should weigh this factor in its
favor. We have no basis on this record to determine
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whether or not the cited, registered mark is or is not
famous. Accordingly, we regard this factor as neutral for
purposes of our decision.
Conclusion
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any not
specifically discussed here, we conclude that there is a
likelihood of confusion between applicant’s TORCH mark when
used in connection with “musical instrument shaped
interfaces for video and computer games” and the cited
TORCH ROCK mark when used in connection with “musical
entertainment recorded on cartridges, discs, cd-roms,
cassettes, tapes and mini discs; video and computer game
software.”
Decision: We affirm the refusal under Trademark Act
Section 2(d).