UniversalInteractive, Inc.

Trademark Trial and Appeal Board

Feb 15, 2006

No. 78377319 (T.T.A.B. Feb. 15, 2006)

Mailed:
15 February 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Universal Interactive, Inc.
________

Serial No. 78377319
_______

Christopher S. Tuttle of Alleman Hall McCoy Russell &
Tuttle LLP for Universal Interactive, Inc.

Patty Evanko, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Hairston, Drost, and Zervas, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

Applicant Universal Interactive, Inc. applied to
register the mark SPYRO, in standard character form, on the
Principal Register, for goods ultimately identified as
follows:
Computer game software; pre-recorded motion pictures
featuring animated characters; pre-recorded audio
cassettes, video cassettes, DVD's, CD's and CD-ROM’s
featuring musical scores and dialog; entertainment
software in the nature of a game capable of being
played on a television gaming system or portable
gaming system; electronic publications, namely
downloadable newsletters, magazines and catalogues;
photographic cameras; radios; sunglasses; decorative
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 78377319
2
magnets; video games cartridges, video game cassettes
in Class 9.

The application (Serial No. 78377319), was filed on March
2, 2004 and it is based on applicant’s allegation of dates
of first use anywhere and in commerce of March 11, 1999.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of Registration No. 1,394,710
for the identical mark SPYRO, in standard character or
typed form, for “computer software, namely, programs
recorded on magnetic media, and user manuals sold
therewith” in Class 9. The registration issued May 27,
1986, and affidavits under Section 8 and 15 have been
accepted or acknowledged. The examining attorney has also
required that applicant amend its identification of goods
and specify the subject matter of its “electronic
publications, namely downloadable newsletters, magazines
and catalogues.”
We address the issue of likelihood of confusion by
looking at the evidence in light of the factors set out in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We point out that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
Ser. No. 78377319
3
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).
We first compare the marks and we find that they are
obviously identical. Both applicant’s and registrant’s
marks are for the same word, SPYRO, in typed or standard
character form. This is a significant factor in our
likelihood of confusion analysis. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven
when goods or services are not competitive or intrinsically
related, the use of identical marks can lead to an
assumption that there is a common source”).
The next factor we consider is the relationship
between applicant’s and registrant’s goods. Registrant’s
goods are broadly identified as computer software, namely,
programs recorded on magnetic media, and user manuals sold
therewith. Registrant’s goods are not limited to any
particular type of computer software. Applicant’s goods
include computer game software and entertainment software
in the nature of a game capable of being played on a
television gaming system or portable gaming system, video
games cartridges, and video game cassettes.
When we consider the relatedness of the goods, our
analysis is premised on a comparison of the goods as they
Ser. No. 78377319
4
are set out in the application’s and registrant’s
identification of goods. Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). See also In re Dixie Restaurants,
105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(punctuation in original), quoting, Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1816 (Fed. Cir. 1987) (“‘Likelihood of confusion must
be determined based on an analysis of the mark applied to
the … services recited in applicant’s application vis-à-vis
the … services recited in [a] … registration, rather than
what the evidence shows the … services to be’”).
Furthermore, the board has previously addressed the
specific issue of the likelihood of confusion between
broadly defined computer goods in a registration and the
same goods that are limited by subject matter in an
application.
Registrant's goods are broadly identified as computer
programs recorded on magnetic disks, without any
limitation as to the kind of programs or the field of
use. Therefore, we must assume that registrant's
goods encompass all such computer programs including
those which are for data integration and transfer. We
must also assume that they would travel in the same
channels of trade normal for those goods and to all
classes of prospective purchasers for those goods. In
Ser. No. 78377319
5
re Elbaum, 211 USPQ 639 (TTAB 1981). So viewed, we
agree with the Examining Attorney that registrant's
goods encompass applicant's computer programs.

In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). See
also In re N.A.D. Inc.. 57 USPQ2d 1872, 1874 (TTAB 2000)
(“Registrant's goods are broadly identified as computer
programs recorded on tapes or disks, without any limitation
as to the kind of programs or the field of use.
Accordingly, we must assume that registrant's goods
encompass all such computer programs including those which
may be intended for the medical field”). These cases are,
of course, consistent with the general principle that we do
not read limitations into the identification of goods.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
limitations into the registration”).
Consistent with these cases, we must assume that
registrant’s computer software includes computer game
software. Thus, we find that applicant’s goods are in part
identical because they both include computer game software.
In addition, inasmuch as applicant’s goods include
entertainment software in the nature of a game capable of
Ser. No. 78377319
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being played on a television gaming system or portable
gaming system, video games cartridges, and video game
cassettes, they would be closely related to registrant’s
computer software.
In its response to the first Office action (p.9),
applicant argued that:
In its own words, registrant “provides all or part of
the services for basic detail engineering,
procurement, construction and project management, at
optimized costs. The Group has a long track record in
implementing large turnkey contracts and arranging
related international financing on behalf of its
clients. In particular, in the offshore segment,
Technip is in a position to fulfill the expectations
of operators, wanting to entrust the largest possible
range of services to a single contractor able to
manage all aspects of a major field development.”

In its appeal brief (p.2), applicant argues that
registrant’s software is “used in the field of producing
ethylene (construction and expansion of steam crackers) in
the engineering and petrochemical industries.” Applicant’s
computer game software would be different from the software
applicant attributes to the registrant. However, as noted
above, we do not read limitations into the identification
of goods.1 Quite simply, an applicant cannot produce the

1 We note at this point that applicant refers to an Exhibit A in
its appeal brief that is apparently a brochure of registrant. We
agree with the examining attorney that, if this is the first time
the brochure was introduced into the record, it is untimely. 37
CFR § 2.142(d). USPTO electronic and paper records for this
appeal do not indicate that the brochure was attached to
applicant’s brief. However, applicant’s own description of the
Ser. No. 78377319
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registrant’s literature and thereby limit the scope of its
identification of goods.2
Furthermore, because of the identical or otherwise
highly related nature of the goods, we must assume that the
channels of trade and purchasers are the same. Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).

record and the case law indicates that it would not be relevant
because we must rely on the registration’s identification of
goods and not the registrant’s promotional literature.
2 Simultaneously with its appeal brief, applicant submitted a
request for remand to amend its identification of goods. The
request was denied because applicant did not show good cause for
the remand. Order dated September 22, 2005. The examining
attorney was advised in the Order at 2 that the appeal would
proceed on the basis of the current identification of goods
“[u]nless the Examining Attorney wishes to accept the proposed
amendment.” Inasmuch as applicant’s request for remand was
denied and the examining attorney has not accepted the proposed
amendment, we do not address the late-filed amendment to the
identification of goods.
Ser. No. 78377319
8
We now address other issues and arguments that are
relevant to this case. Applicant argues that (Brief 2):
Because [registrant’s] goods description is grossly
overbroad and violates TMEP § 1402.03(d), the
likelihood of confusion analysis should more heavily
take into account registrant’s actual use of its mark,
which is very different from Applicant’s use.

As the examining attorney indicated (Brief at
unnumbered pages 5-6), the cited registration issued in
1986 prior to the Linkvest case. Therefore, the fact that
examining attorneys today would require a more specific
identification of goods does not effect the identification
of goods that was approved twenty years ago. We also add
that applicant is not permitted to attack the validity of a
registration cited against it or to require the board to
read limitations into the registration’s identification of
goods.
Dixie's argument that DELTA is not actually used in
connection with restaurant services amounts to a
thinly-veiled collateral attack on the validity of the
registration. It is true that a prima facie
presumption of validity may be rebutted. See Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d
1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However,
the present ex parte proceeding is not the proper
forum for such a challenge. Id. ("One seeking
cancellation must rebut [the prima facie] presumption
by a preponderance of the evidence."); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165
USPQ 515, 517 (CCPA 1970); TMEP Section 1207.01(c)(v)
(1993); 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition Section 23.24[1][c] (3d ed.
1996). In fact, Cosmetically Yours held that “it is
not open to an applicant to prove abandonment of [a]
Ser. No. 78377319
9
registered mark" in an ex parte registration
proceeding; thus, the "appellant's argument … that
[a registrant] no longer uses the registered mark …
must be disregarded." 424 F.2d at 1387, 165 USPQ at
517; cf. In re Calgon Corp., 435 F.2d 596, 598, 168
USPQ 278, 280 (CCPA 1971) (applicant's argument that
its use antedated a registered mark was effectively an
improper collateral attack on the validity of the
registration, which should have been made in formal
cancellation proceedings).

Dixie claims that it is not arguing that the DELTA
mark has been abandoned, only that it has not been
used for restaurant services, so there is no
likelihood of confusion. However, unless it
establishes abandonment, the registration is valid,
and we must give effect to its identification of
services. Cosmetically Yours, 424 F.2d at 1387, 165
USPQ at 517 ("As long as the registration relied upon
… remains uncanceled, it is treated as valid and
entitled to the statutory presumptions.").

Dixie Restaurants, 41 USPQ2d at 1534-35. See also Squirtco
v. Tomy Corp., 216 USPQ at 940. Therefore, we will not
limit the registration’s identification of goods.
At this point, it is important to emphasize that an
applicant faced with a cited registration with a broad
identification of goods:
[I]s not without remedies in its attempt to obtain a
registration. Applicant may, of course, seek a
consent from the owner of the cited registrations, or
applicant may seek a restriction under Section 18 of
the Trademark Act, 15 U.S.C. § 1068. This remedy is
available for those who believe that a restriction in
the cited registration(s) may serve to avoid a
likelihood of confusion. See Eurostar Inc. v. “Euro-
Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB
1994). Compare Electronic Data Systems Corp. v. EDSA
Micro Corp., 23 USPQ2d 1460 (TTAB 1992)(no likelihood
of confusion between specifically identified computer
services and programs in different fields—computer
Ser. No. 78377319
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data processing programming/information management
services and computer programs for electrical
distribution system analysis and design).

N.A.D., 57 USPQ2d at 1874.

Section 18 (15 U.S.C. § 1068) specifically permits the
Office in opposition and cancellation proceedings to
“modify the application or registration by limiting the
goods or services specified therein.”
Another argument applicant makes is that “it appears
that both marks have been used in the marketplace for years
without conflict… This conflict-free period of coexistence
weighs further in favor of no likelihood of confusion.”
Brief at 3. However, the lack of actual confusion is
seldom decisive in ex parte proceedings.
With regard to the seventh DuPont factor, we agree
with the Board that Majestic's uncorroborated
statements of no known instances of actual confusion
are of little evidentiary value. See In re Bissett-
Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
appellant's corporate president's unawareness of
instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 CCPA 981, 340 F.2d
960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.

In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003). In this ex parte case, we
Ser. No. 78377319
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have no indication of what the registrant’s views and
evidence on this issue would be, and we similarly give
applicant’s assertion of no actual confusion little weight.
Furthermore, we do not give the applicant the benefit
of the doubt in likelihood of confusion cases, as applicant
asserts. Indeed, case law dictates that we resolve doubt
in favor of the registrant. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
On the issue of likelihood of confusion, we conclude
that when the identical marks are used on goods that
overlap and are otherwise highly related, there is a
likelihood of confusion and we affirm the examining
attorney’s refusal to register.
Regarding the examining attorney’s requirement that
applicant specify the subject matter of applicant’s
electronic publications, namely downloadable newsletters,
magazines and catalogues, we likewise affirm this
requirement. Applicant has not addressed this requirement
in its brief. Even in its request for remand to consider
an amendment to the identification of goods, applicant did
not propose to amend the “electronic publications” portion
Ser. No. 78377319
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of its identification of goods. By failing to assert any
error regarding this requirement, we consider that
applicant has conceded this point. TBMP § 1203.02(g) (2d
ed. rev. 2004). Even if applicant has not conceded this
point, we note that the Office requires the subject matter
of publications be set out in the identification of goods.
TMEP § 1402.03(b) (4th ed. April 2005):
When the goods are publications, the identification
must indicate both the specific physical nature and the
literary subject matter of the publication.
Example - "Magazine devoted to medicine" is acceptable.
Example - "Television programming newsletter" is
acceptable.
In the case of printed matter of a specialized nature,
the identification should describe the goods by
specific names or wording that explains their
specialized nature.
Example - "Children's storybooks" is acceptable.
Even if the mark itself indicates the subject of a
publication, the identification must specify the
subject matter.
Without this information, the exact point that
applicant complains about concerning the registrant’s
computer software would occur with publications, i.e.,
publications would appear to be identical to the extent that
they were identified simply as “magazines” regardless of
their subject matter. Inasmuch as applicant’s current
identification of goods would include a wide variety of
Ser. No. 78377319
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publications on numerous subjects that applicant is not
publishing, the current identification of goods is
indefinite.3 In re Air Products & Chemicals, Inc., 192 USPQ
84, 85 (TTAB 1976), recon. denied, 192 USPQ 157 (TTAB 1976)
("It is common knowledge that ‘catalysts’ encompass a wide
range of products and that there are catalysts which are
used for a large variety of catalytic and chemical
processes. Thus, the present identification could
conceivably include a large number of catalysts which
applicant does not manufacture. Under such circumstances,
to allow applicant to register its mark for so broad an
identification of goods would give it a scope of protection
to which it is not entitled").
Decision: The examining attorney’s refusals to
register are affirmed.

3 The examining attorney had suggested the following
identification of goods: “electronic publications, namely,
downloadable newsletters, magazines and catalogues featuring
animated cartoon characters and information about computer and
video games.”