EPIC TECH, LLC

Trademark Trial and Appeal Board

May 22, 2017

No. 86544208 (T.T.A.B. May. 22, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 22, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re EPIC TECH, LLC
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Serial No. 86544208

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Nichole Hayden of Nelson Mullins Riley & Scarborough LLP,
for EPIC TECH, LLC.

Anne M. Farrell, Trademark Examining Attorney, Law Office 118,
Michael Baird, Managing Attorney.
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Before Zervas, Adlin and Pologeorgis,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
EPIC TECH, LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark ORLEANS CROSSROADS for goods amended to “software,
namely, electronic game software for electronic slot and bingo machines, electronic
skill-based games, and electronic sweepstakes games, not to include keno games” in
International Class 9.1

1 Application Serial No. 86544208, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), asserting a bona fide intent to use the mark in commerce. On September 23,
2016, Applicant filed an Amendment to Allege Use asserting first use and first use in
Serial No. 86544208
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Registration No. 36556022
for the standard character mark CROSSROADS KENO for “interactive video game
programs for use with gaming machines” in International Class 9. The term KENO
has been disclaimed.
After the Examining Attorney issued a final Office Action, Applicant appealed the
refusal to register. Both Applicant and the Examining Attorney filed briefs, and
Applicant filed a reply brief. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & 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 and differences in the marks.” Federated Foods, Inc. v.

commerce on December 17, 2015, which the Examining Attorney accepted on October 15,
2015.
2 Registered July 14, 2009; Section 8 and 15 affidavits accepted and acknowledged,
respectively.
Serial No. 86544208
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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Similarity of goods, channels of trade and classes of consumers
We first compare the goods as they are identified in the application and cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application
and cited registration compared); Octocom Sys., Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Applicant’s and registrant’s goods are legally identical. “Software” is defined in
relevant part in the online version of Merriam Webster Dictionary3 as “the entire set
of programs, procedures, and related documentation associated with a system and
especially a computer system; specifically : computer programs.” “Game software”
and “game programs” are hence indistinguishable; the “interactive” features of
registrant’s goods are encompassed within Applicant’s identification of goods; and
“gaming machines” in registrant’s identification of goods encompasses Applicant’s
“electronic slot and bingo machines, electronic skill-based games and electronic
sweepstakes games.”4 Applicant’s argument directed to differences in the actual

3 Accessed at https://www.merriam-webster.com/dictionary/software. The Board may take
judicial notice of reference works (University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983)), including online reference works which exist in printed format or have regular fixed
editions (In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006)).
4 The Examining Attorney has also submitted third-party registrations identifying goods
listed in both the cited registration and involved application. These third-party registrations
support the refusal. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB
Serial No. 86544208
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goods on which Applicant’s and registrant’s marks are used is irrelevant; the Federal
Circuit has made it clear that the proper analysis is to compare the respective goods
as they are identified in the involved application and cited registration. See Stone
Lion, 110 USPQ2d at 1161. Similarly, Applicant’s argument that “Applicant and
Registrant provide different games (visually and operationally) using starkly
different equipment cabinets” is irrelevant;5 the goods involved herein are “software”
or “programs” and cabinets are not included in either Applicant’s or registrant’s
identification of goods.
Turning to the trade channels and purchasers, because the goods are legally
identical, and have no limitations pertaining to trade channels or classes of
purchasers, we presume that the channels of trade and classes of purchasers are also
the same. See Id.; In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); Am. Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion). The du Pont factors regarding the similarity or dissimilarity

1993) (third-party registrations which individually cover a number of different goods that are
based on use in commerce may have some probative value to the extent that they serve to
suggest that the listed goods are of a type which may emanate from the same source).
5 Applicant’s brief at 29, 4 TTABVUE 22.
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of the goods, as well as established, likely to continue trade channels and classes of
purchasers, therefore favor a finding of likelihood of confusion.
Similarity or Dissimilarity of the Marks/Strength of Registrant’s mark

We now compare the marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay Imports, 73 USPQ2d at
1692. The 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 that confusion as to the source of the
goods offered under the respective marks is likely to result. Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
Under actual marketing conditions, consumers do not necessarily have the luxury of
making side-by-side comparisons between marks, and must rely upon their imperfect
recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB
1980). The focus is on the recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks. In re Assoc. of the United
States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Although we must 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). Further, where the goods of an applicant and
registrant are legally identical, as they are here, the degree of similarity between the
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marks required to support a finding of likelihood of confusion is not as great as with
diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
Turning first to registrant’s mark, the Examining Attorney argues that
CROSSROADS is its dominant portion. We agree. KENO is a game of chance, and
registrant has properly disclaimed this term in its application. In fact, Applicant
concedes that KENO generic. See Applicant’s brief at p. 15 (“Registrant disclaimed
‘keno’ because it is generic of registrant’s goods.”).6 Consumers are less likely to
accord source identifying significance to a generic term. See In re Dixie Rests., 41
USPQ2d at 1533-34 (affirming Board’s finding that “DELTA,” not the disclaimed
generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE).
Applicant argues, however, that CROSSROADS in registrant’s mark is weak.7 In
support, Applicant relies on Mr. Davis’ declaration who explains that keno includes
a set of 80 numbers displayed in a grid format with rows and columns; and that in
registrant’s game, a player chooses a set of numbers from the grid, and then the
“game software will then randomly choose a ‘crossroad’ from the remaining
unselected numbers.”8 Applicant adds, “[h]ere, the term ‘crossroads’ describes a
function and feature of the game – the fact that bonuses can be won if you match a

6 4 TTABVUE 18-20.
7 Applicant goes so far to say that “The entire mark ‘CROSSROADS KENO’ is also merely
descriptive of Registrant’s goods and, therefore, should be given a very limited scope of
protection.” However, because this is an ex parte proceeding, Applicant is not permitted to
attack a cited registration as descriptive. See In re Dixie Restaurants, supra. We must accord
the cited registration the presumption of validity provided for in Trademark Act Section 7.
We construe Applicant’s arguments in this regard as amplifying its position that
CROSSROADS KENO is weak and therefore entitled only to a narrow scope of protection.
8 March 16, 2016 Office Action TSDR 11-17.
Serial No. 86544208
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number within the crossroads (i.e. intersection) of a row and a column. … Mr. Davis
indicated that he ‘would know from Registrant’s mark that it was a keno game and
likely had something to do with bonus eligibility based upon the
intersection/crossroads of a row and a column. Registrant’s mark itself indicates this
to me.’”9
Mr. Davis’ testimony has limited probative value on the questions of consumer
perception of the term CROSSROADS because he identifies himself as a game design
engineer and not a consumer of the identified goods. What may be evident to him
regarding the term CROSSROADS is not necessarily evident to the average consumer
of the involved goods, i.e., a member of the general adult population. In any event, we
find that the term CROSSROADS is slightly suggestive of a feature of registrant’s
goods. By no means do we find CROSSROADS so weak as to be unentitled to
protection against Applicant’s mark, and point out that there is no evidence of third-
party use or registration of this term. See Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (evidence of third parties’
registration and use of similar marks bears on the strength or weakness of a
registrant’s mark).
As for its own mark, Applicant argues that, “[w]hile Applicant asserts that both
words … ORLEANS CROSSROADS, are dominant and strong, if either element of
Applicant’s mark were considered stronger than the other, it would be ‘orleans.’ It is
often the case that the first word in a mark is a more dominant feature of the mark.”

9 4 TTABVUE 9.
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Applicant, however, also ascribes a highly suggestive, and perhaps descriptive,
connotation to the term ORLEANS in its mark, stating in its main brief that
ORLEANS CROSSROADS uses “icons and images associated with the intersection of
the music, food, art, entertainment, and culture that is New Orleans.”10 In its reply
brief, Applicant adds, “[t]he connotation and commercial impression conveyed by
Applicant’s Mark is a double entendre, referring on one hand to a physical crossroads
in New Orleans, where two roads intersect, and on the other hand, to the intersection
of the culinary, entertainment, art, and musical culture of New Orleans. … Use of the
word ‘Orleans’ in the mark would create the geographic association, in addition to a
consumer’s viewing of Applicant’s Mark in connection with its goods (a game which
features New Orleans-based imagery).”11 If this is true, then ORLEANS is the weaker
component of the mark, being the more readily recognizable as a feature of the goods.
More importantly, however, we find that due to the shared term CROSSROADS,
and the legal identity of the goods, consumers would, upon encountering Applicant’s
mark ORLEANS CROSSROADS, believe that it is another of registrant’s interactive
video games, featuring a different game of chance, in a CROSSROADS series
(CROSSROADS is the only non-generic term in registrant’s mark, and, as discussed
above, is its dominant term.)12 If ORLEANS in Applicant’s mark is a reference to New
Orleans, and conjures up “the culinary, entertainment, art, and musical culture of

10 Applicant’s brief at 10, 4 TTABVUE 11.
11 Reply at 4, 7 TTABVUE 5.
12 This certainly would be the case if ORLEANS has the connotation Applicant ascribes to it,
evoking New Orleans and its “festive food, art, entertainment, or culture.”
Serial No. 86544208
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New Orleans,” consumers would perceive Applicant’s mark as identifying another
game in a line of CROSSROADS games with a New Orleans theme.13
In view of the shared term CROSSROADS, and the apparent suggestiveness of
the term ORLEANS (as conceded by Applicant), we find the marks to be similar in
meaning, appearance, sound and commercial impression.
Balancing the factors
Applicant’s mark and the cited mark are similar, the goods are legally identical,
and the trade channels and classes of consumers are presumed to be identical. Thus,
upon consideration of all of the arguments offered by the Examining Attorney and
Applicant, and all the evidence in the record, including evidence and arguments not
specifically mentioned in this decision, we find that there is a likelihood of confusion
between Applicant’s and registrant’s marks for their respective goods.
Decision: The refusal to register Applicant’s is affirmed.

13 We note too Applicant’s argument regarding a lack of a zone of expansion of registrant’s
goods into games other than keno games, because the term “keno” is in registrant’s mark.
This argument has no merit because when analyzing an applicant’s and a registrant’s goods
and/or services for similarity and relatedness, that determination is based on the description
of the goods and/or services stated in the application and registration at issue. See Octocom
Sys., 16 USPQ2d at 1787.