87700635 (T.T.A.B. Sep. 24, 2019)

Fortunet, Inc.

Trademark Trial and Appeal BoardSep 24, 2019

87700635 (T.T.A.B. Sep. 24, 2019)

Mailed: September 24, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Fortunet, Inc. _____ Application Serial No. 87700635 _____ Rob L. Phillips of FisherBroyles, LLP for Fortunet, Inc. Kelley L. Wells, Trademark Examining Attorney, Law Office 118, Michael Baird, Managing Attorney. _____ Before Taylor, Bergsman and Coggins, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Fortunet, Inc. (Applicant) seeks registration on the Principal Register of the mark WHEEL OF MEGA FORTUNE (in standard character form) for “video gaming machines and slot gaming machines,” in Class 9.1 The Examining Attorney refused to register Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark WHEEL OF FORTUNE (in typed drawing form) for 1 Application Serial No. 87700635, filed November 29, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce. This Opinion Is Not a Precedent of the TTAB Application Serial No. 87700635 - 2 - “slot machines,” in Class 9,2 and (in standard character form) for “reconfigurable casino and lottery gaming equipment, namely, gaming machines and operational computer game software therefor sold as a unit; gaming machines, namely, devices which accept a wager,” in Class 28,3 as to be likely to cause confusion. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that is relevant or for which there is evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 2 Registration No. 2228652; second renewal. Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R § 2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A typed mark is the legal equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’ marks.”). 3 Registration No. 4759756 registered June 23, 2015. Application Serial No. 87700635 - 3 - 1197, 177 USPQ 386, 387 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). I. Similarity or dissimilarity and nature of the goods. Applicant is seeking to register its mark for “video gaming machines and slot gaming machines.” The mark in the cited registrations is registered for, inter alia, slot machines and “gaming machines, namely, devices which accept a wager.” “[W]here the goods in an application or registration are broadly described, they are deemed to encompass ‘all the goods of the nature and type described therein . . . .’” In re Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (quoting In re Jump Designs LLC, 80 USPQ2d 1370, 1774 (TTAB 2006)). Registrant’s slot machines are legally identical to Applicant’s slot gaming machines. Likewise, Applicant’s broadly described video gaming machines is broad enough to include Registrant’s gaming machines that accept a wager. See In re Hughes Furniture Indus., Inc., 114 USPQ2d Application Serial No. 87700635 - 4 - 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Thus, we find that the descriptions of goods are in part identical. Under this DuPont factor, the Examining Attorney need not prove, and we need not find, similarity as to each product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.”). Applicant, in its brief, did not argue that the goods were not related. II. The similarity or dissimilarity of established, likely-to-continue channels of trade and classes of consumers. Because the goods described in the application and the cited registrations are in part identical, we presume that the channels of trade and classes of purchasers are the same. See Viterra., 101 USPQ2d at 1908 (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); 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 Application Serial No. 87700635 - 5 - the same); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the services described in the application and the cited registration are identical, we presume that the channels of trade and classes of purchasers are the same.”); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Applicant, in its brief, did not argue that the goods were not offered in the same channels of trade or to the same classes of consumers. III. The similarity or dissimilarity of the marks. We now turn to the DuPont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567. In comparing the marks, we are mindful that where, as here, the goods are in part identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, Application Serial No. 87700635 - 6 - 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721); see also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). Applicant’s mark is WHEEL OF MEGA FORTUNE and the mark in the cited registrations is WHEEL OF FORTUNE. The marks are similar in appearance and sound because they share the term “Wheel of Fortune” which means the same and engenders the commercial impression in both marks of “a wheel-like gambling device that is rotated or spun to determine the winner of certain prizes.”4 The only difference is that Applicant includes the word “Mega” which is defined as “vast” and “of the highest level of rank, excellence, or importance.”5 When “Mega” is combined with another term (e.g., in this case “Mega Fortune”), it is defined as “great: large” or “greatly surpassing others of its kind.”6 Therefore, Applicant, through its mark, is claiming that its gaming and slot machines provide a bigger prize or payoff which 4 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed September 23, 2019. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 5 Merriam-Webster.com accessed September 23, 2019. 6 Id. Application Serial No. 87700635 - 7 - may be perceived as a bigger and better line of Registrant’s gaming and slot machines.7 Applicant argues that the focus of users will be on the word “Mega,” thereby mitigating any likelihood of confusion. However, we consider the marks in their entireties and, as Applicant points out, “by incorporating the MEGA term directly before the FORTUNE term the focus of the mark moves to the size of the award rather than the Wheel of Fortune wheel or game.”8 Thus, the commercial impressions differ only by the size of purported prize. Finally, Applicant contends that because Registrant’s mark is based on the popular WHEEL OF FORTUNE television gameshow, that Registrant’s slot and gaming machines feature the wheel from the show, and that Applicant will not use that trade dress, the likelihood of confusion is further mitigated.9 However, the marks are compared as they appear in the drawing of the application and in the registrations, not how an applicant and registrant actually use their marks in the marketplace. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 123 USPQ2d at 1749). Further, while trade dress may be used to find that the marks engender a similar commercial impression, it cannot weigh against finding a likelihood of confusion because trade dress may be changed at any time. See Kimberly Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 7 Applicant agrees that “the word MEGA immediately denotes a very large sum of money.” Applicant’s Brief, pp. 4-5 (4 TTABVUE 5-6). 8 Applicant’s Brief, p. 5 (4 TTABVUE 6). 9 Applicant’s Brief, pp. 5-6 (4 TTABVUE 6-7). Application Serial No. 87700635 - 8 - 1147, 227 USPQ 541, 543 (Fed. Cir. 1985). As set forth by the Court of Appeals for the Federal Circuit: Ordinarily, for a word mark we do not look to the trade dress, which can be changed at any time. Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342 (CCPA 1968). But the trade dress may nevertheless provide evidence of whether the word mark projects a confusingly similar commercial impression. Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992). See also Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). We find that the marks are similar in their entireties in terms of their appearance, sound, connotation, and commercial impression. IV. Conclusion Because the marks are similar, the goods are in part identical, and there is a presumption that the goods are offered in the same channels of trade to the same classes of consumers, we find that Applicant’s mark WHEEL OF MEGA FORTUNE for “video gaming machines and slot gaming machines” is similar to the registered mark WHEEL OF FORTUNE for, inter alia, “slot machines” and “gaming machines, namely, devices which accept a wager.” Decision: The refusal to register Applicant’s mark WHEEL OF MEGA FORTUNE is affirmed.