Fourstar Group USA Inc.

Trademark Trial and Appeal Board

Aug 28, 2015

No. 86248063 (T.T.A.B. Aug. 28, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In Re Fourstar Group USA Inc.
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Serial No. 86248063
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Fourstar Group USA Inc., pro se.

Timothy Schimpf, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Mermelstein, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Fourstar Group USA Inc. (“Applicant”) seeks registration of the mark
FUNOVATIONS, in standard characters, for “Mechanical toys; Wind-up toys.”1 The
Examining Attorney refused registration under Section 2(d) of the Act on the
ground that Applicant’s mark so resembles the registered mark shown below

1 Application Serial No. 86248063, filed April 10, 2014 under Section 1(a) of the Act, based
on first use on July 12, 2013 and first use in commerce on March 7, 2014.
Serial No. 86248063
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for, inter alia, “Action skill games,”2 that use of Applicant’s mark in connection with
Applicant’s goods is likely to cause confusion or mistake or to deceive. After the
refusal became final, Applicant appealed and filed a motion for reconsideration
which was denied. The appeal is fully briefed. We affirm the refusal to register.3
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See 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.”).

2 Registration No. 3698713, issued October 20, 2009. The registration also covers
“Entertainment services in the nature of an amusement park attraction, namely, a themed
area,” and includes this description of the mark: “The mark consists of the letters ‘FUN’ in
blue, the letters ‘OVATION’ in red, a left swirl in red with a background of gray and white,
a right swirl in blue with a background of gray and white, and a shading of gray
underneath the word ‘FUNOVATION’. The colors blue, red, gray and white are claimed as
features of the mark.
3 The Examining Attorney’s objection to certain attachments to Applicant’s Appeal Brief is
sustained and the materials have been given no consideration. Any materials submitted
with the Appeal Brief which were not of record prior to the appeal are untimely, and any
materials submitted with the Appeal Brief which were of record prior to the appeal are
duplicative, unnecessary and inappropriate. Trademark Rule 2.142(d); see also, Life Zone
Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 n.4 (TTAB 2008).
Serial No. 86248063
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Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
However, different features may be analyzed to determine whether the marks
are similar. National Data, 224 USPQ at 751 (nothing improper in giving more or
less weight to a particular feature of a mark, provided the ultimate conclusion rests
on a consideration of the marks in their entireties). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d
1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB
2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Here, the marks are quite similar because Applicant’s mark is essentially
identical to the literal portion of Registrant’s mark. In fact, Applicant’s mark is
merely the plural version of the literal portion of Registrant’s mark, which in this
case is a distinction with little if any material difference. See Wilson v. DeLaunay,
245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that there is no
material difference, in a trademark sense, between the singular and plural forms of
the word ‘Zombie’ and they will therefore be regarded here as the same mark.”); In
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re Sarjanian, 136 USPQ 307, 308 (TTAB 1962). Indeed, FUNOVATION and
FUNOVATIONS look and sound almost identical and convey the same or highly
similar meanings.
Furthermore, where a mark is comprised of both words and a design, such as
Registrant’s mark, the words are normally accorded greater weight, because
consumers are likely to remember and use the word(s) to request the goods or
services. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises both a word and a design, then the
word is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with
registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”); see also, In re Viterra Inc., 671 F.2d
1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and
design mark likely will be the dominant portion”). Here, this principle is
particularly applicable because the design component of Registrant’s mark is
merely a “a left swirl in red with a background of gray and white,” and “a right swirl
in blue with a background of gray and white.” These nondistinctive swirls are
unremarkable, relatively small and serve merely to highlight the term FUN in
Registrant’s mark, thus further drawing attention to the word portion that
Registrant’s mark essentially shares with Applicant’s mark.
In short, because the literal portion of the cited mark is essentially identical to
Applicant’s mark, and the marks otherwise look and sound quite similar and convey
Serial No. 86248063
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highly similar or identical meanings, they create similar overall commercial
impressions when viewed in their entireties. This factor weighs in favor of a finding
of likelihood of confusion.
Turning to the goods and channels of trade, the cited mark is registered for, inter
alia, “Action skill games,” and Applicant seeks registration for mechanical and
wind-up toys. There is an obvious relationship between these goods, in that toys and
games are often used for entertainment, especially by children. Moreover,
Applicant’s toys involve some type of “action,” in that they are mechanical or wind-
up, as shown by Applicant’s specimens:

Serial No. 86248063
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Applicant’s toys could be used to play “games” invented by Applicant’s customers.
The issue here, of course, is not whether purchasers would confuse the goods, but
rather whether there is a likelihood of confusion as to the source of these goods.
L'Oreal S.A., 102 USPQ2d at 1439; In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The evidence of record establishes that the goods are related. The Examining
Attorney has introduced evidence that Applicant’s and Registrant’s goods are
offered by the same sources under the same marks. For example:
HASBRO & Design (Reg. No. 3875236), is registered for
“wind-up toys” on the one hand and “action skill games”
on the other.

BYDICO! (Stylized) (Reg. No. 3592302) is registered for
“mechanical action toys,” “mechanical toys” and “wind-up
toys” on the one hand and “action skill games” on the
other.

MIGHTY MORPHIN POWER RANGERS in standard
characters (Reg. No. 4091370) is registered for “action
skill games” on the one hand and “mechanical toys” and
“wind-up toys” on the other.

CHOOSE YOUR OWN ADVENTURE in standard
characters (Reg. No. 3410278) is registered for “action
skill games” on the one hand and “mechanical action
toys,” “mechanical toys” and “wind-up toys” on the other.

TINKER BELL in standard characters (Reg. No. 3636910)
is registered for “action skill games” on the one hand and
“mechanical toys” and “wind-up toys” on the other.

DEKKO TOYS in standard characters (Reg. No. 3568971)
is registered for “mechanical action toys,” “mechanical
toys” and “wind-up toys” on the one hand and “action skill
games” on the other.

PETER PIRATE in standard characters (Reg. No.
3496853) is registered for “plush toys with wind up
Serial No. 86248063
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mechanisms” and “mechanical toys” on the one hand and
“action skill games” on the other.

SMALL WORLD in standard characters (Reg. No.
3724296) is registered for “mechanical toys” and
“mechanical action toys” on the one hand and “action skill
games children’s party games” on the other.

BRAVO KIDS in standard characters (Reg. No. 3901903)
is registered for “mechanical and electrical children’s
multiple activity toys with or without electronic light or
sounds,” “wind-up toys and parts thereof” and
“mechanically, electrically, and battery-operated plastic
action toys” on the one hand and “games, namely, plastic
action skill games and manipulative games” on the other.

TUTTI CUTI in standard characters (Reg. No. 2998285) is
registered for “action skill games” on the one hand and
“mechanical action toys” on the other.

BOZ in standard characters (Reg. No. 3926939) is
registered for “action skill games” on the one hand and
“mechanical toys” on the other.

Office Actions of July 23 and August 20, 2014. “Third-party registrations which
cover a number of differing goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, may nevertheless have
some probative value to the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single source.” See, In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey
Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
Serial No. 86248063
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Similarly, the Examining Attorney has introduced Internet evidence of third-
party trademark use which further establishes a relationship between the goods,
including the following:
HASBRO offers BEYBLADE Tops and BEYWHEELZ
Battlers, which are described as follows: “Wind it, aim it
and launch it! … The stable launcher design increases
accuracy to help you spin your way to victory!” HASBRO
also offers the JENGA game, described in part as follows:
“Pull the block, stack it on top, and hope the tower doesn’t
crash down!” HASBRO offers the MOUSE TRAP game,
described as follows: “Can you build a better mousetrap?
Find out in the fun-filled game of crazy mechanical
gadgets and chain reactions!”

MATTEL offers the Bounce-Off game, the description of
which states: “Flip over a challenge card to determine the
pattern you must attempt, then race to recreate it by
bouncing balls into the grid.” MATTEL also offers the
BARBIE I CAN SPLASH AND SPIN DOLPHIN
TRAINER DOLL, the description of which states: “Clip
the dolphins to Barbie, wind them up and watch them
spin around her.” MATTEL offers the POLLY POCKET
Zipline Adventure Pool Playset, and provides this
description: “This action-packed jungle set features
multiple play areas connected with a zipline that Polly®
doll loves to ride!”

TOYSMITH offers a Wooden Catch Ball, with this
description: “Toss it up into the air and try to catch in the
cup at the end of the handle.” TOYSMITH also offers
Wooden Puzzle Fidget, Wind-Up Diver and Robot Claw
toys.

LEGO offers a Minotaurus Game, with this description
“Be the first to lead your heroes to the temple, avoiding
the Minotaur and cleverly placing walls to block your
opponents.” LEGO also offered the Mercedes-Benz
Unimog 400 toy truck, with this description: “this
mechanical monster is driven by LEGO® Power
Functions.” And LEGO offers the Wild Wind-Up, with this
description: “Build some wacky, working contraptions,
Serial No. 86248063
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including various machines that stir drinks, roll dice, eat
coins, and more! Includes wind-up motor!”

DISNEY offers the Beat the Parents Board Game as well
as the Sassy Finding Nemo Wind Up Toy and the
Disney/Pixar Cars Neon Racers Neon Vehicle 4-Pack.

SCHYLLING offers the Gone Fishing Game—Wind Up,
with this description: “Wind up the game and hurry to
catch as many fish as you can!”

ALEX BRANDS offers the Slinky Metal Slinky Jr.
walking spring toy, as well as the Booby Trap Classic
Wood Tabletop Game.

Office Actions of July 23 and August 20, 2014. In other words, the same sources
offer, under the same marks, mechanical or wind-up toys and action skill games.
Furthermore, several action skill games are played with or comprised in part of
mechanical or wind-up toys. This evidence establishes that there is at least a
relationship between Applicant’s and Registrant’s goods, and that those goods
travel in the same channels of trade.
Applicant’s argument that its goods are sold in “dollar stores” while Registrant’s
are sold to “amusement parks for the purpose to install and set-up laser mazes” is
not well-taken. As the Examining Attorney points out, we are bound to consider
Applicant’s and Registrant’s identifications of goods, neither of which is so limited.
Indeed, Applicant’s toys are identified without any limitation as to their channels of
trade, as are Registrant’s action skill games, which could include not only laser
mazes but also the types of games which the record reveals are sold under the same
marks as mechanical and wind-up toys and which make use of or include
mechanical or wind-up toys. It is settled that where, as here, Applicant’s and
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Registrant’s identifications contain no limitations with respect to the types of
mechanical or wind-up toys or action skill games offered, we must presume that
those identifications encompass all toys and games of the types identified, and the
toys and games are presumed to move in all normal channels of trade and be
available to all classes of consumers. Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An
application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony
that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”);
Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB
2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We cannot limit the goods,
channels of trade or classes of customers to what Applicant’s evidence shows them
to be. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is
well settled that in a proceeding such as this, the question of likelihood of confusion
must be determined by an analysis of the marks as applied to the goods identified in
the application vis-à-vis the goods recited in the registration, rather than what
extrinsic evidence shows those goods to be.”); see also, Tuxedo Monopoly, 209 USPQ
at 988; In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also
analyze the similarity or dissimilarity and nature of the goods based on the
description of the goods set forth in the application and the registration at issue …
we may not limit or restrict the [goods] listed in the cited registration based on
extrinsic evidence”).
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In short, the evidence establishes that the goods are related and the channels of
trade overlap. These factors also weigh in favor of a finding of likelihood of
confusion.
Applicant, apparently in an effort to establish that the cited mark is weak and
not entitled to a broad scope of protection, introduced a third-party registration for
the mark FUNNOVATION, in standard characters, for “Playground equipment,
namely, play structures comprised of at least one or more of the following: climbing
towers, monkey bars, platforms ….”4 We are not persuaded. Our primary reviewing
court has held that “[a]s to strength of a mark, however, registration evidence may
not be given any weight.” Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992). Furthermore, Applicant relies on only one
third-party registration, which in any event could not by itself be sufficient to
establish that Registrant’s mark is weak, let alone so weak that it is not entitled to
protection against Applicant’s highly similar mark for closely-related goods. Cf.
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., ___ F.3d ___, ___ USPQ2d ___, 2015 BL 266516 (Fed. Cir. Aug. 19,
2015) (finding that Board “too quickly” dismissed “extensive evidence of third-party
registrations” and third-party uses of similar marks) (emphasis supplied). In fact,
this registrant’s playground equipment appears to be less related to Registrant’s
goods than are Applicant’s—playground equipment is typically used outdoors, is
more often purchased by municipalities or other large entities rather than ordinary

4 Registration No. 4170950, issued July 10, 2012.
Serial No. 86248063
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consumers and may not be sold in the same channels of trade as typical consumer
toys and games. At the very least, there is no evidence of a relationship between
playground equipment and the goods identified in the cited registration, but there is
a great deal of evidence that Applicant’s goods are related to Registrant’s goods.
Finally, we are not persuaded by the single declaration from Applicant’s
Operations Manager, who testified that he is unaware of any “instances of actual
confusion” between Applicant’s and Registrant’s marks. Applicant’s mark has only
been in use in commerce since March 2014, which is a relatively short amount of
time, and there is no evidence regarding the nature and extent of any
contemporaneous use in the marketplace by Applicant and Registrant that would
show that there has been an opportunity for confusion to occur if it were likely to
occur. In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event,
the lack of evidence of actual confusion carries little weight, especially in an ex parte
context. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205
(Fed. Cir. 2003). We therefore find that this du Pont factor is neutral.5

5 To the extent Applicant argues that Registrant’s goods are expensive or otherwise not
likely to be purchased on impulse, we are not persuaded. Neither Applicant’s nor
Registrant’s identification of goods restricts them by cost or customers. Therefore, the
identified goods must be presumed to encompass inexpensive and expensive varieties of the
identified goods, and the goods are presumed to be offered to all types of customers for the
identified goods. See e.g., Stone Lion Capital, 110 USPQ2d at 1162-63 (“Stone Lion
effectively asks this court to disregard the broad scope of services recited in its application,
and to instead rely on the parties’ current investment practices … the Board properly
considered all potential investors for the recited services, including ordinary consumers
seeking to invest in services with no minimum investment requirement.”) (emphasis in
original).
Serial No. 86248063
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Conclusion
Applicant’s and Registrant’s marks are quite similar as their dominant, literal
element is virtually identical, and at the very least the goods as identified in the
application and cited registration are related and move in overlapping channels of
trade.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.