Funktronic Labs

Trademark Trial and Appeal Board

Jan 23, 2018

No. 87012024 (T.T.A.B. Jan. 23, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Funktronic Labs
_____

Serial No. 87012024
_____

Alfred H. Chan of A.H. Chan Law Firm, P.C.,
for Funktronic Labs.
Leigh Caroline Case, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_____

Before Mermelstein, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Funktronic Labs (“Applicant”) seeks registration on the Principal Register of the
mark FUNKTRONIC LABS and design for “design and development of computer
software, computer game software, virtual reality software, and interactive media
computer software,” in Class 42.1 The drawing of Applicant’s mark is reproduced
below:

1 Application Serial No. 87012024 was filed on April 24, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as July 18, 2013.
Serial No. 87012024
- 2 -

The application includes the description of the mark set forth below:
The mark consists of two robotic characters with the
stylized words “FUNKTRONIC LABS” written underneath
the robots. The robot on the left has a wizard hat with stars
on it; two cylindrical eyes; a grille mouth; and is wearing a
collared shirt. The robot on the right has an afro hair with
a game controller sticking out of his head; sunglasses with
stars engraved in the lenses; two pieces of interlocking
metal which represents his mouth and one of the metals
has three knobs on it; circular discs with antennas in the
center which represents his two ears; is wearing a collared
shirt; and is holding a test-tube with three fingers. The
stylized word “FUNKTRONIC” is written underneath the
robots. The stylized word “LABS” is written in smaller
print inside a rectangular box placed underneath the
letters “NIC” of the word “FUNKTRONIC”.
Color is not claimed as a feature of the mark.
The Trademark Examining Attorney refused registration of 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 FUNKITRON (typed drawing) for
“electronic game programs,” in Class 9,2 as to be likely to cause confusion. The

2 Registration No. 2874824, issued August 17, 2004, renewed.
Serial No. 87012024
- 3 -
Trademark Examining Attorney also issued a final requirement for Applicant to
disclaim the exclusive right to use the term “Labs.”
After the Trademark Examining Attorney made the refusal and requirement
final, Applicant appealed to this Board. We affirm the refusal to register and the
requirement to disclaim the exclusive right to use the word “Labs.”
I. Evidentiary Issue
In its February 9, 2017 response to an Office Action, Applicant submitted a table
of third-party registrations which included the mark, the registration number, the
class of goods or services, and the description of goods or services for each listed
registration. Applicant did not submit copies of the registrations.
In her March 2, 2017 Office Action, the Trademark Examining Attorney explained
to Applicant that the table of third-party registrations is not sufficient to make the
registrations part of the record and that to make the registrations of record, Applicant
must submit copies of the registrations or their electronic equivalent from the
USPTO’s automated systems, prior to appeal. See In re Jump Designs LLC, 80
USPQ2d 1370, 1372-73 (TTAB 2006); In re Prom Ink, 78 USPQ2d 1301, 1304 (TTAB
2006); In re Ruffin Gaming, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); TBMP § 1208.02
(June 2017); TMEP § 710.03 (October 2017). In this Office Action, the Trademark
Examining Attorney made her refusal to register and requirement for a disclaimer
final.
Applicant attached to its brief copies of the third-party registrations printed from
the USPTO electronic database that were listed in the table. In her brief, the
Serial No. 87012024
- 4 -
Trademark Examining Attorney objected to the copies of the third-party registrations
on the ground that they were not timely filed.3 See Trademark Rule 2.142(d), 37
C.F.R. § 2.122(d) (the record in an application should be complete prior to the filing
of an appeal).
The Trademark Examining Attorney is correct that Applicant’s submission of the
copies of the third-party registrations is late. Applicant should have submitted the
copies of the third-party registrations in a request for reconsideration filed before or
with its Notice of Appeal. See Trademark Rule 2.63(b), 37 C.F.R. § 2.63(b); In re
Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (new evidence may be
submitted with a request for reconsideration). Accordingly, the Trademark
Examining Attorney’s objection is sustained and the late-filed evidence is given no
consideration.
II. Likelihood of 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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) (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 du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947

3 6 TTABVUE 3.
Serial No. 87012024
- 5 -
(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.”). 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.2d 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., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity of the marks.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. du Pont, 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). In comparing the marks, we are
mindful that “[t]he 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
Serial No. 87012024
- 6 -
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)); see also 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).
With respect to Applicant’s mark, there is no question that the design comprising
the two highly-stylized robots is a significant feature of the mark. Notwithstanding
the design feature, the literal portion of Applicant’s mark, FUNKTRONIC LABS is
the dominant part of the mark and, in turn, the literal portion of the mark is
dominated by the term FUNKTRONIC. Moreover, in the case of marks consisting of
words and a design, the words are normally accorded greater weight because the
words are likely to make an impression upon purchasers, would be remembered by
them, and would be used by them to request the services. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow,
708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); Sweats Fashions Inc. v. Pannill
Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Given
the easily pronounced and distinctive name FUNKTRONIC LABS, it is unlikely that
consumers will refer to Applicant’s services as anything other than FUNKTRONIC
LABS or simply FUNKTRONIC. There is nothing improper in stating that, for
Serial No. 87012024
- 7 -
rational reasons, more or less weight has been given to a particular feature of a mark,
such as a common dominant element, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The word “Funktronic” is clearly the most distinctive feature of the literal portion
of Applicant’s mark and it is the portion most likely to be remembered by consumers
and used when referring to Applicant’s services. Visually, the term FUNKTRONIC is
displayed in heavy, block letters unified by extensions of the upper arms of the letters
F and T, the entire word having an upward tilt. FUNKTRONIC is physically larger
than the term LABS, written in smaller letters below it. Further, as discussed more
fully below, the term “Labs” is descriptive of Applicant’s services. “[T]he ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’ ” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 224 USPQ at 752).
Because consumers have a habit of shortening trademarks, they are likely to refer
to Applicant’s FUNKTRONIC LABS as simply FUNKTRONIC, especially where, as
here, the portion that would likely be dropped is descriptive of the involved services
and is featured in a much smaller display.
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.

Serial No. 87012024
- 8 -
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant’s business
is commonly referred to as “Giant,” it does indicate that people have called it by that
name, omitting the word “Hamburgers.” Thus, in a conversation between two
consumers in opposer’s area about a place of business called “Giant,” there likely
would be confusion about which “Giant” they were talking about.”).
Applicant’s FUNKTRONIC LABS and design mark and Registrant’s mark
FUNKITRON are similar in appearance and sound because they both start with the
term “Funk” followed by the term “Tron.” The essential difference in the appearance
and sound is the inclusion of the letter “I” between the terms “Funk” and “Tron” in
Registrant’s mark and the addition of the letters “IC” in Applicant’s mark. These are
minor differences and do not distinguish Applicant’s mark FUNTRONIC LABS and
design from Registrant’s mark FUNKITRON. See In re Great Lakes Canning, Inc.,
227 USPQ 483 (TTAB 1985) (CAYNA is similar to CANA); U.S. Olympic Comm. v.
Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984)
(OLYMP is similar to OLYMPIC); In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983) (MILTRON is similar to MILTRONICS); Sun Elec. Corp. v. Sun Oil Co.
of Pa., 196 USPQ 450 (TTAB 1977) (SUNELECT is similar to SUN ELECTRIC); In
re BASF AG, 189 USPQ 424 (TTAB 1976) (LUTEX is similar to LUTEXAL).
Serial No. 87012024
- 9 -
With respect to the connotation and commercial impression engendered by the
marks, the term “Funk” is defined, inter alia, as a “music having a funky quality.”4
The term “Tron” is defined as a “vacuum tube – magnetron” or as “device for the
manipulation of subatomic particles – cyclotron.”5 The Urban Dictionary defines
the term “Funktronic” as a “genre that blends live funk and electronic music.”6
FUNKTRONIC LABS and design, when used in connection with “design and
development of computer software, computer game software, virtual reality software,
and interactive media computer software” and FUNKITRON, when used in
connection with “electronic game programs” engender the commercial impression of
unconventional, offbeat, or “outside the box” devices.
Comparing the marks in their entireties, Applicant’s mark FUNKTRONIC LABS
and design is similar to Registrant’s mark FUNKITRON because of the close
similarity of the words FUNKTRONIC, the dominant part of Applicant’s mark, and
the registered mark, FUNKITRON. While Applicant’s mark includes a design

4 Dictionary.com based on the Random House Dictionary (2018). “Funky” is defined, inter
alia, as “having an earthy, blues-based quality or character.” Id. See also, Merriam-
Webster Online Dictionary (merriam-webster.com) defining “Funk” as “music that
combines elements of rhythm and blues and soul music and that is characterized by a
percussive vocal style, static harmonies, and strong bass line with heavy downbeats” and
“Funky” is defined as “having an earthy unsophisticated style and feeling; especially: having
the style and feeling of older black American music (such as blues or gospel) or of funk – a
funky beat” or “unconventionally stylish: HIP.”
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).
5 Merriam-Webster Online Dictionary (merriam-webster.com).
6 February 9, 2017 Response to Office Action (TSDR 17). Citations to the TSDR database are
to the downloadable .pdf format of the application file.
Serial No. 87012024
- 10 -
element and the word LABS, the design element consists of two “funky” characters
that highlight the significance of the term FUNKTRONIC, and the word LABS is
descriptive of Applicant’s services, and therefore entitled to “little weight” in our
analysis. We have not ignored the differences in the marks, but find that the
differences between the marks are outweighed by the similarities in appearance,
sound and commercial impression. When the marks are considered in their entireties
in terms of appearance, sound, connotation and commercial impression, they are
similar.
B. The similarity or dissimilarity and nature of the goods and services.
Applicant is seeking to register its mark for “design and development of computer
software, computer game software, virtual reality software, and interactive media
computer software” and the description of goods for the mark in the cited registration
is “electronic game programs.”
To show that the goods and services are related, the Trademark Examining
Attorney submitted copies of ten third-party, use-based registrations identifying
goods and services similar to those in the application and cited registration. Third-
party registrations based on use in commerce that individually cover a number of
different goods or services may have probative value to the extent that they serve to
suggest that the listed goods or services are of a type that may emanate from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d
Serial No. 87012024
- 11 -
mem. 864 F.2d 149 (Fed. Cir. 1988). The third-party registrations, with relevant
portions of the description of goods or services, are listed in the table below:7
MARK REG. NO. GOODS/SERVICES
CIRCLULAR3D 4315836 Electronic game software;

Designing and developing computer
game software and video game software
for use with computers, video game
program systems and computer networks

CURIOUS HAT 4455743 Electronic game software;

Design and development of computer
game software, video games software,
online game software and related game
related software applications

21st STREET GAMES Electronic game software; downloadable
electronic game programs;

Computer game development services for
others; computer software development
for others

FRIGHT CLUB 4540313 Computer game programs; downloadable
interactive electronic game programs;

Design and development of interactive,
computer, video and electronic game
software
HIGH BAR 4611182 Computer game programs; downloadable
interactive electronic game programs;

Design and development of interactive,
computer, video and electronic game
software

7 March 2, 2017 Office Action (TSDR 11-40).
Serial No. 87012024
- 12 -
MARK REG. NO. GOODS/SERVICES
ROYALCACTUS 4656280 Computer game programs;

Computer services, namely, design and
development of computer game software,
video games software, online game
software and related game related
software applications

YIYI 4720136 Computer game software;

Design and development of computer
game software and virtual reality
software

HARDSUIT LABS 4902790 Computer game programs;

Design and development of computer
game software and virtual reality
software

PIGEON HOLE
PRODUCTIONS
4862538 Electronic game programs;

Design and development of computer
game software and virtual reality
software

MAGIC SPELL STUDIOS 4985450 Computer and electronic game software;

Design, development, updating and
maintenance of computer software,
computer and video game software, and
virtual reality, modeling and simulation
software applications

In addition, the Trademark Examining Attorney submitted excerpts from the five
third-party websites listed below showing the website owners using the same mark
Serial No. 87012024
- 13 -
to identify their computer games and the design and development of computer game
software:8
• The Buildbox Showcase (buildbox.com);
• FilamentGames (filamentlearning.com);
• Ragtag Studio (ragtagstudio.com);
• Scopely (scopely.com); and
• HBS Harebrained Schemes (harebrainedschemes.com).
Applicant argues, to the contrary, that Applicant’s “design and development of
computer software, computer game software, virtual reality software, and interactive
media computer software” is distinctly different than Registrant’s computer games.
Registrant only offers casual mobile games found in a
consumer’s phone. Logically, Registrant’s games can only
be found via phone app store such as Apple App Store or
Google Play Store.
In contrast, Applicant’s games are more advanced and
complex. They often involved [sic] first-person adventure or
strategy games, and required [sic] a computer, game
console, or virtual reality (“VR”) equipment to play.
Applicant’s games are not being offered in phone app store
such as Apple App Store or Google Play Store. Instead,
Applicant’s games can be found through online game
portals such as Steam, Oculus Store, Playstation Store,
Xbox Store, or Nintendo eShop.9
However, we must consider the goods and services as they are described in the
application and registration. See Stone Lion Capital Partners v. Lion Capital LLP,
746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v.

8 March 2, 2017 Office Action (TSDR 41-55).
9 Applicant’s Brief 4 TTABVUE 8).
Serial No. 87012024
- 14 -
Houston Comput. Servs. 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 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.”). See also Paula Payne Prods. v. Johnson Publ’g 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”).
We may not read limitations into the identification of goods and services in an
application or registration. 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.”). Because there are no limitations or restrictions in the descriptions of
goods and services at issue, we must construe the cited registration to cover all
“electronic game programs” and construe Applicant’s “design and development”
services to be directed to all “computer game software,” including programs of any
level of gaming complexity. Simply put, for purposes of our analysis, Applicant’s
services include the design and development of the same type of games identified in
the cited registration. Although the goods and services are not identical — Applicant
seeks registration of its mark in connection with software development, while the
Serial No. 87012024
- 15 -
cited mark is registered for the product of such development — they are clearly
related, and the Examining Attorney’s third-party registrations and website evidence
suggests that such goods and services are of a type which may emanate from a single
source.
In view of the foregoing, we find that Applicant’s “design and development of
computer software, computer game software, virtual reality software, and interactive
media computer software” is related to Registrant’s “electronic game programs.”
C. Established, likely-to-continue channels of trade.
In an ex parte proceeding, we are required to give “full sweep” to Registrant’s
identified goods and Applicant’s services. Absent such restrictions or limitations, it is
presumed that Registrant’s goods (“electronic game programs”) and Applicant’s
services (“design and development of computer software, computer game software,
virtual reality software, and interactive media computer software”) move in all
channels of trade normal for those goods and services, and that they are available to
all classes of purchasers for those goods and services. See Citigroup Inc. v. Capital
City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Paula
Payne Prods. Co. v. Johnson Publ’g Co., 177 USPQ at 77; Kalart Co. v. Camera-Mart,
Inc., 258 F.2d 956, 119 USPQ 139, 140 (CCPA 1958); In re Integrated Embedded,
120 USPQ2d 1504, 1515 (TTAB 2016); In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). Thus, we must determine the channels of trade and classes of
consumers for “electronic games” and the “design and development of computer game
software.”
Serial No. 87012024
- 16 -
As noted above, Applicant argues that the channels of trade are different because
Registrant’s electronic computer games are offered to casual gamers through “app”
stores while Applicant’s services are directed to sophisticated gamers through online
game portals, not app stores. First, this contention is unavailing, as there are no
limitations or restrictions in Registrant’s description of goods or Applicant’s
identification of services indicating differences in the complexity of the games or
channels of trade.
Second, Applicant’s argument explains that Registrant’s computer games and
Applicant’s design and development of computer game software are both offered to
“gamers” albeit of different levels of sophistication.10 Applicant’s contention is
corroborated by the excerpt from the BUILDBOX website (buildbox.com) stating that
the company builds game creation technology that does not require programming or
scripting, as well as making games themselves.11 Thus, at least one of the third-party
gaming companies creates software that permits “gamers” to build their own games.
Based on the record before us comprising Applicant’s explanation that its services
are rendered to “gamers” which is supported by one third-party website, we find that
Applicant’s services and Registrant’s “electronic game programs” are offered in the
same channels of trade.

10 This raises the issue, not currently before us, as to whether Applicant is rendering its
“design and development of computer software, computer game software, virtual reality
software, and interactive media computer software” for others or is Applicant merely
designing and developing software for its own games. See the excerpt from Applicant’s
website (funktroniclabs.com) stating that “We’re all about making games and creating
magical experiences.” March 2, 2017 Office Action (TSDR 59).
11 March 2, 2017 Office Action (TSDR 43).
Serial No. 87012024
- 17 -
D. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.
As noted above, Applicant contends that Registrant offers “casual mobile games
found in a consumer’s phone,” while Applicant offers “first-person adventure of
strategy games” marketed to “sophisticated ‘gamers’ who devote many hours to
playing games” and who, therefore, “will exercise a higher degree of ordinary care
when making purchasing decisions.”12 However, the question of likelihood of
confusion must be determined by an analysis of the marks as applied to the services
identified in the application vis-a-vis the goods recited in the registration, rather than
what extrinsic evidence or, in this case argument, shows those goods to be.
Accordingly, in the present case, evidence or argument relating to the fact that
Applicant’s services are directed to “sophisticated gamers” must be disregarded since
there is no restriction in the application or registration limiting the services to
particular channels of trade or classes of customers. See In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive
wines sold to discriminating purchasers must be disregarded given the absence of any
such restrictions in the application or registration). Moreover, there is nothing that
would prevent Applicant’s customers from also using “casual mobile games found in
a consumer’s phone.”
In view of the foregoing, we find that the degree of consumer purchasing care is a
neutral du Pont factor.

12 Applicant’s Brief (4 TTAVUE 8).
Serial No. 87012024
- 18 -
E. Analyzing the factors.
Because the marks are similar and the goods and services are related and are
offered in the same channels of trade, we find that Applicant’s mark FUNKTRONIC
LABS and design for “design and development of computer software, computer game
software, virtual reality software, and interactive media computer software” is likely
to cause confusion with the registered mark FUNKTRON for “electronic computer
games.”
III. Whether the term “Labs” should be disclaimed?
The Trademark Examining Attorney has refused registration pursuant to Section
6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s failure to comply
with an Office requirement to disclaim the term “Labs” on the ground that it is merely
descriptive of a computer laboratory where Applicant renders its services, within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
A requirement under Trademark Act Section 6 for a disclaimer of unregistrable
matter in a mark is appropriate when that matter is merely descriptive of the goods
or services at issue. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089
(Fed. Cir. 2005). Merely descriptive or generic terms are unregistrable under Section
2(e)(1) of the Trademark Act, and therefore are subject to a disclaimer requirement
if the mark is otherwise registrable. Failure to comply with a disclaimer requirement
is a ground for refusal of registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d
1332, 116 USPQ2d 1262, 1266 (Fed. Cir. 2015); In re RiseSmart Inc., 104 USPQ2d
1931, 1933 (TTAB 2012).
Serial No. 87012024
- 19 -
A term is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of an ingredient, quality, characteristic, function,
feature, purpose, or use of the goods or services with which it is used. See, e.g., In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether
a particular term is merely descriptive must be determined not in the abstract, but
in relation to the goods or services for which registration is sought, the context in
which the mark is used, and the possible significance that the mark is likely to have
to the average purchaser encountering the goods or services in the marketplace. See
In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1818, 1831 (Fed. Cir. 2007);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1473
(TTAB 2014); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,
the issue is whether someone who knows what the goods or services are will
understand the mark to convey information about them. In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1512 (TTAB 2016).
The term “Lab” is an abbreviation for the word “Laboratory” which is defined, inter
alia, as “any place, situation, set of conditions, or the like, conducive to
experimentation, investigation, observation, etc.; anything suggestive of a scientific
laboratory.”13
The Trademark Examining Attorney submitted copies of five third-party
registrations consisting in part of the term “Labs” used in connection with computer

13 Dictionary.com based on the Random House Dictionary (2018).
Serial No. 87012024
- 20 -
software development or the design and development of computer games and virtual
reality software where the exclusive right to use the term “Labs” was disclaimed. The
third-party registrations may be used in the manner of a dictionary to show that a
mark or portion of a mark is descriptive of goods and services. Institut National Des
Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992) (“Such third party registrations show the sense in which the word is
used in ordinary parlance and may show that a particular term has descriptive
significance as applied to certain goods or services.”); Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978) (“we find
no error in the citation of nine third-party registrations ‘primarily to show the
meaning of * * * [‘zing’] in the same way that dictionaries are used.’”).
Also, the Trademark Examining Attorney submitted an excerpt from Applicant’s
blog (blog.funtroniclabs.com) where Applicant referred to itself as a “Lab.”
COSMIC TRIP – BUILD 43
FRESH FROM THE LABS
We’ve reworked research and upgrades – there should be
lots of different approaches to the research path you take
now.
The bots now all have an upgraded version which costs
more and is generally more effective at everything. They’re
slightly larger and sparkly for now, and cost a little more.
Build the research building to unlock the disks for
purchase.14

14 March 2, 2017 Office Action (TSDR 58).
Serial No. 87012024
- 21 -
Applicant’s website “About Us” section (funktroniclabs.com/about) includes an
image of a laboratory beaker displayed over the word “Technology” and the
advertising text “We’re about droppin’ science and researching interesting
technologies to enable fantastic experiences.” This conveys the message that
Applicant is a laboratory for exploring computer technology.15 An excerpt from the
“About Us” section from Applicant’s website is reproduced below:

Applicant argues, to the contrary, that its use of “Labs” is incongruous because
“the term ‘lab’ is more commonly thought of as a workplace where workers would be
wearing white lab coats, gloves, eye goggles, safety shoes, and there would be some
sort of scientific equipment, test tubes or chemicals in the ‘lab’ area.”16 However,
Applicant’s argument is not supported by the definition of the word “Laboratory”
which encompasses “any place, situation, set of conditions, or the like, conducive to

15 March 2, 2017 Office Action (TSDR 59).
16 Applicant’s Brief (4 TTABVUE 9).
Serial No. 87012024
- 22 -
experimentation, investigation, observation, etc.” and which is contradicted by
Applicant’s own references to itself as a “lab.”
Applicant also contends that by registering numerous third-party registrations
consisting of the term “Lab” or “Labs” without a disclaimer, the USPTO agrees that
“Lab” or “Labs” is not merely descriptive. To begin with, this argument is without
evidentiary support, because we have sustained the Examining Attorney’s objection
to Applicant’s untimely submitted third-party registrations. In any event, Applicant’s
argument was expressly rejected by the Court of Appeals for the Federal Circuit, our
primary reviewing court in In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001).
The record in this case contains many prior registrations of
marks including the term ULTIMATE. These prior
registrations do not conclusively rebut the Board’s finding
that ULTIMATE is descriptive in the context of this mark.
As discussed above, the term ULTIMATE may tilt toward
suggestiveness or descriptiveness depending on context
and any other factor affecting public perception. The Board
must decide each case on its own merits. In re Owens-
Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ
417, 424 (Fed. Cir. 1985). Even if some prior registrations
had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations
does not bind the Board or this court.
57 USPQ2d at 1566.

We find that the term “Labs” in the mark FUNKTRONIC LABS and design is
merely descriptive and, therefore, Applicant must disclaim the exclusive right to use
“Labs.”
Serial No. 87012024
- 23 -
Decision: The refusal to register Applicant’s mark FUNKTRONIC LABS and
design is affirmed.
The requirement that Applicant disclaim the exclusive right to use the term
“Labs” in the mark FUNKTRONIC LABS and design is affirmed.