Game On International, LLC

Trademark Trial and Appeal Board

Dec 12, 2019

87606762 (T.T.A.B. Dec. 12, 2019)

Mailed: December 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Game On International, LLC
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Application Serial No. 87606762
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Jennifer L. Mozwecz of SRM Law, PC for Game On International, LLC.

Yatsye I. Lee, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Bergsman, Adlin and English, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Game On International, LLC (Applicant) filed a Principal Register application for
the mark GAME ON! INTERNATIONAL and design, shown below,

This Opinion Is Not a
Precedent of the TTAB
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for the services set forth below:
Consulting in sales techniques and sales programmes;
Consulting services relating to publicity; Advertising and
promotion services and related consulting; Brand imagery
consulting services; Business consulting and information
services; Business consulting in the consumer products
industry; Business consulting, management, planning and
supervision; Business development consulting services;
Business management consulting; Business management
consulting and advisory services; Business marketing
consulting services; Business organization consulting;
Consumer marketing research and consulting related
thereto; Marketing consulting; Professional business
consulting; Promotion and marketing services and related
consulting; Providing organizational development
consulting services, in Class 35.1
The application includes the description of the mark set forth below:
The mark consists of the phrase “GAME ON!” in white
letters on the face of a blue and green globe, and the word
“INTERNATIONAL” in white letters within a blue arrow
circling the blue and green globe.
The color(s) blue, green, and white is/are claimed as a
feature of the mark.
Applicant disclaims the exclusive right to use the word “International.”
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 of likelihood of confusion
with two previously registered marks, listed below, owned by two separate entities:
1. Registration No. 5110104 for the mark GAME ON, in standard character form,
for “advertising and marketing services, namely, promoting the goods, services

1 Application Serial No. 87606762 filed September 13, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming October 1, 2016 as its date of first use anywhere
and October 20, 2016 as its date of first use in commerce.
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and interests of others in the field of billiards via print and electronic media,”
in Class 35;2 and
2. Registration No. 4558259 for the mark GAME ON! LEARNING, in standard
character form, for “Business training; Interactive on-line training services in
the field of business and sales skills; Teaching and training in business,
industry and information technology,” in Class 41.3 Registrant disclaimed the
exclusive right to use the word “Learning.”
I. Preliminary Issue
In its January 24, 2019 Request for Reconsideration, Applicant proposed
amending its description of services contingent upon the Examining Attorney
withdrawing the likelihood of confusion refusals. The proposed amendment reads as
follows:
In further effort to overcome the final rejection, Applicant,
if necessary, in the Examiner’s opinion, to proceed to
publication, shall amend and narrow the description of
services to read as follows:
Consulting in sales techniques and sales program
related to toys, games, and children’s products;
Business consulting and information services for
manufacturers of toys, games, and children's products;
Business consulting, management, planning and
supervision for manufacturers of toys, Games, and
children’s products. 4
The Examining Attorney did not accept the proposed amendment.

2 Registered December 27, 2016.
3 Registered July 1, 2014.
4 4 TTABVUE 9.
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In the request for reconsideration, the applicant has
offered to amend and narrow the identification of services
if the examining attorney believes that doing so would
overcome the refusal. Despite the amendment proposed by
the applicant however, the examining attorney believes the
services would still be related to those of the registrants
because sales technique consulting and business
consulting services that “relate to toys and games”
presumably encompass marketing and advertising services
that are in the field of billiards, as identified in U.S.
Registration No. 5110104. …
The examining attorney remains unpersuaded. Because
the applicant has conditioned the amendment of its
services on the examiner’s withdrawal of the refusal, the
identification of services remains as originally identified in
the application.5
Nevertheless, in its Appeal Brief, Applicant seems to believe that its proposed
amendment is still in play.
Applicant in its Request for Reconsideration offered to
amend the description of services to narrow the field to all
of the described services but specifically in the field of
children’s games and toys. However, the Examining
Attorney responded that such amendment would not
change her opinion as to the likelihood of confusion for
consumers when encountering the marks. We respectfully
disagree.6
We find that Applicant’s original description of services is the operative
description of services. Applicant proposed a provisional amendment effective upon
the Examining Attorney withdrawing the refusals to register based on likelihood of
confusion. The Examining Attorney did not agree to withdraw the likelihood of
confusion refusals as a prerequisite for Applicant’s amendment to the description of

5 February 14, 2019 Denial of Request for Reconsideration (5 TTABVUE 4).
6 Applicant’s Brief, p. 11 (10 TTABVUE 12).
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services and expressly stated that she was rejecting the proposed amendment and
that the original description of services was the operative description of services.
Considering the ease with which Applicant could have amended the description of
services, had Applicant wished to prosecute the application with the restricted
description of services, it should have clearly stated that it was amending the
description of services without any prerequisites or preconditions. Accordingly, the
original description of services is the operative description of services.
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 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., 575
U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the DuPont factors are
relevant to every case, and only factors of significance to the particular mark need be
considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed.
Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)); see also 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 1197, 177 USPQ 386, 387 (CCPA
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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)).
A. Registration No. 5110104 for the mark GAME ON for “advertising and
marketing services, namely, promoting the goods, services and interests of
others in the field of billiards via print and electronic media.”
1. The similarity or dissimilarity and nature of the services.

As noted above, Applicant’s description of services includes, inter alia,
Advertising and promotion services and related consulting;
Business marketing consulting services; Marketing
consulting; and Promotion and marketing services and
related consulting.
Registrant’s description of services is “advertising and marketing services, namely,
promoting the goods, services and interests of others in the field of billiards via print
and electronic media.”
Applicant’s broadly worded advertising, promotion, and marketing services are
broad enough to encompass Registrant’s “advertising and marketing services,
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namely, promoting the goods, services and interests of others in the field of billiards
via print and electronic media.” In other words, Applicant’s advertising, promotion,
and marketing services are broad enough to include such services in the field of
billiards. Where services are broadly identified in an application or registration, “we
must presume that the services encompass all services of the type identified.” Sw.
Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); see also In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s
broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s
narrowly identified ‘residential and commercial furniture.’”); Venture Out Props. LLC
v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007).
Under this DuPont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each activity listed in the description of services. It is
sufficient for a refusal based on likelihood of confusion that relatedness is established
for any activity encompassed by the identification of services 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.”).
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Applicant argues that Registrant operates a billiard blog rather than rendering
the services identified in the description of services.7 However, we must consider the
services as they are described in the application and registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed.
Cir. 2014); Octocom Sys, Inc. v. 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.”); 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 do not consider extrinsic evidence about
Registrant’s actual goods, customers, or channels of trade. E.g., In re Dixie Rests. Inc.,
105 USPQ2d, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Fisher Sci. Co., 440 F.2d
43, 169 USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646
(TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
We find that the services are in part identical.

7 Applicant’s Brief, pp. 8, 12 and 14-15 (10 TTABVUE 9, 13 and 15-16).
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2. Established, likely-to-continue channels of trade and classes of
consumers.

Because the services described in the application and the cited registration are in
part identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (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 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).
3. The number and nature of similar marks in use in connection with
similar services.

Applicant did not submit any evidence of actual third-party use of GAME ON
formative marks used in connection with advertising or marketing services. However,
in its January 24, 2019 Request for Reconsideration and June 21, 2018 Response to
Office Action Applicant identified 27 registered marks and four pending applications
for marks including the term “Game On” for a wide variety of goods and services
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unrelated to Registrant’s services.8 The third-party registrations and applications
identified by Applicant are of little, if any, probative value because they do not cover
the same services. See Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d
1315, 128 USPQ2d 1686, 1693-94 (Fed. Cir. 2018) (error to rely on third-party
evidence of similar marks for dissimilar goods, as Board must focus “on goods shown
to be similar”); In re i.am.symbolic, LLC, 123 USPQ2d at 1751 (disregarding third-
party registrations for other types of goods where the proffering party had neither
proven nor explained that they were related to the goods in the cited registration); In
re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations
are of limited probative value because the goods identified in the registrations appear
to be in fields which are far removed from the goods at issue).
Second, the “existence of [third party] registrations is not evidence of what
happens in the market place or that customers are familiar with them.” AMF Inc. v.

8 Applicant did not submit copies of the registrations. To make registrations of record, the
offering party must submit copies of the registrations or the complete electronic equivalent
(i.e., complete printouts taken from the USPTO’s Trademark database). In re Ruffin Gaming
LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Volvo Cars of N. Am. Inc., 46 USPQ2d
1455, 1456 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB
1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994). However, because
the Examining Attorney did not object to the improper evidence of third-party registrations
and, in fact, addressed them in her brief (12 TTABVUE 16), the Examining Attorney waived
any objection to the third-party registrations. See In re Houston, 101 USPQ2d 1534, 1536
(TTAB 2012) (finding that the examining attorney’s failure to advise applicant of the
insufficiency of the list of registrations when it was proffered during examination constituted
a waiver of any objection to consideration of that list); In re 1st USA Realty Prof’ls, 84
USPQ2d 1581, 1583 (TTAB 2007) (allowing evidence of a list of third-party registrations
because the examining attorney did not advise applicant of the insufficiency of the list while
there was still time to correct the mistake) ; In re Broyhill Furniture Indus., Inc., 60 USPQ2d
1511, 1513 n.3 (TTAB 2001) (finding examining attorney’s objection to a listing of third-party
registrations waived because it was not raised in the Office action immediately following
applicant’s response in which applicant’s reliance on the list was indicated).
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Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). The
probative value of third-party trademarks depends entirely upon their usage. Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1693 (Fed. Cir. 2005), quoting Scarves by Vera, Inc. v. Todo Imports,
Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976) (“The significance of third-
party trademarks depends wholly upon their usage. Defendant introduced no
evidence that these trademarks were actually used by third parties, that they were
well promoted or that they were recognized by consumers.”). As the Court of Appeals
for the Federal Circuit has recognized, where the “record includes no evidence about
the extent of [third-party] uses … [t]he probative value of this evidence is thus
minimal.” Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1561 (Fed. Cir. 2001).
Finally, pending applications are evidence only that the applications were filed on
a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enters.
LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Servs. Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sportswear,
Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
We find that the number and nature of similar marks in use in connection with
advertising or marketing services is a neutral DuPont factor.
4. 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
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and commercial impression. DuPont, 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); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
In comparing the marks, we are mindful that where, as here, the services 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 services. 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., 127 USPQ2d at 1801 (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).
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The marks are similar because they share the term “Game On.” Although we
consider the marks in their entireties, there is nothing improper in stating that, for
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. Viterra Inc., 101 USPQ2d at 1908; In
re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case,
the words GAME ON! INTERNATIONAL are the dominant part of Applicant’s mark
because the words are likely to make a greater impression upon purchasers, would
be remembered by them, and would be used by them to request the services. See Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); Viterra, 101 USPQ2d
at 1908 (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir
1983)).
The term GAME ON! is the dominant part of the word portion of the mark because
it is presented in the largest letters and it covers almost the entire globe. In addition,
the term GAME ON! has added significance in Applicant’s mark because it is the lead
term and, as such, relevant purchasers are likely to notice and remember GAME ON!.
See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1048 (Fed. Cir.
2018) (finding “the identity of the marks’ two initial words is particularly significant
because consumers typically notice those words first”); Palm Bay Imps., 73 USPQ2d
at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to appear on the label);
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Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the
identical lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB
2016) (noting that the dominance of BARR in the mark BARR GROUP is reinforced
by its location as the first word in the mark); Presto Prods. Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered”).
Moreover, the geographically descriptive word “International” has less
significance in Applicant’s mark. See In re Detroit Athletic Co., 128 USPQ2d at 1050
(citing In re Dixie Rests., Inc., 41 USPQ2d at 1533-34); Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”).
Under these circumstances, the fact that Applicant’s mark incorporates
Registrant’s entire mark increases the similarity between the two. See, e.g., China
Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed.
Cir. 2007) (applicant’s mark CHI PLUS is similar to opposer’s mark CHI both for
electric massagers); Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark
BENGAL LANCER for club soda, quinine water and ginger ale is similar to BENGAL
for gin); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging
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diagnostic apparatus confusingly similar to TITAN for medical ultrasound diagnostic
apparatus); Broadcasting Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1568
(TTAB 2007) (respondent’s mark ABS-CBN is similar to petitioner’s mark CBN both
for television broadcasting services); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004
(TTAB 1988) (applicant’s mark MACHO COMBOS for food items confusingly similar
to MACHO for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985)
(RICHARD PETTY’S ACCU TUNE for automotive service centers is similar to
ACCU-TUNE for automotive testing equipment).
We find that the marks are similar in their entireties in terms of appearance,
sound, connotation and commercial impression.
5. The conditions under which sales are made.
Applicant contends that its “clients (consumers) are sophisticated, knowledgeable
business people operating in the field of children’s games and toys.”9 There are three
problems with this argument. First, Applicant’s contention is attorney argument; it
is not supported by any evidence. As the Federal Circuit has held, “Attorney
argument is no substitute for evidence.” Zheng Cai, d/b/a Tai Chi Green Tea Inc. v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting
Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)); see also
In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there
was no proof to support the statements in the record by counsel).

9 Applicant’s Brief, p. 12 (10 TTABVUE 13).
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Second, even assuming that we could accept counsel’s argument as fact, Applicant
did not explain the purchasing process. Compare Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010) (products cost $14,000 and
$47,000 respectively and testimony established that purchases of both products
involve significant study and negotiation).
Finally, Applicant relies on extrinsic evidence or argument by asserting that its
clients operate in the field of children’s games and toys. That fact is not reflected in
its description of services. See the discussion above. We may not read limitations or
restrictions into the description of services. See In re i.am.symbolic, LLC, 123
USPQ2d at 1748; 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”); In
re Thor Tech, 90 USPQ2d at 1638 (“We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”); see also In re Opus One Inc.,
60 USPQ2d 1812, 1817 (TTAB 2001) (while the applicant “offered evidence to show
that registrant’s OPUS ONE wine is an expensive wine... ‘wine’ must be presumed to
encompass inexpensive or moderately-price wine.”); In re Bercut-Vandervoort & Co.,
229 USPQ at 764 (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). Therefore, we must presume that
Applicant’s advertising, promotion, and marketing services include all types of
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advertising, promotion, and marketing services, including those types of services for
small businesses and unsophisticated individuals who are not experienced
purchasers of advertising and marketing services.
We find this DuPont factor to be neutral.
6. Conclusion
Because the marks are similar, the services are in part identical and we presume
the services are offered in the same channels of trade to the same classes of
consumers, we find that Applicant’s mark GAME ON! INTERNATIONAL and design
for, inter alia, “advertising and promotion services and related consulting; business
marketing consulting services; marketing consulting; and promotion and marketing
services and related consulting” is likely to cause confusion with the registered mark
GAME ON for “advertising and marketing services, namely, promoting the goods,
services and interests of others in the field of billiards via print and electronic media.”
B. Registration No. 4558259 for the mark GAME ON! LEARNING for
“business training; interactive on-line training services in the field of
business and sales skills; teaching and training in business, industry and
information technology.”

1. The similarity of the marks.

Applicant’s mark is GAME ON! INTERNATIONAL and design. The mark in the
cited registration is GAME ON! LEARNING. The marks are similar in that they
share the term GAME ON! followed by a descriptive word (i.e., International or
Learning). Thus, the word portion of Applicant’s mark and Registrant’s mark have
the same structure. As discussed above, the term GAME ON! is the dominant part of
Applicant’s mark. Likewise, the term GAME ON! is the dominant part of Registrant’s
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mark because GAME ON! is the first part of the mark, and because the word
“Learning” is descriptive, it has less significance as a source indicator. Consumers
familiar with Applicant’s mark upon encountering Registrant’s mark may mistakenly
believe that Registrant’s GAME ON! LEARNING service is the educational part of
Applicant’s GAME ON! line of services.
Applicant argues that “there is no discernable evidence that the ‘GAME ON!
LEARNING’ mark is being used in commerce at all, let alone in the specific services
it claims in its registration.”10 According to Applicant, Registrant has been dissolved,
its telephone number is no longer in service, and Applicant could not find any
evidence of Registrant’s use of the mark.11 In essence, Applicant contends that
Registrant has abandoned its mark. This is an improper collateral attack on the cited
registration. As the Federal Circuit held when dismissing an applicant’s contentions
that the cited registered mark was no longer in use in In re Dixie Rests., Inc., 41
USPQ2d at 1535, “the present ex parte proceeding is not the proper forum for such a
challenge.” “[I]t is not open to an applicant to prove abandonment of [a] registered
mark” in an ex parte proceeding; thus, the “appellant’s argument . . . that [a
registrant] no longer uses the registered mark . . . must be disregarded.” See also
Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA
1970).

10 Applicant’s Brief, p. 11 (10 TTABVUE 12).
11 Id.
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We find that the marks are similar in their entireties in terms of appearance,
sound, connotation and commercial impression.
2. The similarity or dissimilarity and nature of the services.

Applicant’s description of services includes “consulting in sales techniques and
sales programmes,” “business consulting and information services,” “business
consulting in the consumer products industry,” “business consulting, management,
planning and supervision,” “business development consulting services,” “business
management consulting,” “business marketing consulting services,” “business
organization consulting,” and “organizational development consulting services.”
The description of services in the cited registration is “business training;
interactive on-line training services in the field of business and sales skills; teaching
and training in business, industry and information technology.”
The Examining Attorney submitted excerpts from third-party websites showing
that the same parties offer services similar to Applicant’s consulting services and
Registrant’s training services under the same mark. For example,
• Cap Rock Global Services (caprockglobal.com) offers business management
consulting services and customized training programs.12
• The Rain Group (rainsalestraining.com) markets itself as “a global leader in
sales training and consulting.”13

12 December 21, 2017 Office Action (TSDR 7-10).
13 December 21, 2017 Office Action (TSDR 11-14).
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• Cohegic Corporation (cohegic.com) advertises sales strategy, process, and
organization services, as well as sales training.14
• Creative Sales + Management Incorporated (csm4tqs.com) advertises its
“Business Development Consulting, Sales, Service and Management Training”
services.15
• Steven Rosen Star Results (starresults.com) advertises its sales training and
consulting services.16
The Examining Attorney has submitted numerous use-based, third-party
registrations for services listed in both the involved application and cited
registration.17 Third-party registrations based on use in commerce that individually
cover a number of different services often have probative value to the extent that they
serve to suggest that the listed 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 1988), aff’d mem.
864 F.2d 149 (Fed. Cir. 1988). Representative registrations, with relevant portions
of the identifications, are listed below.
Mark Reg. No. Services
IGNITE BRILLIANCE 4045774 Advertising and promotion services and
related consulting; brand imagery
consulting services; business consulting
and business information services;

14 December 21, 2017 Office Action (TSDR 18-19).
15 December 21, 2017 Office Action (TSDR 23-24).
16 December 21, 2017 Office Action (TSDR 25).
17 July 24, 2018 Office Action (TSDR 50-211).
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Mark Reg. No. Services
Business training; conducting classes in
the field of sales and business
GLOBAL RAINMAKING 3786411 Advertising and promotion services and
related consulting; brand imagery
consulting services; business advisory
services, consultancy and information;
business consultation services; marketing
consulting;

Business training; conducting classes,
conferences, workshops and seminars in
the field of business and client
development
MARKETFRAMES 3092325 Advertising and promotion services;
market research services;

Training in the field of marketing and
business planning
GENERGRAPHICS 3092961 Market research services, business
marketing consulting services, advertising
and promotion services and related
consulting;

Conducting workshops, seminars, and
training relating to advertising, promotion,
marketing and business
OUR VALUES DRIVE
OUR SUCCESS
4229383 Advertising, marketing and promotion
services;

Teaching and training in business,
industry and information technology

We find that the services are related.
3. Established, likely-to-continue channels of trade and classes of
consumers.

The third-party websites discussed in the previous section show that Applicant’s
business consulting and Registrant’s training services are offered together to the
same classes of consumers.
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4. Conclusion
Because the marks are similar, the services are related, and the services are
offered in the same channels of trade to the same classes of consumers, we find that
Applicant’s mark GAME ON! INTERNATIONAL and design for, inter alia,
“consulting in sales techniques and sales programmes,” “business consulting and
information services,” “business consulting in the consumer products industry,”
“business consulting, management, planning and supervision,” “business
development consulting services,” “business management consulting,” “business
marketing consulting services,” “business organization consulting,” and
“organizational development consulting services” is likely to cause confusion with the
registered mark GAME ON! LEARNING for “business training; interactive on-line
training services in the field of business and sales skills; teaching and training in
business, industry and information technology.”
Decision: The refusal to register Applicant’s mark GAME ON!
INTERNATIONAL and design based on each of the cited registrations is affirmed.