Gamers, Inc.v.Game-Xpert, Inc.

Trademark Trial and Appeal Board

Aug 6, 2008

No. 91164969 (T.T.A.B. Aug. 6, 2008)

Mailed:
August 6, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Gamers, Inc.
v.
Game-Xpert, Inc.
_____

Opposition No. 91164969
to application Serial No. 76553390
filed on October 3, 2003
_____

Paul D. Heimann of Erickson & Sederstrom, P.C. for Gamers,
Inc.

William A. English of Vista IP Law Group LLP for Game-Xpert,
Inc.
______

Before Zervas, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Game-Xpert, Inc., seeks registration of the
mark shown below for goods identified in the application as
“computerized on-line retail store and distributorship
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91164969
2
services featuring computer game software” in International
Class 35.1

Opposer, Gamers, Inc., opposed registration of
applicant’s mark, on the grounds that, as used with
applicant’s services, the mark so resembles opposer’s
previously used marks GAMERS and GOGAMERS.COM for “the sale
and distribution of computer video games” as to be likely to
cause confusion, to cause mistake, or to deceive under
Trademark Act Section 2(d), 15 U.S.C. 1052(d).
Applicant filed an answer by which it denied the
salient allegations and asserted as affirmative defenses
that: the term “Gamers” is “generic for the consumers who
purchase Opposer’s goods and services”; “Gamers” is “merely
descriptive of Opposer’s goods and services, and Opposer
cannot demonstrate secondary meaning of the term ‘Gamers’”;
and “opposer has no common law rights in the terms
‘gogamers.com’ and ‘gamers’ because Opposer has not used
these terms as trademarks.”2

1 Serial No. 76553390, filed on October 3, 2003. The application
is based on a allegation of first use and use in commerce on
December 31, 2001 under Trademark Act Section 1(a), 15 U.S.C.
1051(a).

2 Applicant also asserts that it “has senior rights in the mark
‘GOGAMER.COM’ in all areas in which Game-Xpert has used the mark
outside any limited geographical area in which Opposer may have
engaged in business.” This defense, addressing the parties’
Opposition No. 91164969
3
THE RECORD
The evidence of record includes: the pleadings; the
file of the opposed application; opposer’s notice of
reliance on applicant’s responses to discovery requests;
opposer’s trial testimony of Dale J. Miller, opposer’s
owner; applicant’s trial testimony of Ammar Adra,
applicant’s president and CEO, and Craig Steven Ferrante, an
independent web developer hired by applicant; and
applicant’s notice of reliance upon various documents,
including USPTO records and dictionary excerpts.3
In its brief, applicant objected to “any evidence
submitted by Opposer that was not made of record” but
applicant “nonetheless address[ed] such evidence in its
arguments.” Br. p. 6. Applicant does not specify which
items of evidence to which this statement refers. Applicant
also noted the following:
In addition, to the best of Applicant’s knowledge
and review of the TTAB electronic files for the
present opposition, the exhibits entered during
the deposition of Opposer’s president, Dale Miller

possible geographic areas of use, is essentially an argument for
concurrent use which is only available in a concurrent use
proceeding and, therefore, has been given no further
consideration. Trademark Rule 2.133(c), 37 C.F.R. 2.133(c).

3 Both parties submitted documents under notices of reliance that
are not self-authenticating and as such are not proper matter for
submission under a notice of reliance (e.g., documents produced
in response to a request for production absent an admission
identifying and authenticating the documents; and printouts from
websites). However, inasmuch as neither party objected on this
basis and, in fact, discussed these documents in their briefs, we
find them to be stipulated into the record and consider them for
whatever probative value they may have.
Opposition No. 91164969
4
(“the Miller deposition”), were not filed with the
TTAB in accordance with 37 C.F.R. §2.125(c), to
which Applicant hereby objects.

Br. p. 7 (emphasis in original).

Opposer responds that:

Counsel for Opposer obtained the electronic file
of the deposition from the court reporting firm in
order to file it with the TTAB. Counsel filed
that electronic file with the mistaken belief that
he had done so with the exhibits attached to the
deposition transcript. Opposer asks the TTAB to
consider the evidence in spite of its omission
from the filed deposition for the following
reasons.

First, as Applicant acknowledged, Exhibit 2,
attached to this Rebuttal Brief, is the only
exhibit that was not made of record by Opposer in
other submissions to the Board. Those exhibits
that were made of record should be considered.
Second...[t]here is no prejudice or surprise to
Applicant associated with Exhibit 2. Applicant
was aware that Opposer intended to use Exhibit 2
as it was introduced at the deposition. Counsel
for Applicant had ample time to cross-examine Mr.
Miller on Exhibit 2 and was even able to address
the exhibit in Applicant’s brief. Because there
is no prejudice or surprise, and Applicant was
afforded a full opportunity to examine and respond
to Exhibit 2, the TTAB should consider it along
with the other evidence in this case.

Reply Br. p. 1.

We first note, that applicant has not objected to
the other manner in which some documents that comprise
the exhibits to the Miller deposition were submitted,
i.e., by notice of reliance. Further, applicant
received these exhibits and applicant’s attorney was
afforded the opportunity to cross-examine the witness
as to these exhibits while they were entered into the
Opposition No. 91164969
5
record during the timely taking of Mr. Miller’s
testimony. These exhibits were entered into the record
during testimony; the inadvertence in filing the
deposition and exhibits with the Board does not remove
them from the record. In view thereof, we have
considered the exhibits introduced under the Miller
testimony.4
STANDING
Opposer has sufficiently established that it has
standing to bring this proceeding inasmuch as it has
demonstrated a real interest in preventing registration
of the proposed mark. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d
490, 2 USPQ2d 2021 (Fed. Cir. 1987; Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).

PRIORITY/LIKELIHOOD OF CONFUSION
Opposer is relying on its use of
“GOGAMERS.COM” and “GAMERS” to establish common law rights
and priority of use. “Under the rule of Otto Roth, a party
opposing registration of a trademark due to a likelihood of

4 For the convenience of the Board, a Board paralegal contacted
the attorneys for opposer and applicant to facilitate the
forwarding of the testimony exhibits to have them in the
Opposition No. 91164969
6
confusion with his own unregistered term cannot prevail
unless he shows that his term is distinctive of his goods,
whether inherently or through the acquisition of secondary
meaning or through ‘whatever other type of use may have
developed a trade identity.’” Towers v. Advent Software
Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990),
citing, Otto Roth & Co. v. Universal Food Corp., 640 F.2d
1317, 209 USPQ 40, 43 (CCPA 1981).
Further, while a domain name may attain trademark
status, its use as an address does not support trademark
use. In re Eilberg, 49 USPQ2d 1959 (TTAB 1998). “When a
domain name is used only to indicate an address on the
Internet, the domain name is not functioning as a
trademark...Domain names, like trade names, do not act as
trademarks when they are used merely to identify a business
entity; in order to infringe they must be used to identify
the source of goods or services.” Lockheed Martin Corp. v.
Network Solutions, Inc., 985 F. Supp. 949, 956, 44 USPQ2d
1865, 1871 (C.D.Cal. 1997). See also, Data Concepts Inc. v.
Digital Consulting Inc., 150 F.3d 620, 47 USPQ2d 1672,
concurring opinion, Merritt (6th Cir. 1998); and J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§7:17.50 (4th ed. updated June 2008).

electronic file in the order in which they appeared during the
deposition.
Opposition No. 91164969
7
As noted in McCarthy on Trademarks and Unfair
Competition a domain name:
...identifies a place on the Internet where a ‘Web
site’ is located. In the same way that businesses
sometimes desire to have a prestige business
address, businesses want a prestige address in
cyberspace that corresponds to the trade name of
the company or to a company trademark. Like a
street address or telephone number, every domain
name serves the purely technological function of
locating an Web site in cyberspace. However, a
domain name does not become a trademark or service
mark unless it is also used to identify and
distinguish the source of goods or services. Out
of the millions of domain names, probably only a
small percentage also play the role of a trademark
or service mark.

Id.
Of course establishing priority is different from
establishing use to support registration. For example,
while trade name usage is not sufficient to support an
application for registration, it is sufficient to establish
priority in an inter partes dispute. TuTorTape
Laboratories, Inc. v. Halvorson, 155 USPQ 268 (TTAB 1967);
15 U.S.C. §2(d). However, use as a trade name to establish
priority is specifically enumerated in the statute: “...or
a mark or trade name previously used in the United
States...” 15 U.S.C. §1052(d). There is no equivalent
provision for domain name registration or use; nor is a
domain name, per se, similar to a trade name, it is more in
the nature of a street address. Therefore, domain
registration and use as a web address in and of themselves
Opposition No. 91164969
8
do not serve to establish priority. See Brookfield
Communications Inc. v. West Coast Entertainment Corp., 174
F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999) (The mere
registration of a term as a domain name does not establish
any trademark rights).
Applicant’s First Use
While applicant may rely on its filing date of October
3, 2003, applicant has submitted testimony and evidence to
establish December 18, 2001 as its date of first use for its
GOGAMER.COM logo. See TBMP §704.04 (2d ed. rev. 2004) and
cases cited therein. Inasmuch as this date is earlier than
the date of first use alleged in the application, December
31, 2001, applicant must prove this date by clear and
convincing evidence. Stanspec B. v. American Chain & Cable
Co., Inc., 531 F.2d 563, 189 USPQ 420, 424 n. 10 (CCPA
1976); Gor-Ray, Ltd. v. Garay & Co., 167 USPQ 694 (TTAB
1970).
We begin by finding that the term gogamer.com, while
perhaps suggestive of the services inasmuch as “gamer”
refers to the potential consumer, see discussion infra, and
.com has no source identifying significance, the addition of
“go” creates sufficient distinction to push GOGAMER.COM into
the suggestive part of the spectrum. Opposer notes that
“go” refers to the icon frequently used on the Internet to
“go” to the next link or to initiate a search; however, we
Opposition No. 91164969
9
find that, as used here, it evokes a more general impression
of the statement or exclamation “go gamer.”
Applicant registered gogamer.com as its domain name in
1999 and the website was up and running, offering games for
sale, as of December 18, 2001. Adra Test. p. 16. From the
beginning, applicant displayed gogamer.com both as a web
address in the lower left hand corner and as a service mark
in the stylization for which it seeks registration in the
upper left hand corner of the website as shown below.

Ferrante Test. pp. 10-12 Exh. 2. (Mr. Ferrante testified
that this screen shot is of a later version of the website
from late 2002 to early 2003, but the gogamer.com logo was
displayed like this in the December 18, 2001 version). The
December 18, 2001 launch was announced by a press release on
Inside Mac Games, a third-party web site that provides
information about Mac games. Adra Test. p. 18, Exh. 12.
The announcement states:
The popular online gaming retailer Compuexpert has
launched a new gaming store, GoGamer.com. In
addition to snazzy new graphics, the new store
features online order status, a wish list, and
fast holiday shipping.
Opposition No. 91164969
10

Starting in early 2002, applicant included thank you
letters in its shipped orders to customers which prominently
featured the GOGAMER.COM logo and from late 2002 applicant
included various promotional items in its shipped orders,
including door hangers, key chains, t-shirts, mouse pads,
and calculators, all featuring the GOGAMER.COM logo.
Ferrante Test. pp. 20-23 Exhs. 4, 5, 6.

Opposition No. 91164969
11

Based on the evidence of record, applicant has
established, by clear and convincing evidence, December 18,
2001 as its date of first use of as a service mark
for online retail computer game store services. Thus,
opposer must prove service mark rights prior to December 18,
2001 to establish its priority.
Opposer’s Use
We first consider opposer’s use of the term
GOGAMERS.COM. Opposer’s owner, Dale Miller, testified that
opposer originally sought to register the domain name
“gamers.com” inasmuch as GAMERS was the name of its “brick
and mortar” stores, but it was already taken so opposer
added the word “go” and registered the domain name
Opposition No. 91164969
12
gogamers.com on January 29, 1998. Miller Test. p. 15, Exh.
2.
The screen shot of opposer’s web page dated July 17,
1998 shows gogamers.com as the web address in the lower left
hand corner and GAMERS in stylized form in large lettering
across the top. Miller Test. p. 26 Exh. 6.

Opposition No. 91164969
13
Opposer’s use of gogamers.com eventually evolved into a
stylized format displayed at the top of the web page as
shown below in the screen shot of the website dated May 14,
2007 (Exh. 10).

Three earlier screen shots are depicted below. The
first screen shot is dated August 10, 2005 the second is
dated October 26, 2005 and the third is dated November 22,
2005. Exhs. 11, 19 and 12.
5

5 Although not appearing here, the domain address gogamers.com is
listed at the bottom of this page.
Opposition No. 91164969
14

Mr. Miller testified that he has no records to show
versions of the website between July 17, 1998 and August 10,
2005. Miller Test. p. 93. Mr. Miller’s testimony regarding
Opposition No. 91164969
15
opposer’s first use of the logo gogamers.com on the heading
can be characterized, at best as ambiguous (“I can’t
remember the date I want to say 2001 maybe” Miller Test. p.
44), and is contradicted by the documentary evidence. Thus,
based on the record, opposer began using GOGAMERS.COM in
logo form as a source identifier on its website in November
2005, well after applicant’s first use as a source
identifier, see supra, and approximately eight months after
opposer filed the opposition.
Further, as to sales from its online presence Mr.
Miller testified:
Q. Okay. So does that give you a re- -- does
that refresh your recollection as to when you were
contemplating using that as an e-mail address?
A. Yeah. Yeah. He’s got, yeah,
GAMERS@GoGamers.com. That was initially, yeah, we
would have on there – since we didn’t have e-
commerce set up at that time, customers could e-
mail directly to that e-mail address,
GAMERS@GoGamers.com, questions. They could
request certain games. We could sell games just
through e-mail. So that’s what the – that
initially was for.

Miller Test. pp. 21-22.
Q. How soon after that did you begin to actually
sell products by virtue of the internet?
A. As I recall, it would be a couple of months
later, probably the summer of ’98.
...
Q. Do you still have a – web site for
GoGamers.com?
A. Yeah, definitely.
Q. And so if someone were to type that in, they
would be directed to your web site?
A. Yeah.
Opposition No. 91164969
16
Q. Okay. Have you used that web site address
continuously since – from ’98 up until the present
date?
A. Yes.

Miller Test. pp. 22, 23.
A. We have – now we have e-commerce, so they can
buy directly through the web site and pay in a
secure site, whereas the other one, it had e-mail
through GAMERS@GoGamers.com.
Q. Okay. When did that transaction take place
where people were purchasing via e-mail as opposed
to e-commerce?
A. I don’t recall the date. It could be 2002,
2003.
...

Miller Test. pp. 43-44.
Thus, in order to purchase a product prior to 2002 or
2003 consumers would have to send an email to GAMERS at that
email address, which further reinforces the finding that
GOGAMERS.COM was not being used as a source identifier prior
to December 2001.
Finally, although opposer testified on May 15, 2007
that presently the invoice shipped out with products ordered
online from the website includes the gogamers.com logo, it
is not clear when that began. Miller Test. p. 53. Although
Mr. Miller testified that earlier invoices in 1999 included
gogamers.com, based on the testimony it appears that it was
used as a location device and not as a trademark. Miller
Test. p. 32 (“We would have – when we’d print an invoice for
a sale, we would list visit GoGamers.com for more deals or
various other specials or sales”). This type of use is
Opposition No. 91164969
17
further corroborated by a 2005 invoice in the record. See
Miller Test. Exh. 20 (October 11, 2005 packing slip that
includes the GAMERS logo in large font and the following
reference to an email address: “Looking for arcade
machines? We’ve got plenty! Inquire at
sales@gogamers.com”).
Opposer also attempts to establish priority through its
presence on eBay. Opposer initially testified that it began
using the user ID “gogamerscom” sometime around “2000, 2001”
for its eBay account. Miller Test. p. 33. However, this
statement is not supported by the documentary evidence and
was contradicted on cross examination. Opposer submitted a
screen shot of its “store front” on eBay which is “a page or
a combination of pages where a customer can see everything
that, in this case, gogamerscom has for sale.” Miller Test.
p. 40.
Opposition No. 91164969
18

Exh. 9.
These screen shots are dated May 13, 2007. The earliest
screen shot of record is from November 7, 2005 (Exh. 14).
The earlier screen shot also includes the greeting “Welcome
Opposition No. 91164969
19
to Gamers” underneath the gogamerscom user id. There is no
testimony or evidence to indicate the manner in which
gogamerscom appeared prior to November 7, 2005. The
following testimony on cross examination clarifies when
gogamerscom was first registered as opposer’s user id on
eBay:
Q. Do you have a fair bit of experience dealing
with eBay?
A. Yes.
Q. Do you know what this page is?
A. Yes. It’s the user ID page.
...
Q. Okay. Now, do you see they use – under the –
you know, it says across there, “eBay Member User
ID History.” And then there’s another line across
there, and then the final line, I mean, below
that, sorry, it says user ID?
A. Yes.
Q. And do you see the word underneath that?
A. GoGamersCom? Is that what you’re...
Q. Yes.
A. Yeah. Yes.
Q. Is that your user – the user ID that you used
for your eBay store?
A. Yes.
Q. And what is – what’s the date underneath that?
A. November of ’02.
Q. So does this refresh your memory as far as
when you started using GoGamersCom as your user
ID?
A. Yeah, I guess so. I believe it was prior to
that. And it could have been the – when we used
GoGamers.com prior to that.
Q. Because you had – that’s – you had stated
earlier that your user name had changed on your
eBay store for your user name; correct?
A. Yeah.
Q. Now, can you go to the next row underneath
there, underneath where it says “GoGamersCom,” do
you see the asterisks and then @alltel.net?
A. Yes.
Q. You had stated earlier that that was your user
ID at some point?
Opposition No. 91164969
20
A. That – yeah. It – the e-mail address
originally.
Q. So do you – do you know what the asterisks are
for?
A. Well, I presume it’s GAMERS@alltel.net,
although there is enough asterisks for it to be
GoGamersCom@alltel.net.
Q. And what was the effective date for that user
ID?
A. March of 2000.
Q. At – does that refresh your memory as far as
when you started your eBay store?
A. It seems to coincide, roughly.
...
Q. Okay. So to your recollection, what do you
believe those asterisks would have been?
A. Well, I – as I’ve said, I – it could – it – I
know at one point it was GAMERS@alltel.net. And I
– I know at one point we – we wanted to use our
web link, our web site whenever we could. So it
could have been GoGamersCom@alltel.net. You know,
exact dates I – I don’t know. We’re operating
physical stores at the same time as well as trying
to develop this new – new, I guess, virtual store.
We worked on GoGamers.com prior to this, so it’s –
it’s kind of difficult to say exact time when we
started on it.

Miller Test. pp. 82-86 Exh. 14.

As applicant states:
Opposer provided no evidence that its User ID
“gogamerscom” served as anything more than
Opposer’s eBay identification for allowing Opposer
to log in and access eBay accounts, nor did
Opposer provide evidence that Opposer’s User ID
identified Opposer as an eBay seller to an eBay
purchaser. Instead, Applicant’s Notice of
Reliance, Exhibit 11, shows Opposer used “Gamers”
in large design font in the center of Opposer’s
eBay sales page to identify Opposer as a seller to
customers, while “gogamerscom” is in small text on
a side of the sales page and not featured
prominently to identify Opposer as the seller.

Br. p. 31.
Opposition No. 91164969
21
We add that, setting aside the question of whether use
as a user ID on eBay can serve as service mark use, again
the testimony regarding opposer’s first use of gogamerscom
is indefinite and the evidence of record points to November,
2002 as the start date for that user ID after applicant’s
December 18, 2001 date of first use.
Inasmuch as opposer has not established trademark
rights in GOGAMERS.COM prior to applicant’s first use of the
GOGAMER.COM logo, the opposition based on this alleged
trademark must fail. In view thereof, we do not reach the
issue of likelihood of confusion as to these marks.
We now turn to consider opposer’s assertion of service
mark rights in the term GAMERS and its date of first use.
Applicant argues that GAMERS is generic for opposer’s
services, because “gamers” is “commonly used to refer to the
class of purchasers of Opposer’s goods and services, i.e.,
individuals who play video and computer games.” Br. p. 41.
“GAMER” is defined as “one who plays a game, especially
a role-playing or computer game.” The American Heritage
Dictionary of the English Language (4th ed. 2006),
Applicant’s Notice of Reliance Exh. 1. Opposer does not
dispute the meaning of “gamers” but argues that it is
suggestive of opposer’s services, or, at most, merely
descriptive and has acquired distinctiveness.
Opposition No. 91164969
22
The critical issue in determining genericness is
whether members of the relevant public primarily use or
understand the designation sought to be registered or that
is already registered to refer to the genus or category of
goods or services in question. H. Marvin Ginn Corp. v.
Int’l Ass. Of Fire Chiefs, inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986). In our analysis, we first identify
the genus of goods or services at issue and then determine
whether the term in issue is understood by the relevant
public primarily to refer to that genus of goods or
services. Id. In this case the genus is online retail
sales of computer and video games. While there is evidence
of record that the term GAMERS refers to potential customers
of opposer’s retail services, there is no evidence to
support a finding that consumers would use GAMERS to refer
to the retail sales of games for gamers. Thus, we find
that, based on this record, GAMERS is not the generic term
for opposer’s services.
However, GAMERS, in the context of opposer’s services,
immediately conveys to potential purchasers a significant
feature of the services, i.e., they are directed to gamers.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004); In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986). Therefore, GAMERS is merely
descriptive of opposer’s services.
Opposition No. 91164969
23
In view of the above, the term GAMERS is, at least,
capable of acquiring source identifying significance for
opposer’s services. Thus, to establish priority, opposer
must prove acquired distinctiveness prior to applicant’s
established first use date.
It is opposer’s burden to establish acquired
distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki
Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir.
1988). “[L]ogically that standard becomes more difficult as
the mark’s descriptiveness increases.” Id. at 1008. Thus,
a claim that opposer has been using the subject matter for a
long period of substantially exclusive use may not be
sufficient to demonstrate that the mark has acquired
distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d
1948, 1952 (TTAB 2001) (66 years of use); In re Kalmbach
Publishing Co., 14 USPQ2d 1490 (TTAB 1989); and In re Gray
Inc., 3 USPQ2d 1558, 1559 (TTAB 1987).
The amount and character of evidence required to
establish acquired distinctiveness depends on the facts of
each case, Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d
823, 166 USPQ 34 (CCPA 1970), and more evidence is required
where a mark is so highly descriptive that purchasers seeing
the matter in relation to the goods or services would be
less likely to believe that it indicates source in any one
party. See In re Bongrain International Corp., 894 F.2d
Opposition No. 91164969
24
1316, 13 USPQ2d 1727 (Fed. Cir. 1990). Evidence of acquired
distinctiveness can include the length and manner of use of
the mark, the nature and extent of advertising and
promotion, sales, and surveys. See British Seagull Ltd. v.
Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993). See also Coach
House Restaurant, Inc. v. Coach and Six Restaurant, Inc.,
934 F.2d 1551, 19 USPQ2d 1401, 1406 (1991). However, a
successful advertising campaign is not in itself necessarily
enough to prove acquired distinctiveness. In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
(claim based on annual sales under the mark of approximately
eighty-five million dollars, and annual advertising
expenditures in excess of ten million dollars, not
sufficient to establish acquired distinctiveness in view of
highly descriptive nature of mark).
In support of its assertion of acquired
distinctiveness, Mr. Miller testified that opposer opened
its first GAMERS store on July 20, 1993. Miller Test. p. 8.
Its first store was in Omaha, Nebraska and opposer now has
ten stores in Nebraska and Iowa. Id. at 9. Opposer used
GAMERS in signage outside the store. Opposer began use of
GAMERS online in connection with its services selling video
games through email and displaying GAMERS on its website
beginning on July 17, 1998. Opposer has used GAMERS as its
trade name since 1993. In addition, opposer has used GAMERS
Opposition No. 91164969
25
on its eBay store front. Opposer’s present annual revenue
is “around eight million” (id. at 45) and opposer has made
sales to consumers in all fifty states. Id. at 48.
Given the highly descriptive nature of this term, the
record in this case does not support a conclusion based on
substantial evidence that opposer has acquired
distinctiveness in connection with opposer’s retail sales of
computer and video games either online or in brick and
mortar stores. While opposer testified that GAMERS was on
signage outside the stores, there are no examples in the
record or testimony to show how it was displayed. Further,
although opposer’s current sales are not insubstantial and
it currently has a high sales volume on eBay, other than the
first year in 1994 when it was not online, the testimony
does not establish the level of annual sales leading up to
December 18, 2001. Nor is there evidence of an extensive
advertising campaign for its services under the term GAMERS.
Further, although GAMERS has had an online presence since
1998, there is nothing in the record to show the extent to
which potential purchasers have been exposed to it (e.g.,
the number of visitors to the website, the volume of sales)
prior to December 18, 2001.
However, even if the record supports opposer’s
assertion of service mark rights in GAMERS, due to the
highly descriptive nature of the term, we accord it very
Opposition No. 91164969
26
little scope of protection in the field of retail sales of
computer and video games. In view thereof, we find that the
differences in sound, appearance, connotation and commercial
impression between GAMERS and are sufficient to
distinguish the marks, even where, as here, the services and
channels of trade are identical.
Inasmuch as opposer has not established prior service
mark rights in the terms GOGAMERS.COM and GAMERS, and
opposer’s mark GAMERS is not confusingly similar to
applicant’s GOGAMER.COM logo mark, the notice of opposition
must be dismissed.
Decision: The opposition is dismissed.