International Lutheran Laymen’s League

Trademark Trial and Appeal Board

Aug 31, 2000

No. 75364562 (T.T.A.B. Aug. 31, 2000)

Paper No. 10
GFR
8/31/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re International Lutheran Laymen's League
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Serial No. 75/364,562
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Rose N. Perotti of Polster, Lieder, Woodruff & Lucchesi for
International Lutheran Laymen's League.
Laura Gorman Kovalsky, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
International Lutheran Laymen's League has filed an
application to register the mark THE PUZZLE CLUB in
International Class 41 for services identified as
"educational and entertainment services, namely, production
of animated television films, videos and CD-ROMs featuring
a religious message for families."1

1 Serial No. 75/364,562, filed September 29, 1997, and alleging a
date of first use and first use in commerce of August 20, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/364,562
2
The Examining Attorney has refused registration of
applicant's mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the prior registration of
the marks THE PUZZLE PLACE2 and THE PUZZLE PLACE and
design3, shown below, both for "entertainment services,
namely, producing a children's television series" in class
41.
When the Examining Attorney made the refusals of
registration final, applicant appealed. Both applicant and
the Examining Attorney have filed briefs, but an oral
argument was not requested. We reverse both refusals.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are

2 Registration No. 1,962,893, issued March 19, 1996, based on
claimed dates of first use of January 16, 1995.
3 Registration No. 1,958,130, issued February 20, 1996, based on
a claimed date of first use of January 16, 1995. The drawing of
the mark is lined for the colors yellow, blue, pink and green.
Ser. No. 75/364,562
3
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
key considerations are the similarities or dissimilarities
of the marks, the similarity or dissimilarity of the
services, and the classes of consumers for the involved
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first consider the involved services. We note that
registrant's identification of services contains no
limitation as to the content of its television series,
except insofar as it is intended for children. That is to
say, registrant's identification encompasses even an
animated children's television series and one with
religious content, i.e., a series with the same
characteristics as applicant's television films and videos.
In addition, we note the Examining Attorney's reliance
on third-party registrations, for marks used in commerce,
which are probative evidence that a single entity can
produce television films, a television series and videos.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993). In an attempt to overcome this evidence
from the Examining Attorney, applicant argues that this
Ser. No. 75/364,562
4
case is more akin to the Digirad case, because none of the
services listed in the third-party registrations include
production of videos, films or television programs
featuring a religious message for families. In re Digirad
Corp., 45 USPQ2d 1841 (TTAB 1998). We agree with the
Examining Attorney, however, that the Digirad case is
factually distinguishable and provides no support for
applicant's argument. In Digirad, the third-party
registrations introduced by the Examining Attorney were not
helpful in establishing whether the applicant's and
registrant's goods were similar. In this case, we find the
third-party registrations are clear evidence that
purchasers of registrant's and applicant's services are
accustomed to obtaining them from the same source and,
thus, that such services are indeed similar.
In regard to classes of consumers, applicant argues
that registrant's services are directed to children, while
applicant's services "are directed to families. Although
'families' may include 'children', Applicant's services are
also intended for adults, and are purchased by adults."
Further, applicant argues that "families who are seeking a
'religious message' are discriminating purchasers." In
making these arguments, however, applicant focuses on the
ultimate viewers of the productions of applicant and
Ser. No. 75/364,562
5
registrant and loses sight of the fact that the involved
identifications are for the services of producing,
respectively, a television series, and animated television
films, videos and CD-ROMS. The purchasers of the
respective services presumably are businesses or
organizations that could show or resell the productions
resulting from purchases of the services. In fact, the
usual class of consumers for applicant's television films
and registrant's television series would be television
broadcasters, not children or families. Accordingly,
applicant's argument is inapposite. Notwithstanding the
error in applicant's analysis, we do presume those
businesses, including television broadcasters, and other
organizations that would purchase the respective services,
are likely to be sophisticated consumers, and therefore
less likely to be confused by the use of the respective
marks in connection with these similar services. This is a
factor that militates against finding a likelihood of
confusion.
Turning to the marks, applicant submits that "PUZZLE"
is defined as "a question, problem, or contrivance designed
for testing ingenuity"; concedes that this definition
"applies to Applicant's services" so that "PUZZLE" is
highly suggestive of applicant's services; and asserts that
Ser. No. 75/364,562
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"PUZZLE" is also highly suggestive of registrant's services
because "children's television typically involves a story
or game that is designed to test a child's skill" and
because the "puzzle piece" design in registrant's word and
design mark "obviously bears some relationship to the
registrant's services." Applicant concludes that,
notwithstanding that each mark includes "THE PUZZLE," the
inclusion of the terms "CLUB" and "PLACE" results in marks
that, considered in their entireties, look and sound
different and have different meanings.
The Examining Attorney asserts that applicant is
speculating in regard to the content of registrant's
productions and disagrees with applicant's conclusion that
"PUZZLE" is highly suggestive as used by registrant.4 The
Examining Attorney therefore asserts that "PUZZLE" is the
dominant term in each mark and that "CLUB" and "PLACE," as
used in connection with the respective services, have a
similar connotation, thereby yielding each complete mark a
similar look, sound and meaning.

4 Specifically, the Examining Attorney argues that applicant
engages in pure speculation by arguing that children's programs
necessarily involve tests of children's skill; and argues that
the design elements in registrant's design mark may be seen as
reinforcement for the literal portion of the mark and cannot be
assumed to be indicative of the content of registrant's
television series.
Ser. No. 75/364,562
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We take judicial notice of the following definitions
of "CLUB" and "PLACE", which are the most apt in this case:
club 3. a group of persons organized for a
social, literary, athletic, political, or other
purpose. 4. the building or rooms occupied by
such a group.
The Random House College Dictionary 255 (Rev. Ed.
1982).
place 3. the portion of space occupied by a
person or thing. 4. a space or spot set apart or
used for a particular purpose. 18. a building,
location, etc., set aside for a specific purpose.
The Random House College Dictionary 1013 (Rev.
Ed. 1982).
We note, too that applicant's specimens explain that
"THE PUZZLE CLUB" is "a trio of adventuresome children… who
together with their mentor, Tobias, solve mysteries…." The
specimens also explain that Tobias allows the children to
"use the attic above his store as their headquarters."
We agree with the Examining Attorney that applicant
engages in improper speculation regarding the content of
registrant's productions. We disagree, however, with the
Examining Attorney's argument that registrant must be
viewed as having adopted the puzzle piece design element
for its composite mark solely to reinforce the arbitrary
term "PUZZLE". We view the puzzle piece, and the term
"PUZZLE" in registrant's marks, as more likely suggestive
Ser. No. 75/364,562
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than arbitrary. Applicant concedes that "PUZZLE" is
"highly suggestive" of its own services.
We find it unnecessary, however, to choose between the
applicant's and the Examining Attorney's contrary views of
what term dominates the respective marks. We view
applicant's mark and registrant's typed mark, each
considered in its entirety, as being sufficiently
dissimilar in sound, appearance and connotation. "CLUB"
and "PLACE" look and sound different, and lend the
respective marks different connotations. We find that
prospective purchasers of applicant's services, whether for
production of animated television films, videos or CD-ROMs,
will perceive "CLUB" as referring to the group of children
identified in applicant's specimens.5 In contrast,
registrant's marks do not carry the connotation of a group
of persons with a common purpose; they carry the
connotation only of a particular place set aside for a
particular purpose.
In sum, though we find the services similar, the marks
have definite differences and the consumers of the services
are presumptively sophisticated, so that we find no
likelihood of confusion.

5 The specimens place no emphasis on the children's meeting room.
The focus is clearly on the children and their mentor, Tobias.
Ser. No. 75/364,562
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Decision: The refusals under Section 2(d) of the
Trademark Act are reversed.
T. J. Quinn
G. D. Hohein
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board