J.G. Julian Toys, LLC

Trademark Trial and Appeal Board

Jun 25, 2008

No. 78916820 (T.T.A.B. Jun. 25, 2008)

Mailed:
6/25/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re J.G. Julian Toys, LLC
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Serial No. 78916820
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David G. Oberdick, of Meyer, Unkovic & Scott LLP for J.G.
Julian Toys, LLC.

Jay C. Besch, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
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Before Holtzman, Rogers, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:
J.G. Julian Toys, LLC filed an application to register
the mark WILDCARD BASEBALL, in standard character format,
for “Non-electronic baseball-themed board games, namely,
non-electronic board gaines [sic] for simulating baseball
game play and tracking statistics for baseball game play;
equipment sold as a unit for playing non-electronic
baseball-themed board games, specifically excluding,
computer game software, video game software, trading cards,
liquid crystal display game machines, hand-held game
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78916820
2
apparatus with liquid crystal displays, dolls and on-line
games” in International Class 28.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles
the WILD CARD mark in the cited registration2 that, when
used in connection with the identified goods, it will be
likely to cause confusion. The WILD CARD mark is
registered for:

Computer game software; electronic publications, namely
magazines in the field of computer games downloadable from
computer networks; computer game software downloadable from
computer networks; video game software for home use
downloadable from computer networks; video game software
for home use, in International Class 9;
Magazines in the field of computer games and video games;
video game strategy guidebooks; stationery; photographs;
photograph stands; trading cards, in International Class
16;
LCD game machines; hand-held game apparatus with liquid
crystal displays; dolls, in International Class 28; and
Providing on-line games via computer networks; providing
information relating to computer games via computer
networks, in International Class 41.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney

1 Application Serial No. 78916820, filed June 26, 2006, pursuant
to Section 1(b) of the Trademark Act, 15 USC §1051(b), alleging a
bona fide intent to use the mark in commerce. Applicant has
disclaimed the exclusive right to use “BASEBALL” apart from the
mark as shown.
2 Registration No. 2703748, issued April 18, 2003, based on
Section 44(e) of the Trademark Act, and claiming a priority date
of January 26, 2001.
Serial No. 78916820
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filed briefs. For the reasons discussed herein, the Board
affirms the final refusal to register.
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities and/or dissimilarities
between the marks and the similarities and/or
dissimilarities between the goods. See Federated Foods,
Inc. v. Fort Howard 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”). We consider each of the factors as to which
applicant or the examining attorney presented arguments or
evidence.

The similarity or dissimilarity of the marks
in their entireties
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Applicant states in its brief
that it “does not contest the examiner’s conclusion” that
Serial No. 78916820
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the marks are “visually similar,” adding that “[i]ndeed,
the two marks are nearly identical.”
Although we compare the marks in their entireties, we
note that WILDCARD is the dominant term in both applicant’s
mark and the registered mark. Applicant has disclaimed the
only other word in its mark, BASEBALL. Descriptive and
disclaimed matter is generally viewed as a less dominant or
significant feature of a mark. In re National Data Corp.,
753 F.2d 1956, 224 USPQ 749 (Fed. Cir. 1985) (“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’”).
Although the registered mark includes a space between WILD
and CARD while applicant’s mark does not, we find that
consumers are not likely to notice that minor distinction.
When spoken, the first two syllables of applicant’s mark
are identical to the entire mark in the cited registration.
Accordingly, the dominant portions of the marks look nearly
identical, sound the same, and are likely to have the same
commercial impression.
In view of the foregoing, the first du Pont factor
weighs in favor of finding that there is a likelihood of
consumer confusion.

The similarity or dissimilarity and nature of the goods
and channels of trade
Applicant argues that goods are different, and that
they will travel in different channels of trade. In
Serial No. 78916820
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particular, applicant argues that it seeks to register its
mark for board games and related equipment whereas the
cited registration covers online and electronic games
(among other goods). However, the examining attorney
offered evidence of websites featuring advertisements for
electronic versions of popular board games. The examining
attorney additionally offered evidence of third-party
registrations covering both board games and electronic or
online games (or other goods included in the cited
registration) in the same registration.
We consider the evidence offered by the examining
attorney to be probative of a close relationship between
applicant’s goods and those of registrant. Although third-
party registrations are not evidence of use, they do serve
to indicate the likelihood that consumers may expect the
goods to derive from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993). Furthermore, our
precedent dictates that the greater the degree of
similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between their respective goods necessary to support a
finding of likelihood of confusion. In re Opus One, Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001).3 The crux of the du Pont

3 Applicant argues that the “zone of expansion” doctrine is
inapposite. Applicant’s argument is moot since the examining
attorney did not rely on it. In any event, such argument would
not be well taken in an ex parte context. In re 1st USA Realty
Professionals, Inc., 84 USPQ2d 1581, 1584 (TTAB 2007).
Serial No. 78916820
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analysis on the relatedness of the goods is that the use of
nearly identical marks on products that may be
complementary or competitive, as here, will likely lead
consumers to the assumption that there is a common source.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1689 (Fed. Cir. 1993).
Similarly, our analysis of the channels of trade and
classes of consumers must be based on the identifications
in the registration and application at issue. In the
absence of specific limitations in either the registration
and/or the application, we must presume that the goods at
issue will travel in all normal and usual channels of trade
and methods of distribution and be sold to all classes of
consumers, which in this case may overlap. Squirtco v.
Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983). Applicant argues that board games are sold via
different channels of trade than electronic and online
games. However, applicant has not submitted any evidence
to support that argument, whereas the examining attorney
has presented evidence via web printouts to show that
electronic and online games may be sold through the same
channels as board games.
In view of the foregoing, the second and third du Pont
factors weigh in favor of finding a likelihood of consumer
confusion.
Serial No. 78916820
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Balancing The Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the marks
are nearly identical; the goods are related, and they are
likely to be sold through the same channels of trade.
Furthermore, it is well-established that any doubts as to
likelihood of confusion are to be resolved in favor of the
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly, we find
a likelihood of confusion between applicant’s mark and the
registered mark when applied to the respective goods.
Decision: The refusal to register is affirmed.