K. Fisher Enterprises Ltd.

Trademark Trial and Appeal Board

Jan 4, 2002

No. 75847625 (T.T.A.B. Jan. 4, 2002)

1/4/02 Paper No. 12
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re K. Fisher Enterprises Ltd.
________

Serial No. 75/847,625
_______

Ken Fisher for K. Fisher Enterprises Ltd.

Patricia A. Horrall, Trademark Examining Attorney, Law Office 106 (Mary
Sparrow, Managing Attorney).
_______

Before Walters, Wendel and Bottorff, Administrative Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

K. Fisher Enterprises Ltd. has filed an application to register the mark
SUPER QUIZ for “books containing quiz games; and syndicated newspaper
columns featuring quiz games” in Class 16.1[1]

1[1] Serial No. 75/847,625, filed November 8, 1999 under the
provisions of Section 2(f), claiming a first use date and first
use in commerce date of 1982. The application as filed also
included Class 9 goods. The Examining Attorney withdrew the
Section 2(d) refusal as to these goods and the Class 9 goods were
subsequently divided out into the child application, Serial No.
75/980,893.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Registration has been finally refused under Section 2(d) of the Trademark
Act on the ground of likelihood of confusion with the mark QUIZ, which is
registered for “magazines containing games and puzzles.”2[2] The refusal has
been appealed and applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
We make our determination of likelihood of confusion on the basis of
those of the du Pont3[3] factors that are relevant in view of the evidence of record.
Two key considerations in any analysis are the similarity or dissimilarity of the
respective marks and the similarity or dissimilarity of the goods or services with
which the marks are being used. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the respective marks, we are guided by the well-
established principle that although marks must be considered in their entireties,
there is nothing improper, under appropriate circumstances, in giving more or
less weight to a particular portion of a mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Here the dominant portion of
applicant’s mark is the term QUIZ, which comprises the whole of registrant’s

2[2] Registration No. 1,664,973, issued November 19, 1991 under
the provisions of Section 44(e) based on Spanish Registration No.
562,421. Section 8 (6 yr.) affidavit filed and accepted;
combined Section 8 (10 yr.) and Section 9 filed.
3[3] In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).

mark. The additional term SUPER is highly laudatory, with little source-
indicating significance. While the term SUPER leads to slight differences in
appearance and sound for the marks as a whole, the connotation is substantially
the same, i.e., that of the word “quiz.” SUPER might well be interpreted to refer
to an expanded or top of the line version of the QUIZ goods. The overall
commercial impressions created by the two marks are very similar.
Although applicant has pointed to third-party marks registered in Class
16 which also contain the term QUIZ,4[4] we note that all of these marks contain
other terms, such as KIDS QUIZ or QUIZTRONICS, which serve to distinguish
them from QUIZ. None is as similar in commercial impression as SUPER QUIZ
is to QUIZ. Furthermore, while QUIZ is clearly not a strong mark when used in
connection with goods such as registrant’s game and puzzle magazines, even a
weak mark is entitled to protection against registration of a mark very similar to
QUIZ for goods which would reasonably be assumed to emanate from registrant.
See In re Textron Inc., 180 USPQ341 (TTAB 1973): OPTOmechanisms Inc. v.
Optoelectronis, Inc., 175 USPQ 246 (TTAB 1972).
Applicant’s argument that registrant’s mark is generic when used with its
product is in effect a collateral attack on the validity of the registration and as
such cannot be entertained in this ex parte proceeding. See In re Calgon Corp.,

4[4] Although applicant failed to submit copies of the third-party
registrations, as is the proper means for introducing the same,
the Examining Attorney has taken the registrations into
consideration. Accordingly, we have done the same.

435 F.2d 596, 168 USPQ 278 (CCPA 1971). Applicant’s only recourse would have
been to institute a cancellation proceeding against the registration on this basis.
Turning to the goods involved, we note that as a general principle, the
issue of likelihood of confusion must be determined on the basis of the goods as
identified in the application and the cited registration. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
It is not necessary that the goods of registrant and applicant be similar or even
competitive to support a holding of likelihood of confusion. It is sufficient if the
respective goods are related in some manner and/or that the conditions
surrounding their marketing are such that they would be encountered by the
same persons under circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that they emanate, or are
associated with, the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993) and the cases cited therein. If there are no restrictions in the
application or registration(s) as to channels of trade, the parties’ goods must be
assumed to travel in all the normal channels of trade for goods of this nature.
See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992).
We find applicant’s books containing quiz games and syndicated
newspaper columns featuring quiz games to be closely related to registrant’s
magazines containing games and puzzles. Applicant’s arguments that
registrant’s magazines are published only in Spanish and directed to the
Hispanic community are to no avail. There are no restrictions in the identification
of the goods in either application or registration as to language or class of
purchasers, and thus we must assume that the goods of both would travel in the
same channels of trade and would be encountered by the same persons. The
respective goods must be viewed simply as books and newspaper columns
featuring quiz games and magazines containing games and puzzles. All are
printed publications which might well emanate from the same source; “games”
would encompass quiz games such as applicant’s. We find it highly reasonable
for purchasers familiar with registrant’s QUIZ magazines containing games to
assume that applicant’s SUPER QUIZ books and newspaper columns are simply
an expansion by registrant into other closely related forms of printed
publications.
The other factor which applicant raises is the absence of any indication of
actual confusion despite applicant’s use of its mark since 1982. We can give little
weight to this claim, however, under the present circumstances. In the first
place, registrant has not had the opportunity to be heard from on this point. See
In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984). Second,
there is no evidence of record as to the extent to which either applicant or
registrant has used its mark and thus the question arises whether there has been
any real opportunity for confusion. See Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768 (TTAB 1992). In any event, the issue is not actual confusion, but
rather likelihood of confusion.
Accordingly, on the basis of the similarity of the commercial impressions
created by applicant’s mark SUPER QUIZ and registrant’s mark QUIZ and the
close relationship of the printed publications of applicant and registrant, we find
that confusion is likely.
Decision: The refusal to register under Section 2(d) is affirmed.