Kabushiki Kaisha NKB

Trademark Trial and Appeal Board

Jul 20, 2001

No. 75620087 (T.T.A.B. Jul. 20, 2001)

07/20/01

Paper No. 9
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kabushiki Kaisha NKB
________

Serial No. 75/620,087
_______

Howard N. Aronson of Lackenbach Siegel for Kabushiki Kaisha
NKB.

D. Beryl Gardner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______

Before Hairston, Rogers and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An intent-to-use application has been filed by
Kabushiki Kaisha NKB to register the mark PANDA NET (“NET”
is disclaimed) for “entertainment services, namely,
providing an on-line computer game for virtual play of the
game ‘Go’.” 1
Registration has been refused by the Trademark
Examining Attorney pursuant to Section 2(d) of the

1 Serial No. 75/620,087 filed January 13, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/620,087
2
Trademark Act, 15 U.S.C. 1052(d), on the ground that the
use of applicant’s mark for the identified services would
be likely to cause confusion with the registered mark PANDA
BYTE (“BYTE” is disclaimed) for “computer game programs
[and] game software.”2
Applicant has appealed. This case has been fully
briefed, but no oral hearing was requested. We affirm the
refusal of registration.
Our determination is based on analysis of all of the
probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the respective goods and services, it
is well settled that in determining likelihood of confusion
in a proceeding such as this, goods and/or services need
not be identical or even competitive in order to find
confusion likely. All that is necessary is that the goods

2 Registration No. 2,245,132 issued May 11, 1999. Although the
registration also covers audio and video storage materials, the
refusal to register is based on a likelihood of confusion with
the above specified goods.
Ser No. 75/620,087
3
and/or services be related in some manner or that the
marketing conditions are such that they would be
encountered by the same purchasers under circumstances that
would give rise, because of the marks, to the mistaken
belief that the goods and/or services originate or are
somehow associated with the same source. Chemical New York
Corp. v Conmar Form Systems, Inc., 1 USPQ2d 1139 (TTAB
1986).
Applicant argues that its services of providing an on-
line computer game are dissimilar to the registrant’s audio
and video storage materials. However, it appears that
applicant has completely overlooked the fact that the
refusal to register is based, not on the audio and video
storage materials in the cited registration, but rather on
the computer game programs and game software. As the
Examining Attorney points out, both applicant’s services of
providing an on-line game and registrant’s computer game
programs and game software are in the nature of games.
Also, registrant’s goods, as identified in the
registration, are not restricted to particular games, and
in the absence of such restrictions, we must presume that
registrant’s computer game programs and game software
include those for playing the game “GO.” We would add that
the services of providing an on-line game and computer game
Ser No. 75/620,087
4
programs and game software are purchased or used by the
same class of individuals, i.e., game players. Thus, we
find that applicant’s services and registrant’s goods are
sufficiently related, that if sold under the same or
similar marks, purchasers or users are likely to be
confused. We should note that, in support of her
contention that the involved goods and services are
related, the Examining Attorney made of record several
third-party registrations. Two of the registrations are
for marks which cover on-line games, on the one hand, and
computer game software, on the other hand, and a third
registration is for a mark which covers computer software
for use in downloading an on-line game. Such
registrations, although few in number, confirm our finding
with respect to the relatedness of the goods and services.
Turning next to a consideration of the marks PANDA NET
and PANDA BYTE, we find that when considered in their
entireties, they are substantially similar in commercial
impression. In considering the marks, we recognize that
the disclaimed portion of each mark cannot be ignored.
Giant Food, Inc. v. National Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983). However, there is
nothing improper in giving more weight, for rational
reasons, to a particular feature of a mark. Here, we have
Ser No. 75/620,087
5
given more weight to the PANDA portion of both applicant’s
and registrant’s marks because of the descriptive nature of
the remaining terms in the marks, i.e., NET and BYTE. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Not only are customers most likely to remember
the PANDA portion of the marks, but they may not even
notice that the marks differ in their ending portions,
given that both BYTE and NET have computer connotations.
In finding that the marks are substantially similar, we
have kept in mind the normal fallibility of human memory
over time and the fact that the average consumer retains a
general, rather than a specific impression of trademarks
encountered in the marketplace. In reaching our decision
herein, we have not overlooked applicant’s argument that
marks containing the word PANDA are weak marks which are
therefore entitled to a limited scope of protection.
However, a close examination of the third-party
registrations on which applicant bases its position reveals
that they do not support such a conclusion. All of the
third-party registrations are for goods which are very
different from the goods and services at issue herein. For
example, the mark PANDA is registered to one entity for
electronic air purification equipment and to another entity
for electronic signal processing circuits.
Ser No. 75/620,087
6
Finally, applicant argues that the Office has taken an
“inconsistent” position with respect to this application
vis-a-vis applicant’s applications to register the marks
PANDA EGG for “computer software for virtual play of the
game “GO” via on-line communication computer network” and
IGS-PANDA for “providing games via on-line communication
computer network.” According to applicant, neither of
these applications has been refused registration based on
the cited mark.
While uniform treatment under the Act is a goal, our
task in this appeal is to determine, based on the record
before us, whether there is a likelihood of confusion
between applicant’s mark and the cited mark. As often
noted by the Board, we must decide each case on its own set
of facts and record. See In re Consolidated Foods Corp.,
200 USPQ 477 (TTAB 1978). In this case, the involved marks
consist of the identical arbitrary word PANDA followed by a
disclaimed term which connotes computers and the marks are
or may be used for presumptively similar computer games.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.