Mattel, Inc.v.Patricia Briden

Trademark Trial and Appeal Board

Jan 30, 2008

No. 91160087 (T.T.A.B. Jan. 30, 2008)

Hearing: Mailed:
July 18, 2007 January 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mattel, Inc.

v.

Patricia Briden
_____

Opposition No. 91160087
to application Serial No. 78223428
filed on March 10, 2003
_____

Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for
Mattel, Inc.

William G. Sykes for Patricia Briden.
______

Before Seeherman, Drost and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mattel, Inc. has opposed, on the ground of likelihood
of confusion, the application of Patricia G. Briden to
register SOCK-UM as a trademark for a “game where a labeled
mat is placed on the ground or floor, participants position
themselves on the mat and volley a sock back and forth from
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91160087
2
one half of the mat to the other half of the mat.”1 Opposer
has alleged that ROCK’EM SOCK’EM robots were created by a
predecessor-in-interest in 1966; that opposer first used the
mark ROCK’EM SOCK’EM robots in 1966, prior to the filing
date of applicant’s application; that opposer owns
Registration No. 1476968 for ROCK’EM SOCK’EM ROBOTS for
mechanical toy figures and Application Serial No. 75735063
for ROCK’EM SOCK’EM for various goods, including games; and
that opposer and its predecessors have promoted the
trademarks ROCK’EM SOCK’EM ROBOTS and ROCK’EM SOCK’EM, and
the marks and associated products have become famous.
Applicant has denied the salient allegations of the notice
of opposition in her answer.
The record includes the pleadings; the file of the
opposed application; the testimony, with exhibits, of
opposer’s witnesses Monica Danner, a paralegal at opposer’s
law firm, and Sheila Hancock, opposer’s senior brand manager
for ROCK’EM SOCK’EM products marketing. Opposer also
submitted, under notice of reliance, applicant’s responses
to opposer’s discovery requests;2 printed publications, and

1 Application Serial No. 78223428, filed March 10, 2003, based
on a claimed bona fide intention to use the mark in commerce.
2 Opposer’s submissions include certain documents produced by
applicant in response to opposer’s request for production.
Although documents produced in response to such a discovery
request normally cannot be made of record by notice of reliance,
see Trademark Rule 2.120(j)(3)(ii), applicant has admitted the
authenticity of such documents, and that they are admissible in
this proceeding. Accordingly, Exhibits 155-159 to the notice of
reliance are of record.
Opposition No. 91160087
3
registrations owned by opposer, as shown by the status and
title copies thereof, for ROCK’EM SOCK’EM ROBOTS, with
ROBOTS disclaimed, for mechanical toy figures3; and for
computer game cartridges, CD-Roms, software, programs [sic],
discs; video game cartridges; interactive video game
programs; interactive multimedia computer game programs
(Class 9); writing instruments (Class 16); pajamas; sweat
pants; pants (Class 25); toy action figures and accessories
therefor; collectible toy figures; action games; board
games; parlor games; role-playing games and equipment
therefor (Class 28); and on-line entertainment services in
the nature of web sites featuring games, activities and
projects for adults and children.4 The latter registration
was not pleaded in the notice of opposition, but because
opposer made it of record during its testimony period, and
applicant has not objected thereto, we deem the pleadings to
be amended pursuant to Fed. R. Civ. P. 15(b) to include it
as part of opposer’s claim of likelihood of confusion.
Opposer also made of record its registration for ROCK’EM
SOCK’EM for computer game cartridges, CD-Roms, software,
programs, [sic] discs, video game cartridges, interactive

3 Registration No. 1476968, issued February 16, 1988; Section 8
& 15 affidavits accepted and acknowledged.
4 Registration No. 2838907, issued May 4, 2004. The
registration originally included additional goods and services in
each of the classes, but they were subsequently deleted by an
amendment pursuant to Section 7 of the Trademark Act.

Opposition No. 91160087
4
video game programs (Class 9); pens, writing instruments
(Class 16); pajamas, pants (Class 25); toy action figures
and accessories therefor, collectible toy figures, action
games, board games, parlor games, role-playing games (Class
28); and on-line entertainment services in the nature of web
sites featuring games, activities and projects for adults
and children (Class 41).5 This registration issued from
Application Serial No. 75735063, which was pleaded in the
notice of opposition; it issued after the notice of
opposition was filed, and we deem the pleadings to be
amended to include this registration.
Applicant has submitted, under a notice of reliance,
seven photographs. These photographs do not constitute
printed publications or official records or any other
document that can be submitted under a notice of reliance.
See Trademark Rules 2.120(j), 2.122(e). However, opposer
has treated Exhibits 1 through 5 as being of record, and we
therefore deem them to have been stipulated into the record.
Exhibits 6 and 7, to which opposer has objected, have not
been considered.

5 Registration No. 2889396, issued September 28, 2004. The
registration originally included additional goods and services in
each of the classes, but they were subsequently deleted by an
amendment pursuant to Section 7 of the Trademark Act.

Opposition No. 91160087
5
The appeal has been fully briefed and, although both
parties requested an oral hearing before the Board, only
opposer appeared at it.
Before reaching the substantive issues in this
proceeding, there are some preliminary matters that we must
discuss. Opposer submitted, with its notice of reliance,
printouts from certain Internet websites. Exhibits 4-6.
Internet websites are not self-authenticating, and therefore
cannot be treated as printed publications under Trademark
Rule 2.122(e). Raccioppi v. Apogee Inc., 47 USPQ2d 1368
(TTAB 1998). Consequently, these exhibits have not been
considered. We also point out that newspaper and magazine
articles, which were submitted under opposer’s notice of
reliance, and which are properly of record, cannot be used
as proof of the statements made in the articles, as that
would constitute hearsay. However, they are evidence that
the public has been exposed to the articles, and may be
evidence of the author’s belief that the public will
understand a reference to, for example, ROCK’EM SOCK’EM
ROBOTS, and we have considered them for this purpose. For
this reason, though, we have given no probative value to
those articles appearing in foreign newspapers, since we
have no information as to whether they had any circulation
in the United States, nor can we say they reflect the
Opposition No. 91160087
6
author’s view of how consumers in the United States would
understand a term.
We note that in its brief opposer has argued the ground
of dilution. However, this ground was not pleaded in the
notice of opposition. Nor can we find that this ground was
actually tried, and therefore we cannot treat the pleadings
to have been amended pursuant to Rule 15(b) of the Federal
Rules of Civil Procedure. Because fame is a factor in the
likelihood of confusion analysis, see In re E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the
evidence regarding the fame of opposer’s mark which was
submitted at trial could have been viewed by applicant as
relating to the ground of likelihood of confusion, rather
than the ground of dilution. Accordingly, we have given
opposer’s arguments regarding the ground of dilution no
consideration.
In addition, in its brief opposer has argued that it
has “a family of marks including the terms “SOCK’EM,” and
that “part of the surname of Mattel’s family of marks is
SOCK’EM.” p. 22. Opposer did not plead a family of marks
in its notice of opposition, nor do find that this claim was
tried. Accordingly, this claim has not been considered.
The record shows that the mark ROCK’EM SOCK’EM ROBOTS
was first adopted at least as early as 1967 for a tabletop
game in which two plastic robots controlled by thumb levers
Opposition No. 91160087
7
fight each other in a boxing ring format. There is some
discrepancy as to when the game, using this mark, was first
introduced. In its notice of opposition opposer alleged a
first use date of 1966 for the mark; a Wikipedia article
submitted by opposer gives a date of 1967 (exhibit 54 to
Danner deposition). Registration No. 1476968 for ROCK’EM
SOCK’EM ROBOTS lists a first use date of 1987. Ms. Hancock
stated at her deposition that this date was incorrect, and
that the mark was first used in 1964. However, a claim of
an earlier date of first use than that provided in an
application or registration must be supported by clear and
convincing evidence, and opposer provided no documentary
evidence, only Ms. Hancock’s statement that this 1987 date
was incorrect. Since Ms. Hancock started working for
opposer in approximately 2000 or 2001, she had no personal
knowledge of the date of first use, and was relying on
business records for her information. In these
circumstances, we see no reason why she did not provide a
copy of such records to support this earlier date.
Therefore, we do not accept Ms. Hancock’s testimony that the
mark was used as of 1964. However, viewing the totality of
the evidence, we find that the mark was in use at least as
early as 1967.
The ROCK’EM SOCK’EM ROBOTS tabletop game was introduced
by Louis Marx and Company. Through a series of transfers
Opposition No. 91160087
8
opposer became the owner of the mark in 1997, when Mattel
bought Tyco Industries, which had previously acquired the
mark. The testimony indicates that the mark ROCK’EM SOCK’EM
ROBOTS continued to be used for the tabletop game from the
time of its introduction into the market until 1997, and
that, in 1995 and 1996, Tyco also offered a smaller travel
size version. After opposer acquired the assets, there was
a four year hiatus, and then opposer reintroduced the
ROCK’EM SOCK’EM ROBOTS table game in 2001, with a more retro
look going back to the original product. At the same time
opposer introduced a hand-held version and a line of action
figures based on the robots in the game.
Since taking over the brand, opposer has also licensed
the mark for items such as key chains, pens, an electronic
Sony Playstation game, a travel version of the game, a
bobbing head doll, and clothing such as pajamas. At the
time Ms. Hancock’s testimony was taken, September 29, 2005,
opposer was selling only the table game and, through a
licensee, key chains.
The games are sold nationally in mass channels,
department stores, gift stores and on-line. Such stores
include Wal-Mart, Toys ’R Us, J.C. Penney’s, Kohl’s and
Hallmark; on-line retailers include eToys.com. Etoys.com
also sells items through mail order. The suggested retail
price is $14.99, although some retailers may sell the game
Opposition No. 91160087
9
for $19.99, the next price point level. Opposer’s sales
information has been submitted under seal; we will discuss
it, as far as possible, in our consideration of the factor
of the fame of the mark. The target users of the game are
boys ages 6-9, and the games are purchased by their mothers,
although fathers and grandparents also buy them. In
addition, there is a “collectible” market, involving both
the original game made by Louis Marx and Company, action
figures, and the licensed items that are no longer being
sold.
With respect to advertising, in 2001, in conjunction
with the introduction of its action figures, opposer did
three versions of a television commercial which was run
nationally. No further television commercials have been
run; opposer considers them unnecessary because it claims
that consumers do not have to be reminded about the brand on
television. Opposer participates in co-op advertising with
various retailers, who reference opposer’s ROCK’EM SOCK’EM
game in in-store and Sunday newspaper circulars. Opposer
exhibits the game at six to eight trade shows a year; these
include the two toy fairs that opposer itself puts on.
Opposer also advertises the game in its catalogs; in
addition, catalogs from 1988 through 1996 that were
distributed by Tyco, opposer’s predecessor-in-interest,
Opposition No. 91160087
10
showed the game. See exhibits 20 through 34 to Hancock
deposition.
The ROCK’EM SOCK’EM ROBOTS game and/or mark has also
received mentions in magazine, newspaper and website
articles. For example, opposer furnished the table game for
the celebrity tent at the 2005 Nickelodeon Kids Choice
awards, and a photograph, with caption, showing Jamie Foxx
playing the game appeared in “People” magazine. Opposer
also provided a special edition gold-plated ROCK’EM SOCK’EM
ROBOTS game to be auctioned off at the Dream Halloween event
to support Children Affected by AIDS.6 The original
commercial for ROCK’EM SOCK’EM ROBOTS which was produced by
Louis Marx and Company has been licensed to Comedy Central,
and a few seconds of that commercial appeared on that
network’s Battlebots program, as part of a segment on the
history of toy robots.
Opposer has received many requests for product
placement of the game, for use as a prop on the set of
television shows or movies. These programs include
“Seinfeld,” “That 70’s Show” and “Roswell.” In addition,
the robots in the game were used as characters in the film
“Charlie and the Chocolate Factory,” and were animated
characters in the film “Toy Story.”

6 Opposer’s witness did not indicate the date, but from the
totality of the evidence it appears that it occurred some time
between 2001 and 2004.
Opposition No. 91160087
11
Applicant’s evidence which is properly of record,
through opposer’s treating it of record, consists only of
her game and its packaging and instructions. (Although
applicant included argument in her notice of reliance, such
argument is not evidence of the nature of the game or how
the mark would be perceived.) Therefore, the information we
have about applicant and her activities comes from the
discovery that opposer has made of record. Essentially
applicant intends to use her mark on a game that is directed
to children. It is described as indicated in the
identification of goods--a game where a labeled mat is
placed on the ground or floor, participants position
themselves on the mat and volley a sock back and forth from
one half of the mat to the other half of the mat. Applicant
has not made any sales nor has she identified potential
channels of trade for the goods, except to say that she
intends that the goods will be sold at retail throughout the
United States. Her intention is to license the product to a
toy company.
Opposer has demonstrated its standing by its
registrations for ROCK’EM SOCK’EM ROBOTS and ROCK’EM
SOCK’EM, as well as by the testimony showing its use of
these marks. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Opposition No. 91160087
12
Because of opposer’s registrations, priority is not in
issue. King Candy Company v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
This brings us to the pleaded ground for opposition--
likelihood of confusion. Our determination of this issue is
based on an 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., supra. See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
Opposer has asserted that its mark is famous, and
therefore we turn first to a consideration of the factor of
fame, because this factor plays a dominant role in cases
featuring a famous or strong mark. Kenner Parker Toys Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). We point out that we are concerned with
the fame of the mark ROCK’EM SOCK’EM ROBOTS,7 not whether
the actual game would be recognized because of its product
configuration or trade dress. Thus, the fact that the table
game has been used as a prop in the set designs of various
television shows or motion pictures is not evidence that
viewers have been exposed to the trademark. We do not have

7 Although in its brief opposer has characterized its marks as
the ROCK’EM SOCK’EM marks, we have no evidence about use of
ROCK’EM SOCK’EM per se that would demonstrate it is a famous
mark.

Opposition No. 91160087
13
either video or still shots of the game in these product
placements from which we can ascertain that the viewer would
be able to see the word mark on it. For the same reason,
the fact that there have been movies with actors or animated
characters that look like the robot figures, or there have
been retail displays of such figures, is not evidence of
fame of the word mark.
Normally we look to the volume of sales and advertising
expenditures for the goods and services sold under the mark,
and by the length of time those indicia of commercial
awareness have been evident, in order to measure the fame of
a mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Here, the
evidence shows that opposer’s mark ROCK’EM SOCK’EM ROBOTS
has been used for a considerable time--from at least 1967
until 1997, and again from 2001 to the date opposer
presented its evidence in 2005. However, we have no
information as to the extent of sales and advertising for
virtually all of this period. We have sales figures only
for the years 1995 through 1997, when the mark was owned by
Tyco, and from 2001 through 2005, after opposer reintroduced
the game. These figures are not sufficient for us to
conclude that the mark is famous. We are hampered in our
discussion of both the sales and advertising figures by the
fact that they have been submitted under seal, and we do not
Opposition No. 91160087
14
wish to divulge confidential information. Thus, we can say
only that while there have been sales, and that since
opposer has taken over the brand the sales have increased
dramatically, they are not in the same range for other marks
that have been found to be famous. Compare Kenner Parker
Toys Inc. v. Rose Art Industries Inc., supra at 22 USPQ2d
1453, 1455, in which the Court noted that, for another toy
product, sales in a single year exceeded $30 million, and
PLAY-DOH toys comprised 60-70% of the modeling compound
market. As for that company’s advertising expenditures, the
Court pointed out that the trademark owner spent over $2
million that year in advertising and promotion for products
with the PLAY-DOH mark. In this case, on the other hand, we
have no information about advertising and promotion
expenditures during the time opposer’s predecessors owned
the mark. Opposer’s own expenditures between 2001 and 2005
were quite low, particularly when one considers that these
figures include advertising for all of opposer’s “classic”
games. And these advertising expenditures were primarily
for cooperative advertising done by retailers as in-store
and Sunday newspaper circulars. Opposer ran nationally
televised commercials only in 2001 to introduce its ROCK’EM
SOCK’EM ROBOTS action figures, and because we have no
information about how frequently the commercials were run we
cannot gauge public exposure to them.
Opposition No. 91160087
15
Opposer has made of record approximately 140 newspaper
and magazine articles dated between 1991 and 2005 that were
retrieved from a NEXIS database search. Some of these
articles were retrieved from foreign publications or wire
services, so we cannot determine what exposure consumers in
the United States may have had to them. Others appear to be
from trade magazines, and again we cannot determine whether
the general public would have exposure to them. Still other
exhibits are merely duplicate copies of a single article.
However, even if we do not consider these articles, or give
them limited probative value, there are still a substantial
number of articles from U.S. newspapers that were made of
record.
Although the search conducted by opposer retrieved a
substantial number of articles which refer to ROCK’EM
SOCK’EM ROBOTS, the mentions are merely passing references
or asides, and are not likely to be particularly noticed or
remarked on by readers of the articles. See, for example,
Exhibit 65, an article in the April 1, 2004 “Los Angeles
Times” about vintage t-shirts and those who buy them, and
which includes a sentence, at the very end of the three-page
article, referring to someone who wore vintage t-shirts in
his 20s but later gave them all away: “he kept only one as a
memento, a baby-soft, worn-out relic with an image of
Rock’em, Sock’em Robots on the chest.”
Opposition No. 91160087
16
Some of the articles, although not specifically about
opposer’s game, mention ROCK’EM SOCK’EM ROBOTS as a game
that people played in their youths. For example, Exhibit 98
is an article in the June 2, 2002 “Times-Picayune” (New
Orleans) about Preservation Hall jazz hall, and the
reminiscences of the manager of the hall about the musicians
that played there. He is reported as saying that his
earliest memories go back to Billie and DeeDee Pierce, and
that at their house one Christmas they gave him and his
brother “a boxing game, the Rock ’em Sock ’em Robots, two
plastic figures that punched each other.” Exhibit 109, a
December 25 2001 article in the “New York Post” about
various celebrities’ Christmas memories, states that rap
mogul Russell Simmons said that his brother, Run of Run DMC,
gave him a Rock ’em Sock ’em Robot set, and they played with
it every day for three years.
Other articles mention the ROCK’EM SOCK’EM ROBOTS as a
game from the past. For example, Exhibit 10, an article in
the June 24, 2005 “Seattle Times” about the Subaru B9
Tribeca SUV describes the B as standing for the boxer
engine, “where facing cylinders seem to punch each other
like the old Rock ‘em Sock ‘em Robots child’s boxing toy.”
Exhibit 11, an article from the June 2, 2005 “San Gabriel
Valley Tribune” (CA) about a classic toy store mentions
“Rock em Sock em Robots that harken back to the 1960s.”
Opposition No. 91160087
17
These articles indicate that the ROCK’EM SOCK’EM ROBOTS
game and mark have recognition for those who played the game
in the past, but do not show that the mark is famous today.
Simply put, people who have childhood memories of the game
may remember the mark, and may buy the game for their own
children as a result, but the evidence of how many of these
adults played the game as a child is limited, since opposer
has not made of record the sales figures for the game during
those years. Current sales of ROCK’EM SOCK’EM ROBOTS
products are presumably based on the nostalgia factor, with
adults who knew the game now buying the products for the
next generation. As we previously noted, Ms. Hancock stated
that opposer has not done any television advertising for the
game because the game is so well known that consumers do not
have to be reminded about it on television. test., p. 67.
The logical result of this, however, is that today’s
children do not themselves request the game because it has
not been promoted to them. Nor can we conclude from the
current sales figures that most parents are aware of the
game.
As we have stated in previous decisions, in view of the
extreme deference that is accorded to a famous mark in terms
of the wide latitude of legal protection it receives, and
the dominant role fame plays in the likelihood of confusion
analysis, we think that it is the duty of a plaintiff
Opposition No. 91160087
18
asserting that its mark is famous to clearly prove it. Blue
Man Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005).
We find that opposer has failed to do so on this record.
However, while the evidence falls short of proving that
ROCK’EM SOCK’EM ROBOTS is a famous mark as that concept has
been interpreted under the case law on the issue of
likelihood of confusion, the evidence is sufficient to show
that ROCK’EM SOCK’EM ROBOTS is a strong mark. Although
“sock” has a slang meaning of “to hit or strike forcefully,
punch,”8 and “robots” is descriptive of the figures in the
game, the entire phrase must be considered not only
distinctive, but in view of the length of use and other
evidence, a strong mark that is deserving of a broader scope
of protection.9 In this connection, although we have found
the sales figures not to reach the level that we normally
expect for a mark to be considered famous, the sales are
sufficient to demonstrate the strength of the mark.

8 The American Heritage Dictionary, 2d Coll. ed., © 1985.
Opposer submitted this definition with its brief. The Board may
take judicial notice of dictionary definitions. University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
9 During the oral hearing opposer’s counsel was asked whether
the phrase “rock’em sock’em” had a vernacular meaning. She
responded that the use of this term derived from opposer’s mark.
There is nothing in the record to show such a derivation, but
more importantly, we cannot conclude from the evidence in the
record that “rock’em sock’em” has a vernacular meaning. For
example, there is no dictionary evidence to show that this is a
recognized term.
Opposition No. 91160087
19
Moreover, the only evidence of third-party use consists
of applicant’s second amended answers to opposer’s
interrogatories, in which applicant lists certain third-
party uses of “ROCK’EM or SOCK’EM or the phonetic equivalent
of either, upon which Applicant intends to rely in this
case.” Interrogatory No. 31. Applicant listed, in
response, ROCK’EM SOCK’EM HOCKEY, which she states to be a
video about hockey; SOC ’EM (no indication of goods or
services); SOCK’EM BOPPERS for “an inflatable toy in the
nature of hand covers”; BLOCKEM-SOCKEM PADDLE BAT for a
paddle ball game; SOCK’EM for clothing clips and stocking
clips; and SOCKEM DOG for cafe and bar services.10
Applicant did not know the number of units sold or income
generated for the goods and services, nor the geographic
location of the sales or advertising. We cannot conclude
from this information, or the lack of it, whether there has
been actual use or, if so, significant exposure to such use,
which would cause consumers to differentiate among various
marks containing the element SOCK or variations thereof
based on other portions of such marks.11 Accordingly, we

10 We recognize the irony that it was opposer that submitted
evidence potentially damaging to its case because it chose to
make of record all of applicant’s discovery responses.
11 Opposer has also presented evidence that it has taken action
against third-party users of various marks with the term SOCK in
it, including those listed by applicant in her response to the
interrogatory. This testimony and related exhibits were part of
the testimony deposition that was submitted under seal, although
it appears from some of the statements made by opposer’s attorney
during the deposition that not all of this portion of the
Opposition No. 91160087
20
find that the factor of the strength of the mark ROCK’EM
SOCK’EM ROBOTS favors opposer, although not to the extent
that it would if the mark were a famous mark. In addition,
the du Pont factor of third-party use favors opposer.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). Therefore, we now turn to the du Pont factor of the
similarity of the goods.
Two of the registrations opposer has made of record are
for ROCK’EM SOCK’EM ROBOTS and ROCK’EM SOCK’EM, both for,
inter alia, toy action figures, collectible toy figures,
action games, board games, parlor games and role-playing
games. Applicant’s goods are identified as a “game where a
labeled mat is placed on the ground or floor, participants

testimony was meant to be confidential. However, because it is
not clear to us what parts are confidential and what parts are
not, we will say only that opposer took prior action against some
of the third parties that resulted in their ceasing use of the
marks. Opposer has also written cease and desist letters to
other third parties using marks which opposer considers to be
infringing of its ROCK’EM SOCK’EM ROBOTS and ROCK’EM SOCK’EM
marks. Some of the letters were written shortly before Ms.
Hancock’s testimony in September 2005, and we have no information
about what was the result of those letters. However, we do not
treat the statement in the letters--that opposer has learned that
the party is using the particular mark--as evidence that the
third-party use has resulted in significant exposure of the mark
to the public.
Opposition No. 91160087
21
position themselves on the mat and volley a sock back and
forth from one half of the mat to the other half of the
mat.” Although applicant has identified her product with a
great deal of detail, it would fall under the general
terminology of an action game, and therefore is encompassed
by the goods identified in opposer’s registrations.
Accordingly, applicant’s goods must be deemed to be legally
identical to opposer’s goods. Moreover, because the goods
are legally identical, they must be presumed to travel in
the same channels of trade, and be sold to the same classes
of consumers which, because they are action games, would
include children as the users of the games, and the adults
who would buy the games for them. These du Pont factors,
thus, all favor opposer.
We next consider the marks, keeping in mind that when
marks would appear on virtually identical goods or services,
as they do here, the degree of similarity necessary to
support a conclusion of likely confusion declines. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Opposer’s marks
are ROCK’EM SOCK’EM ROBOTS and ROCK’EM SOCK’EM; applicant’s
mark is SOCK-UM. Obviously applicant’s mark is identical in
Opposition No. 91160087
22
pronunciation and connotation,12 and virtually identical in
appearance, to the SOCK’EM portion of opposer’s mark.
As for the ROBOTS portion of opposer’s mark, opposer
points out that this disclaimed word is descriptive and
therefore deserves less weight when the marks are compared
in their entireties. We agree. Because ROBOTS describes
the figures in opposer’s game, it is obviously used when
people refer to the figures or to the game. However, the
question is whether people would view the absence of the
word ROBOTS in an otherwise confusingly similar mark as
indicating that those goods came from a separate source. We
think, if the mark were used with a toy or game that did not
involve robots, that consumers would assume that opposer had
dropped the ROBOTS portion of its mark because it was not
applicable to the toy or game at issue. Thus, if ROCK’EM
SOCK’EM were used with a sock volleying game, the absence of
the word ROBOTS would not be sufficient to differentiate the
marks. Moreover, we point out that opposer owns a
registration not only for the mark ROCK’EM SOCK’EM ROBOTS,
but for ROCK’EM SOCK’EM as well.
Of course, we must also consider the effect of the term
ROCK’EM in opposer’s marks, and whether this element is

12 We recognize that because applicant’s game involves volleying
a sock, the term “sock” in her mark has a double entendre;
however, clearly one meaning of SOCK-UM connotes hitting or
striking.

Opposition No. 91160087
23
sufficient to differentiate opposer’s marks from applicant’s
mark. Although ROCK’EM has a prominent position because it
is the first word of the mark, it also has a suggestive
connotation similar to SOCK’EM, as it suggests both the
shaking motion of a “sock” and the effect of the striking
motion of SOCK’EM, i.e., that one both rocks and socks one’s
opponent, and that one who is socked is rocked by the
socking.13 Also, because ROCK’EM and SOCK’EM rhyme, the
ROCK’EM portion of the mark would be viewed as intrinsically
connected to SOCK’EM, and as reinforcing not just the
meaning but also the sound and the appearance of SOCK’EM.
Thus, although there are clear differences in the marks,
they are outweighed by the similarities. Because of the
reasons discussed above, consumers are likely to view
SOCK-UM as a variation of the mark ROCK’EM SOCK’EM or
ROCK’EM SOCK’EM ROBOTS when these marks are used on the same
types of goods. Accordingly, although we acknowledge that
this du Pont factor does not strongly favor opposer, it
still does favor opposer to some extent.14

13 See the following definitions of “rock” taken from The
American Heritage Dictionary of the English Language, 4th ed.
© 2000, of which we take judicial notice: “To cause to shake or
sway violently”; “To sway violently, as from a blow or shock.”
14 We note that in her three page trial brief applicant has said
only that opposer has not submitted any evidence to show that
confusion is likely, and that, with respect to the du Pont factor
of the similarity of the marks, applicant has stated only that
“in evaluating the similarities between marks, the emphasis must
be on the recollection of the average purchaser who normally
retains a general, rather than specific, impression of
trademarks,” brief, p. 2, a point that favors opposer’s position.
Opposition No. 91160087
24
The likelihood that consumers will confuse the marks is
increased by the fact that, due to the nature of the
products and their inexpensive price, the goods are a type
that can be purchased on impulse and without a great deal of
care. In this connection, we point out that the standard
retail price for opposer’s ROCK’EM SOCK’EM ROBOTS game is
$14.99. Applicant has not provided any information about
the proposed retail price for her game, but in view of Ms.
Hancock’s testimony that $14.99 is the price point in the
industry for a skill and action game, we presume that
applicant’s game would sell at a similar price. Moreover,
applicant’s goods, as identified, must be presumed to
include games in this price range. Accordingly, this du
Pont factor favors opposer.
With respect to the related du Pont factors of evidence
of actual confusion or length of time there has been use
without instances of actual confusion, applicant has not
begun selling the products under the mark, so not
surprisingly, we have no evidence on either of these
factors. We therefore treat them as neutral.
Opposer has argued that the number and different types
of products and services for which its marks have been used
also favor a finding of likelihood of confusion. This

Applicant has not presented any specific arguments as to why the
differences in the marks are sufficient to prevent confusion.

Opposition No. 91160087
25
du Pont factor generally comes into play to show that
consumers are likely to believe that a plaintiff has
expanded its line of goods, and therefore it has less
relevance when the goods of the parties are legally
identical, as they are here. However, we note that the mark
ROCK’EM SOCK’EM ROBOTS has at various times been used for
loungewear, pens, key chains, action figures, bobble figures
and computer games, and that it and ROCK’EM SOCK’EM have
been registered for a variety of goods and services. To the
extent this factor is applicable, it favors opposer.
We also find that, since applicant’s goods are a
children’s game that is intended to be sold to the general
public, and is intended to be sold in retail stores in every
state of the United States, amended response to
interrogatory No. 4, the number of people that can
potentially be confused in high, and this factor favors
opposer.
Finally, opposer asserts that applicant adopted her
mark with the intent to trade on opposer’s goodwill in its
ROCK’EM SOCK’EM marks. Opposer bases this argument on the
fact that the packaging for applicant’s prototype game uses
similar colors to those in opposer’s packaging, and that
applicant uses a slogan, “It’ll Knock Your Socks Off,” which
is similar to opposer’s slogan, “Knock His Block Off.” We
are not persuaded by this argument. There is no evidence
Opposition No. 91160087
26
that the primary colors used by the parties--red, yellow and
blue--are so unique in the toy industry that we can say that
applicant deliberately copied opposer’s trade dress. In
fact, while both parties’ boxes contain these colors, yellow
is the major color on opposer’s box, and has a limited
appearance on applicant’s box, as the color of the shirt
worn by one of the four children pictured thereon. Further,
“knock the (or someone's) socks off” is a recognized slang
phrase meaning “to overwhelm or amaze.” See The American
Heritage Dictionary of the English Language, 4th ed. © 2000.
Given that applicant’s game involves throwing socks, we see
no ulterior motive in applicant’s decision to use this
slogan. Therefore, in reaching our decision on the issue of
likelihood of confusion, we do not ascribe any bad intent to
applicant in her adopting the mark.
We readily acknowledge that, because the marks are only
somewhat similar, this is a close case. However, given the
long use of opposer’s mark and the respectable sales it has
achieved, the fact that the goods are legally identical and
are therefore presumed to be sold in the same channels of
trade and to the same classes of purchasers, and the fact
that the goods are inexpensive and are likely to be
purchased on impulse and without a great deal of care or
deliberation, we find that opposer has met its burden in
demonstrating that applicant’s use of SOCK-UM for her
Opposition No. 91160087
27
identified children’s game is likely to cause confusion. We
add that, to the extent that there is any doubt on the issue
of likelihood of confusion, we follow the well-established
principle that such doubt must be resolved in favor of
opposer as the registrant and prior user. United Merchants
& Manufacturers, Inc. v. R.A. Products, Inc., 404 F.2d 399,
159 USPQ 714 (CCPA 1968); Interstate Brands Corp. v. McKee
Foods Corp., 53 USPQ2d 1910 (TTAB 2000). However, we
caution that, in reaching our determination that confusion
is likely, we certainly do not mean to suggest that opposer
is entitled to exclusive rights to the term SOCK’EM in all
instances, only that opposer is entitled to judgment under
the particular facts of this case.
Decision: The opposition is sustained.