Paul D. Miller

Trademark Trial and Appeal Board

Jan 27, 2010

No. 77332676 (T.T.A.B. Jan. 27, 2010)

Hearing: Mailed:
November 12, 2009 January 27, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paul D. Miller
________

Serial No. 77332676
_______

Matthew G. McKinney of McKinney Law, LLC for Paul D.
Miller.1

Jennifer Vasquez, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Walters, Bucher and Kuhlke, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Paul D. Miller seeks registration on the Principal
Register of the mark COMMANDER-IN-CHIEF (in standard
character format) for “equipment sold as a unit for playing
board games” in International Class 28.2
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to

1 Although applicant was represented by counsel throughout the
prosecution of this application, he appeared pro se at the oral
hearing.

2 Application Serial No. 77332676 was filed on November 19,
2007 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77332676
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register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark COMMANDER IN CHIEF (also in standard character
format) registered for, inter alia, “playing cards”3 also in
International Class 28, as to be likely to cause confusion,
to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the issues involved in this case and an oral
hearing was held before this panel of the Board on November
12, 2009.
In urging registrability, applicant argues that
inasmuch as the two marks are “not identical,” in order to
find a likelihood of confusion, the relationship between the
respective goods must be closer than would be the case if
the marks were identical. As to the goods, applicant argues
that “playing cards” and “equipment sold as a unit for
playing board games” are distinctly different – not
complementary or companion items. As to the Trademark
Examining Attorney’s purported evidence that some board
games may actually contain playing cards, applicant argues

3 Registration No. 2924653 issued to Olde Mill Company, Inc.
on February 8, 2005.
Serial No. 77332676
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that none of these copies of Internet printouts show
“playing cards” when that term is correctly identified as “a
deck of fifty-two playing cards that includes thirteen ranks
of each of the four suits … ” as used in playing card games
such as poker. As to the evidence drawn from third-party
registrations, applicant claims that it is unreasonable for
the Trademark Examining Attorney to rely upon “only four
registrations out of the millions of trademark registration
to support a finding of the relatedness of the Applicant’s
goods and the Registrant’s goods.” Finally, during his oral
argument, applicant emphasized that in the real world, even
if registrant still uses this mark on playing cards, the
chances of confusion herein would be de minimis.
By contrast, the Trademark Examining Attorney contends
that the marks “create the same commercial impression and
are nearly identical.” This finding is significant,
according to the Trademark Examining Attorney, because of
the close relationship of the goods, namely, that (i)
applicant’s identified goods are closely related to
registrant’s goods, (ii) presumably they move in the same
channels of trade as do registrant’s goods and (iii) they
are within the logical zone of expansion of trade of
registrant’s goods.
Serial No. 77332676
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Preliminary matter
Before getting to the issue of likelihood of
confusion, we note that the evidence attached to applicant’s
brief, which was not introduced into the record during the
prosecution of the application, is untimely. Trademark Rule
2.142(d), 37 C.F.R. 2.142(d). The Trademark Examining
Attorney argues that this evidence should be disregarded, as
its submission constitutes an improper reopening of
examination. Rexall Drug Co. v. Manhattan Drug Co., 128
USPQ 114 (CCPA 1960); In re Carvel Corp., 223 USPQ 65 (TTAB
1984); In re Best Western Family Steak House, Inc., 222 USPQ
827 (TTAB 1984); In re Envoys U.S.A., Inc., 221 USPQ 646
(TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB
1983); and In re Gagliardi Brothers, Inc., 218 USPQ 181
(TTAB 1983). The Trademark Examining Attorney did not
consider this evidence, and neither do we. Inasmuch as the
Trademark Examining Attorney had no opportunity to rebut
this uncorroborated Wikipedia submission, we have
disregarded it in reaching our decision herein. In re IP
Carrier Consulting Group, 84 USPQ2d 1028, 1032-33 (TTAB
2007). Nonetheless, we hasten to add that even if we had
considered this submission, it would not change our
decision herein.
Serial No. 77332676
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Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity of the marks
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Serial No. 77332676
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Applicant makes much of the fact that the two marks
herein are not identical given that applicant’s mark
includes hyphens between the three words (COMMANDER-IN-
CHIEF), while the registrant’s mark has spaces
(COMMANDER IN CHIEF). However, we agree with the
Trademark Examining Attorney that the presence of hyphens in
applicant’s mark provides for a negligible difference in
appearance that might well be overlooked by many potential
consumers of these goods. Furthermore, the test is not
whether the respective marks can be distinguished when
subjected to a side-by-side comparison. Rather, the focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Undeniably, applicant’s hyphenated mark will be
pronounced precisely the same as registrant’s non-hyphenated
mark.
Similarly, both marks create precisely the same
connotation, namely the supreme commander of a nation’s as
armed forces.4 And although applicant cites to cases such

4 “COMMANDER IN CHIEF: defn. one who holds the supreme
command of an armed force,” MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY
(11th ed. 2003).
Serial No. 77332676
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as In re Nobody’s Perfect,
Inc., 44 USPQ2d 1054 (TTAB
1997), there is no analogous
situation in this case to the
fact that Nobody’s mark
suggested that its “seconds”
apparel items were less than
perfect, while that
registrant’s mark playfully
suggests the imperfections
For applicant’s apparel retail
store services primarily
selling goods of irregular
quality

v.

NO BODY'S
PERFECT
For registrant’s feminine
underwear
present in a woman’s torso or overall physique. Cf. In re
British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984).
In addition to being aurally identical and having the
same connotations, we find that the presence or absence of a
hyphen, like other items of punctuation or similar symbols
does not change the commercial impressions of these marks.
In re Burlington Industries, Inc., 196 USPQ 718, 719 (TTAB
1977) [“[A]n exclamation point does not serve to identify
the source of the goods”].
Applicant concludes that the difference in these
marks favors his position, and that any finding of
likelihood of confusion, as urged by the Trademark
Examining Attorney, would require an especially-close
relationship between the goods. We disagree. These marks
Serial No. 77332676
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are substantially identical, and this factor weighs heavily
in favor of a finding of likelihood of confusion.
Relationship of the Goods
As noted above, when the marks are substantially
identical, the relationship between the involved goods need
not be as close to support a holding of likelihood of
confusion as might apply where more significant differences
exist between the marks. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Melville Corp., 18 USPQ2d
1386, 1387 (TTAB 1991); In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983); and Amcor,
Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
During his oral argument, applicant tried to focus on
registrant as a purveyor of inexpensive gifts ornamented
with federal images and targeted to tourists in the nation’s
capital, who may, in fact, no longer use this mark on
playing cards. We acknowledge that the cited registration
has seven International Classes of goods, listing, in
particular, the types of gift items popular in shops in
touristy areas (e.g., mouse pads, magnets, pens, stationery,
notepads, glasses and mugs, items of casual clothing,
playing cards, golf balls and candy).
Serial No. 77332676
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On the other hand, it is well settled that the issue of
likelihood of confusion between an applied-for mark and a
registered mark must be determined on the basis of the goods
as they are identified in the involved application and cited
registration, not on the basis of whatever the extrinsic
evidence may show. See Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed.
Cir. 1993); Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); Paula Payne
Products Company v. Johnson Publishing Company, 177 USPQ 76
(CCPA 1973); and In re William Hodges & Co., Inc., 190 USPQ
47 (TTAB 1976). In this regard, it would be improper to
permit applicant to restrict the scope of registrant’s
registration based upon extrinsic evidence. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Accordingly, in the present case, without resort to
extrinsic evidence, we must presume that registrant’s
playing cards might well be found nationwide wherever
playing cards are found.
Applicant also contends that the Trademark Examining
Attorney has interpreted the term “playing cards”
incorrectly. Applicant argues that when this term appears
alone (i.e., not as a component of, or equipment for, a
Serial No. 77332676
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board game) in a registration, as it does in the cited
registration, it should be interpreted as being a standard
pack of fifty-two playing cards. Undeniably, the standard
fifty-two card deck is within the umbrella of “playing
cards.” However, the Trademark Examining Attorney counters
that traditional board games come with a variety of types of
game cards, many of which are referred to as “playing
cards.”5 The Examining Attorney shows that some “playing
cards” may be representative of ancient coins,6 as well as a
myriad of other types of game cards:

Board game from Rio Grande
Games, having eight playing
card sets7
Age of Conan Board Game
from Fantasy Flight Games
having 165 Playing Cards8
Snowman Battle includes
playing cards and extra game
cards unique to this battle
game! 9

5 “… [Odyssey TV game] also came with two hand controls and
such traditional board game equipment as dice, playing cards, and
play money…” http://www.ideafinder.com/history/inventions/pong.htm

6 http://www.pywacketgames.com/Pages/Cromlet_Contents.html -
105 “Playing Cards” (representing each of the 100 Coin quantities
on the game board plus five “Wild” cards).
7 http://www.coolstuffinc.com/main_boardGame.php?viewType=view%20board%20
games&fp=Acc-BGUPAlhambra3#Alhambra:%20The%20Thief's%20Turn%20Expansion

8 http://www.coolstuffinc.com/main_boardGame.php?viewType=view%20board%20
games&fp=Acc-AgeofConan#Age%20of%20Conan%20Board%20Game

9 http://www.speechtherapygames.com/winter.htm
Serial No. 77332676
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Conversely, applicant argues that whenever the term
“playing cards” is used to identify equipment for playing a
board game, it always means game cards other than the fifty-
two card set that might be used to play poker. While this
is often the case in the games that populate the attachments
placed into the record by the Trademark Examining Attorney,
the record shows that this is not always true. One or more
traditional fifty-two card decks are indeed critical
contents of board game known as CRIBBALL,10 KINGS IN THE
CORNER,11 TRIPOLEY,12 SEQUENCE and PO-KE-NO:

Sequence Board Game
The Sequence board game is the commercial version of
an old card game called Jack Foolery. It is an exciting
game of strategy for two to twelve players and is simple
enough for children but still a challenge for adults. It is
a great addition to a family game night and is suggested
for players age seven to adult. 13

10 CRIBBALL: a sports contest for cribbage players from
Anderson Game Co that uses a standard pack of fifty-two playing
cards http://boardgamesrus.com

11 “Kings in the Corner Game -- … Kings go in the corners.
Play your cards solitaire fashion and extend your turn as long as
you can.” http://www.tkstoystand.com/

12 Tripoley Special Tin Box Edition
This is a limited edition of Tripoley with special gold and silver chips, revolving tray, and higher
quality playing cards. (Same contents as the Special Edition, offered in a conventional box.)
http://www.gamepreserve.com/

13 http://boardgames.lovetoknow.com/Sequence_Board_Game

Serial No. 77332676
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PO-KE-NO Board Game
The thrill of Poker, the anticipation of Bingo!
2-13 players, for older kids and adults alike. With 5 ways to play,
the fun never stops! So, shuffle up and deal. This PO-KE-NO set
is brought to you by Bicycle, which is your assurance of a quality
game.
This set includes everything you and your friends need to have an
enjoyable evening. The basic game of PO-KE-NO is similar to
Bingo, but is played with playing cards instead of bingo balls…
14
Finally, additional websites that the Trademark
Examining Attorney made part of the record show other board
games, like those discussed above, whose equipment includes
“playing cards,”15 as well as examples where a single
manufacturer or merchant is marketing the standard fifty-two
card deck of playing cards in close proximity to board games
and other tabletop, card or role-playing games.16 We view

14 http://www.playingcardsandmore.com/po-ke-no.aspx and
http://www.playingcardsandmore.com/ We note that the PO-KE-NO
games is “brought to you by ‘BICYCLE’” playing card company, the
leader in the field of playing cards.

15 http://www.boardgames.com/

16 http://www.hasbro.com/ and http://www.usgamesinc.com/
Serial No. 77332676
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this as probative evidence that the listed goods will be
viewed by consumers as emanating from a single source.
In reviewing this prosecution, however, we do agree
with applicant that the particular examples from the
Trademark Examining Attorney’s small sampling of use-based,
third-party registrations showing the same mark registered
for both playing cards and board games adds very little of
probative value to her Internet evidence.
Conversely, the examples applicant put forward to show
the same mark registered by separate parties for board games
and playing cards is wholly unpersuasive of an Office
practice contrary to that suggested by the Trademark
Examining Attorney. The applicant’s recited examples
represented different marks (TIGERS v. TIGER, COBRA v. COBRA
and design, JAGUAR v. JAGUAR and design), admittedly weak
marks in this field (TIGER(S)), examples where the item
“playing cards” had been eliminated from the identification
of goods entirely (TIGERS and COBRA), or where the
respective goods had no overlap with the goods at issue in
the current case (JAGUAR).
Finally, as we recently observed, “the concept of
expansion of trade is generally addressed in the context of
the issue of priority in an inter partes proceeding” [In re
Serial No. 77332676
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1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB
2007)], but priority of use is not an issue in an ex parte
proceeding. Rather, in this ex parte context, we apply the
traditional analysis of the relatedness of the involved
goods and/or services, and have not considered the Trademark
Examining Attorney’s arguments as to “expansion of trade.”
In summarizing this du Pont factor, we find that the
Trademark Examining Attorney has shown that applicant’s
identified goods are related to registrant’s goods, and this
factor favors a finding of likelihood of confusion.
Channels of trade and conditions under which and buyers to
whom sales are made

We turn to two related du Pont factors that focus on
the similarity or dissimilarity of established, likely-to-
continue trade channels, and the conditions under which and
buyers to whom sales are made.
Neither registrant’s goods nor applicant’s goods are
limited by classes of purchasers. Although applicant argues
that registrant’s goods should be restricted to a narrow,
niche channel of trade, we must presume that both
registrant’s goods and applicant’s goods will be available
through all normal trade channels, including toys stores
and game stores, where they will be encountered by all
Serial No. 77332676
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types of potential customers, including children and
adults. Given the retail costs of playing cards and board
games, we cannot assume potential purchasers will be
especially thoughtful in purchasing such goods. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); and In re Optica
Int’l, 196 USPQ 775, 778 (TTAB 1977). These related
du Pont factors also favor a finding of likelihood of
confusion herein.
Conclusion: Likelihood of Confusion
In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the fact that the marks
are substantially identical, the goods are related, and we
must presume that they will move through some of the same
channels of trade to the same classes of ordinary consumers.
Decision: The refusal to register this mark based upon
Section 2(d) of the Lanham Act is hereby affirmed.