Pictionary Inc.v.Spark Games LLC

Trademark Trial and Appeal Board

Nov 16, 2007

No. 91167236 (T.T.A.B. Nov. 16, 2007)

Mailed: November 16, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pictionary Inc.
v.
Spark Games LLC
_____

Opposition No. 91167236
to application Serial No. 78407499
filed on April 24, 2004
_____

Thomas A. Hallin of Harness, Dickey & Pierce, P.L.C. for
Pictionary Inc.

Dr. Parag Gupta pro se for Spark Games LLC.
______

Before Quinn, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Spark Games LLC, seeks registration of the
mark shown below for goods identified in the application as
“board games” in International Class 28.1

THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91167236
2
Opposer, Pictionary Inc., has opposed registration of
applicant’s mark on the ground that, as applied to
applicant’s goods, the mark so resembles opposer’s
previously used, registered and applied-for marks
PICTIONARY, PICTIONARY JUNIOR, and PICTIONARY and design,
for a variety of goods and services, including gaming
devices and board games, “as to be likely confused therewith
... so as to cause confusion, mistake or deception as to the
origin of Applicant’s goods bearing Applicant’s mark.” The
pleading also contains allegations related to a claim of
dilution. However, inasmuch as opposer has not argued
dilution in its brief, we have only considered the claim of
priority of use and likelihood of confusion under Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has filed an answer by which it has denied
the salient allegations.
BRIEFING AND EVIDENTIARY ISSUES
Opposer’s motion to strike applicant’s rebuttal brief
filed on April 8, 2007 is granted. See TBMP §§ 539 and
801.02(d) (2d ed. rev. 2004) (there is no provision for
filing a reply brief by a party in the position of
defendant); and Trademark Rule 2.128.

1 Serial No. 78407499, filed April 24, 2004, alleging a bona fide
intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b), with “GAME” disclaimed.
Opposition No. 91167236
3
Opposer’s objection to certain documents attached to
applicant’s Notice of Reliance on the basis that they are
not documents “contemplated as being admissible in this
proceeding under 37 C.F.R. §2.122(e),” is sustained as to
Exhibit No. E-6 (note regarding a trademark search)
submitted under applicant’s Notice of Reliance inasmuch as
this is not a printed publication available to the general
public or an official record, and thus not proper subject
matter for a notice of reliance. See Trademark Rule
2.122(e); TBMP §§ 704.07 – 704.08 (2d ed. rev. 2004) (and
cases cited therein). Opposer’s objection to the list of
registrations attached as Exhibit No. E-8 consisting of
search results from the Trademark Electronic Search System
(TESS) in the form of a list of applications and
registrations is sustained, to the extent that a listing
does not make the third-party registrations of record and is
of little probative value. Black & Decker Corp. v. Emerson
Electric Co., 84 USPQ2d 1482, 1494 (TTAB 2007); In re
Duofold, 184 USPQ 638 (TTAB 1974). With regard to Exhibit
Nos. E-11 – E-16 and E-18 – E25 (web pages, promotional
flyer, and pictures of game box), we note that these
materials are also not proper subject matter for submission
under a notice of reliance. See TBMP §704.08. However,
opposer specifically stated that it does not “object to
whether these publications are properly subject to the
Opposition No. 91167236
4
Notice of Reliance procedure.” Opposer only argues that
“they are probative only for what they identify on their
face and not for the purpose Applicant has identified,
namely, that these publications show a lack of a likelihood
of confusion.” Br. p. 13. In view thereof, we have
considered these documents. Opposer’s objection as to the
probative value of these as well as other documents has been
considered in our evaluation of the evidence for purposes of
the merits discussed infra. In addition, applicant’s
objections set forth in its brief as to the relevance of
certain of opposer’s evidence have been taken into
consideration in evaluating opposer’s evidence.2 Finally,
the exhibits attached to applicant’s brief are untimely and
have not been considered. See TBMP §704.05(b).
The evidence of record consists of the pleadings
herein; the file of the opposed application; applicant’s
responses to opposer’s interrogatories and requests for
admissions, printouts of excerpted articles, and certified
copies of opposer’s pleaded registrations, which show that
the registrations are subsisting and owned by opposer,

2 With regard to applicant’s objection to the reference to two
unrelated registrations in opposer’s brief, these appear to be
typographical errors and we have referred to the record which
includes only opposer’s registrations for various PICTIONARY
marks.

Opposition No. 91167236
5
submitted by opposer under a notice of reliance;3 copies of
third-party registrations and dictionary definitions
submitted by applicant under a notice of reliance. Opposer
and applicant did not take any testimony. Both parties
filed briefs.
PRIORITY AND LIKELIHOOD OF CONFUSION
The pleaded registrations, which are in full force and
effect and are owned by opposer, are summarized as follows:4
Registration No. 1392492 for the mark PICTIONARY
(in typed form) for “equipment sold as a unit for
playing a board game” in International Class 28,
issued on May 6, 1986, renewed;

Registration No. 1515528 for the mark PICTIONARY
(in typed form) for “clothing, namely, t-shirts
and sweatshirts” in International Class 25, issued
on December 6, 1988, Section 8 accepted and
Section 15 acknowledged;

Registration No. 1549250 for the mark PICTIONARY
(in typed form) for “computer game programs” in
International Class 28, issued on July 25, 1989,
Section 8 accepted and Section 15 acknowledged;

Registration No. 1581691 for the mark PICTIONARY
JUNIOR (in typed form) for “equipment sold as A
unit for playing a board game” in International
Class 28, issued on February 6, 1990, Section 8
accepted and Section 15 acknowledged; and

Registration No. 2821448 for the mark PICTIONARY
(in typed form) for “gaming devices namely, gaming
and slot machines with or without video output” in
International Class 9, issued March 9, 2004.

3 In addition to its registrations, opposer submitted certified
copies of its two pleaded applications.

4 Although opposer also pleaded ownership of Registration No.
2390148 for the mark PICTIONARY and design for various items of
clothing, this registration was cancelled under Section 8.
Opposition No. 91167236
6
Because opposer has made the pleaded registrations
summarized above properly of record, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Our likelihood of confusion determination under Section
2(d) 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 and 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).
In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks
and the similarities between the goods. 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).
We first note that, other than excerpts of articles
from various third-party publications, opposer did not
present any evidence regarding its alleged common law rights
in its various PICTIONARY marks. Our determination here is
thus made only as to the marks and goods listed in the
pleaded registrations. Moreover, we have limited our
determination of likelihood of confusion to the most
Opposition No. 91167236
7
relevant registration, Registration No. 1392492 for the mark
PICTIONARY for “equipment sold as a unit for playing a board
game.”
We first address opposer’s assertion that its mark has
become famous. In support of this allegation, opposer
submitted copies of articles featuring PICTIONARY in various
trade publications and publications of general circulation,
e.g., Crain’s New York Business, Adweek, Los Angeles Times,
and Chicago Tribune. Opposer also submitted an excerpt from
a document titled “Public Opinion Online” from the Roper
Center of the University at Connecticut retrieved from the
Lexis/Nexis database.
As stated by the Board in Blue Man Productions Inc. v.
Tarmann, 75 USPQ2d 1811, 1819 (TTAB 2005), “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
asserting that its mark is famous to clearly prove it.” The
record in this case does not even approach establishing
fame. Opposer has not provided any evidence about the
extent of its sales, advertising, and overall use of the
mark such that we can conclude that opposer’s PICTIONARY
mark can be considered a famous mark. See Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
Opposition No. 91167236
8
USPQ2d 1453 (Fed. Cir. 1992). However, although we have
found that the record is insufficient to support a finding
of fame, in view of the evidence we do have of third-party
references to opposer’s mark in various publications over a
period of twenty years, and registration by opposer of the
mark for a wide variety of goods (e.g., clothing, board
games and computer games), we find that it is a strong mark,
at a minimum, in the field of board games, which accords it
a commensurate higher level of protection.
We now consider the goods, the channels of trade and
the class of purchasers. In making our determination, we
must consider the opposer’s and applicant’s goods as they
are described in the registration and application, and we
cannot read limitations into those goods. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1987). If the registration and application describe
goods broadly, and there is no limitation as to the nature,
type, channels of trade or class of purchasers, it is
presumed that the registration and application encompass all
goods of the type described, that they move in all channels
of trade normal for these goods, and that they are available
to all classes of purchasers for the described goods. See
In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
Opposition No. 91167236
9
The goods identified in the subject application, board
games, are legally identical to, or, at least, encompass the
goods in opposer’s Registration No. 1392492, namely
equipment sold as a unit for playing a board game.
Considering the channels of trade and class of
purchasers, inasmuch as there are no limitations in either
the registration or the subject application, we must presume
that applicant’s and opposer’s goods will be sold in the
same channels of trade and will be bought by the same
classes of purchasers. See Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987);
and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade and class of
purchasers favor a finding of likelihood of confusion.
With regard to the conditions of sale, these goods
include general consumer items that would not be purchased
with a great deal of care or require purchaser
sophistication.
We now turn to consider the similarity or dissimilarity
of the marks when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
Opposition No. 91167236
10
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result.
Moreover, where the goods are identical “the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1992).
In arguing that the marks are dissimilar, applicant
states that QUESTIONARY is a word which has a meaning
whereas PICTIONARY is “a made up word.” QUESTIONARY is
defined as “a set of questions for submission to a group of
persons for the purpose of bringing out their resemblances
and differences in the matter considered” Webster’s Revised
Unabridged Dictionary (1998). In addition, applicant argues
that the dominant portions of the marks are respectively
QUEST and PIC or PICT. Further, applicant states that its
mark contains additional wording and is much longer.
Applicant contends that all of these elements contribute to
the differences in sound, appearance and commercial
impression of the marks. As to connotation, applicant
argues that its mark connotes a set of questions whereas
opposer’s mark has a connotation of a “picture with somewhat
Opposition No. 91167236
11
unclear connotation towards dictionary or so.” Br. p. 14.
Applicant argues that the only point of similarity is the
“generic” and weak suffix “TIONARY” and that cannot be
sufficient to preclude others from using this suffix for
games.
In contrast, opposer contends that the entire word
QUESTIONARY is the dominant element in applicant’s mark and
the additional terms in the mark do “not distract from the
fact that the marks are similar in appearance.” Br. p. 25.
In addition, opposer argues that the marks are similar in
sound in the same manner as PLAY-DOH and FUN DOUGH. See
Kenner Parker Toys, supra. Opposer further argues that the
marks have similar connotations in that “a question or two
may be asked during the play of the PICTIONARY brand game
[and] ‘questions’ and ‘pictures’ are similar methods for
conducting a game.” Br. p. 28. As to commercial
impression, opposer argues that it is using its mark in
connection with a game that uses “a series of questions ...
to identify a picture drawn by the game players” and
applicant’s game uses a series of questions to identify a
word.
In comparing the marks PICTIONARY and QUESTIONARY THE
GAME OF SMART QUESTIONS within the above-noted legal
parameters, we find the points of similarity outweigh the
dissimilarities. ESSO Standard Oil Co. v. Sun Oil Co., 229
Opposition No. 91167236
12
F.2d 37, 108 USPQ 161, 163 (D.C. Cir. 1956). We first
observe that the term QUESTIONARY is the dominant element in
applicant’s mark. It is displayed prominently and the
additional wording “THE GAME OF SMART QUESTIONS” serves more
to describe the product rather than to identify the source
of the product. Recognizing that QUESTIONARY and PICTIONARY
begin with different elements, we find in this case that the
identical sound and appearance of the suffix presents a
similarity sufficient to create a likelihood of confusion.
Given the identical goods, trade channels and class of
purchasers, we find that the overall commercial impression
engendered by each of these marks is such that the
similarities outweigh the differences. As to connotation,
while applicant’s mark has a meaning, both marks evoke the
word “dictionary” and, consequently, the use of words in
these games of inquiry. Taking into consideration the
strength of opposer’s mark, we conclude that the parties’
marks are substantially similar.
In making our determination we have considered
applicant’s argument that the suffix “TIONARY” is weak. In
support of this contention, applicant submitted copies of
third-party registrations and a listing of third-party
registrations.
Under the du Pont factors, existence of widespread
third-party use may serve to indicate the weakness of a term
Opposition No. 91167236
13
in the context of its source identifying significance. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir.
2005). However, while third-party registrations may, in
some circumstances, be used to indicate that a term has been
commonly adopted in a particular field or may be used in the
manner of dictionary definitions to indicate the descriptive
or suggestive significance of a term, they are not probative
of third-party use. Compare In re Hamilton Bank, 222 USPQ
174, 177 (TTAB 1984) (“Such registrations are ... competent
to show that others in a particular area of commerce have
adopted and registered marks incorporating a particular
term. We can also note from such registrations that the
term or feature common to the marks has a normally
understood meaning or suggestiveness in the trade ... .”)
with AMF Inc. v. American League Products, Inc., 474 F.2d
1403, 1406, 177 USPQ 268, 269-70 (CCPA 1973) (“We have
frequently said that little weight is to be given such
registrations in evaluating whether there is likelihood of
confusion. The existence of these registrations is not
evidence of what happens in the market place or that
customers are familiar with them ... .”) Thus, the record
does not support a finding that petitioner’s mark is a weak
mark due to widespread third-party use.
Opposition No. 91167236
14
To the extent the registrations underscore that
“TIONARY” is a common suffix we do not find this sufficient
evidence upon which we may conclude that consumers would
disregard this suffix and rely on the prefix to distinguish
the marks. There are only three third-party registrations
of record that are for related goods and are not cancelled
(Reg. No. 2831196 for the mark CONSTRUCTIONARY for, inter
alia, board games; Reg. No. 2900871 for DICKTIONARY for,
inter alia, board games; and Reg. No. 2687829 for EMOTIONARY
for, inter alia, board games).5 Moreover, the listing of
third-party registrations is not probative inasmuch as it
does not indicate the goods listed in the registrations. We
further note that the vast majority of the marks in the list
are very different from applicant’s and opposer’s marks,
e.g., Reg. No. 3000348 for the mark PATRICK HENRY’S
REVOLUTIONARY BLOODY MARY MIX.
Applicant also points to the correspondence from the
USPTO in its application file noting that no similar
registered or pending mark has been found to bar
registration under Section 2(d). However, it is well-

5 Cancelled registrations are not entitled to any of the
statutory presumptions of Section 7(b) of the Trademark Act. See
In re Hunter Publishing Co., 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the Section [7(b)] presumptions and makes
the question of registrability ‘a new ball game’ which must be
predicated on current thought.”). “[A] canceled registration
does not provide constructive notice of anything.” Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307, 1309 (Fed. Cir. 1989).

Opposition No. 91167236
15
settled that the Board is not bound by prior decisions of
examining attorneys. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994).
Finally, applicant argues that there is no evidence of
actual confusion during the three years in which the marks
have been used. While there is evidence that applicant
first used its mark in February 2004, Opposer’s Notice of
Reliance Exh. No. 9, Interrogatory No. 12, there is nothing
in the record to indicate whether and to what extent there
has been overlapping use of the parties’ respective marks.
In any event, the relevant test is likelihood of confusion;
it is not necessary to show actual confusion. Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990). We consider this
factor to be neutral.
Thus, considering the marks in their entireties, we
conclude that the evidence of record as it pertains to the
relevant du Pont factors supports a finding of a likelihood
of confusion as between applicant’s QUESTIONARY THE GAME OF
SMART QUESTIONS mark and opposer’s PICTIONARY mark, such
that registration of applicant’s mark is barred under
Trademark Act Section 2(d). To the extent we have any
doubt, we must resolve that doubt in favor of opposer, the
prior registrant. See Hard Rock Cafe International (USA)
Opposition No. 91167236
16
Inc. v. Thomas D. Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000)
and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc.,
190 USPQ 308, 311 (TTAB 1976).
Decision: The opposition is sustained as to opposer’s
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act.