Playboy Enterprises International, Inc.

Trademark Trial and Appeal Board

Mar 5, 2018

No. 86745640 (T.T.A.B. Mar. 5, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: March 5, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Playboy Enterprises International, Inc.
_____

Serial No. 86745640

_____

Marcella Ballard, Kristen S. Ruisi and Maria R. Sinatra of Venable LLP,
for Playboy Enterprises International, Inc.

Kevin G. Crennan, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Zervas, Ritchie and Greenbaum,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Playboy Enterprises International, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark for the following International
Class 41 services:
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Entertainment services, namely, providing online video
games; Entertainment services, namely, providing
temporary use of non-downloadable video games;
Production of video and computer game software;
Providing a web site through which people locate
information about tournaments, events, and competitions
in the video game field; Entertainment services, namely,
conducting contests; Arranging and conducting nightclub
entertainment events; Arranging and conducting special
events for social entertainment purposes; Arranging,
organizing, conducting, and hosting social entertainment
events, Entertainment services, namely, a continuing
program about the gaming industry accessible by means
video, web-based applications, mobile phone applications,
and computer networks.1
The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on (i) Registration No. 4749039
(“the ‘039 registration”) for the standard character mark GND (registered June 2,
2015) for “provision of Internet website featuring news and information relating to
current affairs, business, sports and entertainment” in International Class 41; and
(ii) Registration No. 4782818 (“the ‘818 registration”) for the standard character mark
GND NEWS (registered July 28, 2015) for “provision of Internet website featuring
news and information relating to business” in International Class 35 and “provision
of Internet website featuring news and information relating to current affairs, sports
and entertainment” in International Class 41. The two registrations issued to the
same owner.

1 Application Serial No. 86745640, filed on September 2, 2015, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intention to use the mark in
commerce. The mark is described as consisting of “a cross formation with four pentagon
shaped arrows pointing towards the center which forms an x shape. The top arrow contains
an image of a rabbit head design with a bow tie, the left arrow contains the letter ‘G’, the
bottom arrow contains the letter ‘N’ and the right arrow contains the letter ‘D.’”
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After the Examining Attorney made the refusal final, Applicant appealed to the
Board and requested reconsideration. The Examining Attorney denied the request
for reconsideration. The appeal resumed and both Applicant and the Examining
Attorney filed briefs.
I. Preliminary Issue
Applicant submitted about one-hundred pages of material with its appeal brief,
much of which appears to have been previously submitted. We do not consider any of
this material. The record in the application should be complete prior to the filing of
an appeal, and it is not necessary to attach as exhibits to a brief evidence that is
already in the application because the appeal brief is associated with the application.
See Trademark Rule 2.142(d), 37 C.F.R. §2.142(d); TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) §§1203.02, 1207.01 (June 2017). We have,
of course, considered the evidence properly made of record prior to the filing of the
appeal.
II. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
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fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014).
A. The Marks
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. The test is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the services offered in connection with
the respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual marketing
conditions, consumers do not necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their imperfect recollections.
Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus
is on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Assoc. of the United States Army, 85
USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). The average purchaser is a member of the general public.
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Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. Vv. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co.
v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact,
there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751.
We focus our analysis on the ‘039 registration for the standard character mark
GND, because it is the most similar, and thus if we find confusion likely between that
cited mark and Applicant’s mark, we need not consider the likelihood of confusion
between Applicant’s mark and the mark of the ‘818 registration, while if we find no
likelihood of confusion between Applicant’s mark and the mark in the ‘039
registration, we would not find confusion between Applicant’s mark and the mark in
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the ‘818 registration. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
Applicant contends that the marks are dissimilar; and that “[u]nlike the cited
registrations, the Applicant’s mark evokes the unique image of video gaming in
conjunction with the Applicant, Playboy’s, RABBIT HEAD DESIGN. The
arrangement of the pentagon shaped arrows to form an x shape in the Applicant’s
mark immediately evokes video gaming as the directional pads of various video game
controllers have overwhelmingly had similar ‘x shape’ designs.”2 In addition,
Applicant states:
Moreover, the Applicant’s other registered trademarks,
and association with the phrase “Girls Next Door” allows
the letters “G,” “N” and “D,” when paired with the iconic
PLAYBOY RABBIT HEAD DESIGN to call to mind a
vastly different meaning than the cited registrations. The
acronym “GND” is common slang for “girl next door.”
PLAYBOY and its iconic RABBIT HEAD DESIGN have
been associated with the phrase “girl next door” since
PLAYBOY’s inception in 1953, and the phrase has become
so closely associated with PLAYBOY that the Applicant
has registered and maintained Registration No. 3704353
(THE GIRLS NEXT DOOR in Class 41), and Registration
No. 3332339 (THE GIRLS NEXT DOOR in Class 16) since
2009, and 2007, respectively. As a result, use of the letters
“G,” “N,” and “D” when utilized by the Applicant, in
conjunction with the Applicant’s RABBIT HEAD DESIGN,
call to mind the Applicant’s history and its association with
the phrase “Girl Next Door.” The cited registrations do not
evoke similar images and as a result, have a unique
commercial impression that is unlikely to be confused with
the Applicant’s mark.3

2 Applicant’s brief at 8, 7 TTABVUE 9.
3 Id. at 9-10, 7 TTABVUE 10-11.
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For support, Applicant submitted a definition of “GND” from
urbandictionary.com,4 defined as “girl next door.”
Our primary reviewing court, the Federal Circuit, stated in In re Electrolyte Labs.
Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990):
More dominant features will, of course, weigh heavier in
the overall impression of a mark. Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed.Cir.1983). There is no general rule as to whether
letters or design will dominate in composite marks; nor is
the dominance of letters or design dispositive of the issue.
No element of a mark is ignored simply because it is less
dominant, or would not have trademark significance if
used alone. See Spice Islands, Inc. v. Frank Tea & Spice
Co., 505 F.2d 1293, 184 USPQ 35 (CCPA 1974) (improper
to ignore portion of composite mark).
The marks differ in that the rabbit head design, the four pentagon-shaped arrows
and the X formed by the four pentagon-shaped arrows do not appear in the
registrant’s mark, and there is no visual association with video game controllers.
Despite these differences, the marks are similar because they share the same letters
“G,” “N,” and “D,” and these letters can be read in the same order as they appear in
registrant’s mark. We find that purchasers will give more weight to the letters than
the design elements in considering the mark in its entirety, because the letters are
large in size, the pentagon-shaped arrows function as a background for each letter,
and the “rabbit head design” is not likely to be articulated verbally in this mark.
(Applicant has not indicated how its mark in its entirety, or the rabbit head design

4 July 28, 2017 Office Action, TSDR 33-34. Page references to the application record refer to
the PDF version of the Trademark Status and Document Retrieval System (TSDR).
Serial No. 86745640
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alone, would be articulated.) Further, the keys are arranged so that an “X” is formed
in the center, but this “X” is a feature that appears only after study of the design and
would not be immediately noticeable to the average purchaser.
“GND” is unpronounceable as a recognized word; and, as stated, the keys and the
“rabbit head design” would not be pronounced. Further, (i) because the marks share
the same letters, they are similar in appearance; and (ii) because the shared letters
can be articulated in the same order, they are similar in commercial impression. In
this regard, we consider that “it is more difficult to remember a series of arbitrarily
arranged letters than it is to remember figures, syllables, words, or phrases. The
difficulty of remembering such lettered marks makes confusion between such marks,
when similar, more likely.” Crystal Corp. v. Manhattan Chemical Mfg. Co., 75 F.2d
506, 25 USPQ 5, 6, (CCPA 1935). See also 4 J. THOMAS MCCARTHY, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION §23:33 (5th ed. 2017) (“Arbitrary
arrangements of letters have generally been given a wide scope of protection, based
on the premise that it is more difficult to remember a series of arbitrarily arranged
letters than it is to remember words, figures, phrases, or syllables.”).
We are not persuaded by Applicant’s attempts to associate “GND” with “girl next
door,” even if (i) it has registrations for GIRL NEXT DOOR, (ii) it has used the “rabbit
head design,” and (iii) “PLAYBOY and its iconic RABBIT HEAD DESIGN have been
associated with the phrase ‘girl next door’ since PLAYBOY’s inception in 1953, and
the phrase has become so closely associated with PLAYBOY.”5 An authoritative

5 Applicant’s brief at 9-10, 7 TTABVUE 10-11.
Serial No. 86745640
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dictionary defines “gnd” as an abbreviation for “ground” with no mention of “girl next
door.” See online version of the Merriam-Webster Dictionary.6 The Acronym Finder
entry for “GND” submitted by the Examining Attorney also identifies “Ground” as
the first ranked meaning, with “Girl Next Door” as the second ranked meaning.7 “Girl
next door” in the urbandictionary.com is identified as “guy slang”8 without any
reference to Applicant. Another definition in the same dictionary
(urbandictionary.com) submitted by Applicant defines “gnd” as “Good Night Dick.”
There is no indication in urbandictionary.com as to which definition is the primary
definition; we note that the “Good Night Dick” submission to urbandictionary.com is
dated August 23, 2014 while the “girl next door” submissions are dated in 2006 and
2007.
Moreover, the record reflects that Applicant itself is not using “GND” with its
mark to mean “girl next door.” See the following webpage from
http://www.playboy.com/series/gamer-next-door:9

6 https://www.merriam-webster.com/dictionary/gnd. The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
7 February 1, 2017 Office Action, TSDR 8, from https://www.acronymfinder.com/GND.html.
Several other meanings of “GND” appear in this reference.
8 July 28, 2017 Req. for Recon., TSDR 33-34.
9 July 28, 2017 Req. for Recon., TSDR 91.
Serial No. 86745640
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Evidently, Applicant intends the letters “G,” “N” and “D” to be read in the order
reflected in registrant’s mark, and as meaning “Gamer Next Door,” not “girl next
door.”
As for Applicant’s representation that the “rabbit head design” is iconic, and
presumably would be readily recognized by purchasers and associated with Applicant
and not registrant, Applicant has not demonstrated any notoriety of that design. But
even if the “rabbit head design” is iconic, and consumers perceive the “rabbit head
Serial No. 86745640
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design” as a house mark and GND as a service mark, likely of confusion as to
sponsorship or affiliation would still exist; “[i]n general, use of a house mark does not
obviate confusion.” General Mills Inc. v. Fage Dairy Processing Ind. SA, 100 USPQ2d
1584, 1601 (TTAB 2011) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010)). Indeed this could engender reverse confusion with the
mark in the cited registration. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has been used to describe
the situation where a significantly larger or prominent newcomer ‘saturates the
market’ with a trademark that is confusingly similar to that of a smaller, senior
registrant for related goods or services.” (citations omitted)).
In sum, we find Applicant’s mark considered as a whole to be more similar than
dissimilar to registrant’s mark and resolve the du Pont factor regarding the similarity
of the marks in favor finding a likelihood of confusion.
B. The Services, Trade Channels and Purchasers
Our determination of the similarity of the services is based upon the recitations of
services in the application and in the cited registration. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). The services do not have to be identical or even competitive for
confusion to be likely. “[L]ikelihood of confusion can be found ‘if the respective
[services] are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
Serial No. 86745640
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from the same source.’” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at
1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The services listed in the ‘039 application are “provision of Internet website
featuring news and information relating to current affairs, business, sports and
entertainment” and the cited registration includes “providing a web site through
which people locate information about tournaments, events, and competitions in the
video game field.” These services are overlapping because both Applicant and
registrant are providing a website, and registrant’s entertainment information may
include information about tournaments, events, and competitions in the video game
field. Furthermore, as to the overlapping services identified in the application and in
the ‘039 registration, we must assume that the purchasers and channels of trade for
such services would also overlap. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (“absent restrictions in the
application and registration, [related] goods and services are presumed to travel in
the same channels of trade to the same class of purchasers”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be sold
to the same class of purchasers”).
Applicant’s recitation of services also includes “entertainment services, namely, a
continuing program about the gaming industry accessible by means video, web-based
applications, mobile phone applications, and computer networks.” As identified, the
content of Applicant’s continuing program may be identical to the content of
Serial No. 86745640
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registrant’s website, i.e., information about tournaments, events and competitions in
the video game field (a form of entertainment),10 with both offered via the Internet.
These services are highly similar.
In addition, the Examining Attorney submitted third-party commercial webpages
demonstrating both Applicant’s and registrant’s services offered under the same
mark. See, for example:
• http://ign.com/moview offering a website featuring
entertainment information, specifically about movies, as
well as a continuing program about video games (“Max and
Brian bring you the best moments of the week with Up at
Noon Live, every Thursday at 12PM PT”);11
• http://www.gamespot.com/news/ offers a website
featuring entertainment information regarding video
games, and video game event information;12
• https://marvel.com offers online, non-downloadable video
game and a website featuring entertainment news in the
fields of comics, television, movies, and video games;13 and
• http://z100.iheart.com offers social entertainment events
in the nature of an “after-work singles party” and
entertainment news, specifically about music.14
The Examining Attorney also submitted approximately two dozen third-party
marks registered for use in connection with the same or similar services as those of
identified in the ‘039 application and the cited registration. This evidence

10 See December 21, 2015 Office Action, TSDR 7 (“Video games are entertainment.”).
11 Feb. 1, 2017 Office Action, TSDR 9-10.
12 Feb. 1, 2017 Office Action, TSDR 11-12.
13 Feb. 1, 2017 Office Action, TSDR 13-15.
14 Feb. 1, 2017 Office Action, TSDR 21-22.
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demonstrates that the services listed therein are of a kind that may emanate from a
single source under a single mark. See Joel Gott Wines, LLC v. Rehoboth Von Gott,
Inc., 107 USPQ2d at 1432 (“The use-based, third-party registrations . . . also have
probative value to the extent that they serve to suggest that the goods [and services]
listed therein are of a kind which may emanate from a single source under a single
mark.”); In re Albert Trostel & Sons, 29 USPQ2d 1783, 1785-86 (TTAB 1993). See, for
example:
Registration No. 4834679 for the mark MACHINIMA for
“Providing a website featuring entertainment information
where users can view videos and content; entertainment
and educational services, namely, production, distribution
and presentation of videos and multimedia content
regarding electronic video gaming …; entertainment
services, namely, providing videos and multimedia content
regarding electronic video gaming, video game cinema …;
entertainment, namely, arranging and conducting on-line
contests; entertainment services, namely, providing online
computer games and video games”;15
Registration No. 4203468 for the mark AVR MUSIC for
“dance and night club services; entertainment information;
arranging and conducting night club entertainment
events”;16
Registration No. 4461049 for the mark BEI MAEJOR for
video game software production services and providing
entertainment information over the Internet;17 and
Registration No. 4826556 for the mark VINO ARTIST for
“arranging, organizing, conducting and hosting social
entertainment events; Information and advisory services
regarding all of the aforesaid services, including

15 Dec. 21, 2015 Office Action, TSDR 28-33.
16 Dec. 21, 2015 Office Action, TSDR 20-21.
17 Dec. 21, 2015 Office Action, TSDR 22-24.
Serial No. 86745640
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information and advice provided electronically, including
on a website.”18
Applicant argues that “the cited registrations reference ‘entertainment’
fleetingly,” and that we “should not ‘simply lump the services of [applicant] and
[registrant] under the heading of . . . entertainment and, on that basis alone, find that
the parties engage in confusingly similar services,’” citing Harlem Wizards Entm’t
Basketball, Inc. v. NBA Props, Inc., 952 F. Supp. 1084, 1095 (D. N.J. 1997).19 Harlem
Wizards is inapposite because it concerned a common law trademark and not the
Trademark Act Section 7, 15 U.S.C. §1057, presumptions that flow from an existing
registration, including the exclusive right to use a registered mark in connection with
the services specified the certificate of registration. We must consider registrant’s
services as described in the registration and cannot read limitations into those
services. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002); Octocom Systems Inc. v. Houston Computer Servs. Inc., 16
USPQ2d at 1788. If the cited registration describes services broadly, and there is no
limitation as to the nature, type, channels of trade or class of purchasers, it is
presumed that the registration encompasses all services of the type described, that
they move in all channels of trade normal for these services, and that they are

18 Dec. 21, 2015 Office Action, TSDR 31-32.
19 Applicant’s brief at 5-6, 7 TTABVUE 6-7.
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available to all classes of purchasers for the described services. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).20
Applicant also argues that “Applicant and the cited registrations do not compete
for the same customers because the Applicant’s services are targeted to individuals
who are interested in video gaming, and events focused on video gaming, while the
cited registrations’ services are targeted to individuals interested in mainstream
news.”21 This argument is not persuasive because not all of Applicant’s services are
limited to video gaming, and because registrant’s services as described in the
registration may also concern video games as entertainment.
We therefore find the services to be overlapping in part and otherwise related,
and the purchasers and trade channels to be the same, and resolve these du Pont
factors in favor of a finding of likelihood of confusion.
C. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The services at
issue are overlapping and otherwise related. For those overlapping services, we
presume that the services move through the same trade channels to the same classes
of customers, and note that “the degree of similarity necessary to support a conclusion
of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970

20 The proper remedy for an applicant to limit the scope of a registrant’s identified services is
via an inter partes proceeding seeking partial cancellation or restriction pursuant to
Section 18 of the Trademark Act, 15 U.S.C. § 1068.
21 Applicant’s brief at 7, 7 TTABVUE 8.
Serial No. 86745640
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F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). Many of the non-overlapping
services move through the same Internet trade channels. Applicant’s and registrant’s
marks, considered as a whole, are similar, and Applicant has not established any
weakness in registrant’s mark.22 We therefore conclude that Applicant’s mark for its
services is likely to cause confusion with the registrant’s mark for its services.
Decision: The refusal to register under Section 2(d) is affirmed.

22 The two third-party registrations incorporating GND submitted with the July 28, 2017
Req. for Recon, TSDR 2-5, are for unrelated services and hence are not persuasive of any
weakness of registrant’s mark. The third such registration submitted by Applicant is for an
entirely unrelated mark.