PTT, LLC DBA High 5 Games

Trademark Trial and Appeal Board

Nov 5, 2015

No. 86134331 (T.T.A.B. Nov. 5, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re PTT, LLC DBA High 5 Games
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Serial No. 86134331
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Jonathan A. Fallon and Candice B. Hebden of High 5 Games,
for PTT, LLC DBA High 5 Games.
Sandra Snabb, Trademark Examining Attorney, Law Office 120,
Michael W. Baird, Managing Attorney.
_____

Before Kuhlke, Wellington and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
PTT, LLC DBA High 5 Games (“Applicant”) seeks registration on the Principal
Register of the mark ISLANDS OF GALAPAGOS (in standard characters) for
“game software” in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used on or in connection with the identified goods, is likely

1 Application Serial No. 86134331 was filed on December 3, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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to cause confusion with the mark GALAPAGOS (in standard characters) for
“gaming devices, namely, gaming machines, slot machines, bingo machines, with or
without video output” in International Class 9.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law
Our determination of the issue of likelihood of confusion 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., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”).
A. Relatedness of the Goods and Channels of Trade
We begin with the du Pont factors of the relatedness of the goods and channels of
trade. We base our evaluation on the goods as they are identified in the application

2 Reg. No. 3853532 issued September 28, 2010.
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and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). It is settled that it is not necessary that the respective goods be
identical or even competitive in order to find that they are related for purposes of
our likelihood of confusion analysis. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re International
Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). That is, the issue is
not whether consumers would confuse the goods themselves, but rather whether
they would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984).
The record shows, and Applicant does not dispute, that Applicant’s “game
software” and Registrant’s “gaming devices, namely, gaming machines, slot
machines, bingo machines, with or without video output” are related, and the
channels of trade and classes of consumers overlap. The Examining Attorney
submitted evidence from several third-party commercial Internet websites
demonstrating that game software and gaming devices may be used for the same
purposes, and that game software is used in gaming machines. For example,
Masque Games offers game software that allows users to play slot
machine games on computers and mobile devices,3 Free Slots

3 March 21, 2014 Office Action at 6.
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provides information about “3D slot game” software for online slot machines,4 and
Slot Constructor offers custom gaming software development
services as well as casino game development kits that allow gaming companies to
make slot machines, video poker and amusement machines.5 The Examining
Attorney submitted evidence from the third-party commercial Internet websites
IGT , Konami , Scientific Games
, and Bally Technologies , to show that game
software and gaming machines commonly are provided by the same entity under
the same mark.6 Further, the Examining Attorney made of record excerpts from
Applicant’s website to show that Applicant’s game software is
used for gaming purposes, including for slot machine games.7
As to the channels of trade and classes of purchasers, because the identifications
of goods in the application and registration contain no limitations, it is presumed
that the goods identified therein move in all channels of trade normal for those
goods, and that they are available to all classes of purchasers for those goods,
including ordinary consumers. Stone Lion, 110 USPQ2d at 1161. See also Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723 (Fed.
Cir. 2012) (absent limitation, “goods are presumed to travel in all normal channels
and to all prospective purchasers for the relevant goods.”). The evidence shows that

4 Id. at 9.
5 Id. at 18.
6 October 11, 2014 Office Action at 22-42.
7 Id. at 15.
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“gaming software” and “gaming machines” travel through the same channels of
trade and are offered to the same classes of consumers.
The du Pont factors of the similarity of the goods and channels of trade favor a
finding of likelihood of confusion.
B. Comparison of the Marks
Applicant has concentrated its comments on the first du Pont factor, the
similarity of the marks. We now turn our attention to this factor, which requires us
to determine the similarity or dissimilarity of the marks when viewed in their
entireties in terms of appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., 101 USPQ2d at 1721 (quoting
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905
(TTAB 2007)). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their
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entireties. Id. See also Franklin Mint Corp. v. 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.”).
In comparing the two marks, we note that Applicant’s mark ISLANDS OF
GALAPAGOS incorporates the entirety of Registrant’s mark GALAPAGOS. Thus,
although the marks are not identical in sound and appearance, they are similar in
that they both contain the same term GALAPAGOS. Likelihood of confusion often
has been found where the entirety of one mark is incorporated within another. See
Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons,
Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL
LANCER for club soda, quinine water and ginger ale is likely to cause confusion
with BENGAL for gin); Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing
and conditioner is likely to cause confusion with EBONY for cosmetics); In re
Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD
START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause
confusion with HEAD START for men’s hair lotion and after-shaving lotion).
Applicant’s mark ISLANDS OF GALAPAGOS and Registrant’s mark
GALAPAGOS also are similar in meaning and create the same overall commercial
impression. The record shows that both marks incorporate the name of the same
geographic location: the Galapagos Islands, an archipelago commonly referred to as
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the “Galapagos.” For example, in a 2012 article entitled “One-of-a-kind wildlife-
watching in the Galapagos” posted on the Lonely Planet website
, travel writer Bridget Gleeson describes “[a]rriving in the
Galapagos” as “thrilling – partly because the introduction to the archipelago is
unsettling, even spooky, like setting foot on an unpopulated planet,” and explains
that “[t]he archipelago’s remote location, 600 miles off the coast of Ecuador, means
that the islands’ flora and fauna have been almost entirely isolated from the rest of
the world for millions of years.”8 According to the Galapagos Turtle webpage from
the National Geographic website , “Spanish
sailors who discovered the archipelago in 1535 actually named it after the abundant
tortoises; the Spanish word for tortoise is galapago.”9 The Frommers website
also provides information for travelers to the Galapagos, referring
variously to the “Galapagos Islands,” the “Galapagos archipelago,” and simply “the
Galapagos.”10
Applicant’s description of its game on its website reflects the geographic
connection to the Galapagos: “The Islands of Galapagos lie down by the Equator, in
the Pacific Ocean to the west of South America. Journey to these famous islands to
see the amazing variety of life that compelled Darwin to study there.”11

8 October 11, 2014 Office Action at 6 and 8.
9 Id. at 3.
10 Id. at 12-15.
11 Id. at 20.
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Applicant argues in its brief that Registrant’s mark GALAPAGOS has an
ambiguous meaning because it “could refer to the group of islands or it could mean
tortoise,” while Applicant’s mark ISLANDS OF GALAPAGOS connotes only the
geographic location and “cannot refer to a tortoise, or an island of tortoises as that
would be a mixed language mark.”12 Given that the geographic location is named
after the giant land tortoises as noted above, we find unpersuasive Applicant’s
unsupported assertion that the connotations of GALAPAGOS and ISLANDS OF
GALAPAGOS differ.
Applicant also argues that ISLANDS OF is the dominant portion of its mark
ISLANDS OF GALAPAGOS because ISLANDS OF appears first in the mark. We
acknowledge that the common term GALAPAGOS is the third word in Applicant’s
mark. However, in this case, we find that the word placement is not sufficient to
distinguish the marks because the designation ISLANDS OF simply appears as a
variant of the shared element GALAPAGOS.
Applicant’s mark ISLANDS OF GALAPAGOS contains no other matter by which
to distinguish it from Registrant’s mark GALAPAGOS. Because of the identical
term GALAPAGOS, and because ISLANDS OF GALAPAGOS and GALAPAGOS
both refer to the same group of islands, we conclude that when the marks are
compared in their entireties, they are very similar overall in sound, appearance,
meaning, and commercial impression. In re Dixie Restaurants, Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Court held that the addition of “The,”

12 7 TTABVUE 5.
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“Cafe” and a diamond-shaped design to registrant’s DELTA mark still resulted in a
likelihood of confusion). As such, this du Pont factor also favors a finding of
likelihood of confusion.
C. Number and Nature of Similar marks in Use on Similar Goods
The next factor we consider is that of third-party use. As Applicant points out,
under the sixth du Pont factor, evidence of third-party use can be used to show that
a registrant’s mark is weak and thus entitled to a limited scope of protection.
Applicant acknowledges in its brief that there are no third-party registrations that
include the term “GALAPAGOS,” but contends that “there are numerous examples
of game software with marks incorporating the word.”13 To this end, Applicant
submitted with its Request for Reconsideration printouts of six websites that
include the term “GALAPAGOS.”14 Of these, three are for different goods than those
identified in the application and registration (two are for board games and one is for
a 3D Blu-ray film), and therefore do not support Applicant’s contention. The other
printouts are for game software bearing the mark PROTECT GALAPAGOS, a
review of game software released in 1997 under the mark GALAPAGOS, and a
teaser video of game software bearing the mark GALAPAGOS. However, there is no
evidence of consumer familiarity with the PROTECT GALAPAGOS game software,
such as how long or widespread its use has been. Further, there is no evidence that

13 7 TTABVUE 6.
14 4 TTABVUE 5-10.
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the game software released in 1997 is still in use, or that the teaser video resulted
in a product release (and if so, whether that product is still offered for sale).
Applicant’s evidence of third-party use therefore is minimal, and is not sufficient
to establish that the mark GALAPAGOS in the cited registration is weak, or that
consumers are so used to seeing marks containing the term GALAPAGOS in
association with gaming products that consumers can distinguish among them. We
consider this du Pont factor neutral.
II. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence of
record. In view of the foregoing, we conclude that prospective purchasers familiar
with the registered mark GALAPAGOS for “gaming devices, namely, gaming
machines, slot machines, bingo machines, with or without video output” would be
likely to believe, upon encountering Applicant’s substantially similar mark
ISLANDS OF GALAPAGOS for “game software,” that such goods emanate from, or
are sponsored by or affiliated with the same source.
Decision: The refusal to register Applicant’s mark ISLANDS OF GALAPAGOS
is affirmed.