PTT, LLC DBA High 5 Games

Trademark Trial and Appeal Board

Sep 30, 2015

No. 86035890 (T.T.A.B. Sep. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 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. 86035890
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Candice B. Hebden of High 5 Games, LLC,
for PTT, LLC DBA High 5 Games
Cory Boone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Taylor, Hightower, and Goodman,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
PTT, LLC DBA High 5 Games (“Applicant”) seeks registration on the Principal
Register of the mark EMPRESS JOSEPHINE (in standard characters) for “game
software” in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, as used in connection with its goods, so resembles the mark

1 Application Serial No. 86035890 was filed on August 12, 2013, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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NAPOLEON & JOSEPHINE, previously registered (in standard characters) on the
Principal Register for the following goods:
Components for gaming machines that generate or
display wager outcomes, namely, controllers, displays,
button panels, bolsters, electrical wiring, and computer
hardware and software associated therewith; Gaming
machines, namely, devices which accept a wager; Gaming
software that generates or displays wager outcomes of
gaming machines, in International Class 92
as to be likely to cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed, and an oral hearing was held on
September 1, 2015. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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, 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.”).

2 Registration No. 4184214, issued July 31, 2012.
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I. Similarity of the Goods
We first address the second du Pont factor, the similarity of the goods. It is not
necessary that the goods be identical or even competitive to support a finding of
likelihood of confusion. Rather, it is sufficient that the goods are related in some
manner, or that the circumstances surrounding their marketing are such that they
would be encountered by the same persons in situations that would give rise,
because of the marks, to a mistaken belief that they originate from the same source
or that there is an association or connection between the sources of the goods. In re
Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). The greater the degree of
similarity between the marks, the lesser the degree of similarity between the goods
necessary to support a finding of likelihood of confusion. In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001).
Here, Applicant’s identified goods are “game software.” Registrant’s goods
include “components for gaming machines that generate or display wager outcomes,
namely . . . software associated therewith” and “gaming software that generates or
displays wager outcomes of gaming machines.” We find that Applicant’s “game
software” encompasses these more specifically identified goods in the cited
registration. Thus, the goods are legally identical. We note that Applicant does not
dispute this conclusion; it did not address the similarity of the goods in its appeal
briefing, and at oral argument, Applicant’s counsel conceded that the identified
goods are identical or overlapping and therefore legally identical.
The second du Pont factor strongly favors a finding of a likelihood of confusion.
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II. Similarity of the Marks
We turn next to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and 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. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430 (TTAB 2013).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis is not predicated on dissecting the marks into
their various components. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985); 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.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a
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particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
When, as here, marks would appear on goods that are legally identical, “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); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007).
Applicant’s mark EMPRESS JOSEPHINE and the cited mark NAPOLEON &
JOSEPHINE differ in their initial word and, thus, in sound and appearance. We
find these differences to be outweighed, however, by the similarities in meaning and
overall commercial impressions of the two marks. Record evidence establishes that
with their identical second term JOSEPHINE, both marks incorporate the name of
the same historical figure: Joséphine de Beauharnais, who was married to Napoleon
Bonaparte from 1796 to 1810.3 The couple was crowned Emperor and Empress in
1804.4 Applicant’s description of its game on its website reflects this celebrated link:
France at the turn of the nineteenth century was a
tumultuous yet beautiful country. No one represents this
dichotomy more than Joséphine de Beauharnais, the first
wife of Napoleon Bonaparte, and thus the first Empress of
France. Though her marriage to Napoleon did not last,
her place in society and her impact on the culture never
subsided. Witness the splendor and elegance of her life in
The Empress Josephine.5

3 May 1, 2014 Final Office Action at 27-34 (from pbs.org); October 29, 2013 Office Action at
11-17 (article “Joséphine de Beauharnais” from Wikipedia.org).
4 May 1, 2014 Final Office Action at 34; October 29, 2013 Office Action at 13.
5 May 1, 2014 Final Office Action at 4-5 (from high5games.com/games/empress-josephine).
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Applicant argues strenuously that its mark makes a commercial impression
distinct from the cited mark, asserting that “[i]t is flawed to argue that Empress
Josephine automatically evokes thoughts of Napoleon” and that “Applicant’s Mark
puts the female center stage – and not as an appendage of her husband.”6 Although
we acknowledge the differences between the marks, we also bear in mind that a
lower degree of similarity is required here because the goods are legally identical.
We find that the marks EMPRESS JOSEPHINE and NAPOLEON & JOSEPHINE
conjure the same historical figure, alone or coupled with her husband the emperor,
and therefore will invoke very similar meanings and commercial impressions to
consumers of the identified goods.
The first du Pont factor also favors a finding of a likelihood of confusion.
III. Number and Nature of Similar Marks in Use on Similar Goods
Finally, Applicant argues that the shared portion of the marks is weak and
diluted because third parties have used and registered marks incorporating the
term JOSEPHINE for related goods. This argument pertains to the sixth du Pont
factor, the number and nature of similar marks in use on similar goods.
The record contains only one example at common law of a name incorporating
the word “Josephine” for similar or related goods: “Josephine’s Jewels,” which
appears to be in use in association with an online slot game.7 There is no evidence
concerning consumer familiarity with this mark, such as how long or widespread

6 Reply Brief, 11 TTABVUE 2-3.
7 See November 3, 2014 Request for Reconsideration at 2-5. Although Applicant asserted
that an application had been filed for JOSEPHINE’S JEWELS and matured into a
registration before oral hearing, neither the application nor the registration is in evidence.
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has been its use. On the facts before us, one third-party use is insufficient for us to
find that the cited mark is weak, or that consumers are so used to seeing marks
containing the name JOSEPHINE in association with gaming that consumers can
distinguish among them.
IV. 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 any du Pont factors for which there is no record evidence as
neutral. In view of our findings under the critical first two du Pont factors that the
identified goods are legally identical and the marks are similar, we find that
Applicant’s mark is likely to cause confusion with the mark in cited Registration
No. 4184214 when used in association with Applicant’s goods.
Decision: The refusal to register Applicant’s mark EMPRESS JOSEPHINE is
affirmed.