PTT, LLC, dba High 5 Games

Trademark Trial and Appeal Board

Nov 7, 2016

No. 86186010 (T.T.A.B. Nov. 7, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 7, 2016

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. 86186010
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Candice Hebden Osnato, Esq.,
for PTT, LLC, dba High 5 Games.

Daniel F. Capshaw, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Zervas, Ritchie, and Adlin,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
PTT, LLC, dba High 5 Games (“Applicant”) seeks registration on the Principal
Register of the mark SINBAD AND THE SULTAN OF FIRE, in standard characters,
for “game software,” in International Class 9.1 The Trademark Examining Attorney
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, when applied to the

1 Application Serial No. 86186010 was filed on February 6, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.

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identified goods, so resembles the previously registered mark, , in
stylized form, for “gaming machines; gaming machines with multi-terminals; home
video game machines; magnetic card operated arcade video game machines; arcade
video game machines with multi-terminals; arcade video game machines; slot
machines; coin-operated arcade video game machines; hand-held games with liquid
crystal displays,”2 in International 28, as to be likely to cause confusion, mistake, or
to deceive.
When the refusal was made final, Applicant filed a request for reconsideration
and appealed. When the request for reconsideration was denied, the appeal was
resumed, and both Applicant and the Examining Attorney filed briefs. For the
reasons discussed below, we affirm the refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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 Majestic Distilling Company, 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. 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).

2 Registration No. 4438155 issued November 26, 2013.
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We consider the du Pont factors for which arguments or evidence were presented. We
consider the other factors to be neutral in our analysis.
The Similarity/Dissimilarity of the Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In comparing the marks, we are mindful that 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 so
that confusion as to the source of the services offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration is , in stylized form.
Applicant’s mark is “SINBAD AND THE SULTAN OF FIRE.” The marks thus share
the term, SINBAD, which is the only term in the mark in the cited registration, and
the first term that consumers will see in Applicant’s mark. See In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for
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reaching a conclusion on the issue of confusion, 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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to be unavoidable.”).
Furthermore, as our precedent dictates, the first term of Applicant’s mark, which is
the term shared with Registrant’s mark, is the term “most likely to be impressed upon
the mind of a purchaser and remembered.” Presto Products, Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imports, 73 USPQ2d at
1692. We thus find the marks as a whole to convey similar meanings, with consumers
likely to believe that Applicant’s SINBAD AND THE SULTAN OF FIRE is a variation
of the stylized mark or is a particular software to be used with
registrant’s gaming machines. The marks are also similar in sight, sound and overall
commercial impression. We note that although the mark in the cited registration is
not in standard character format, the stylization is minor, and the term “SINBAD” is
clearly displayed. Meanwhile, Applicant’s mark, as a standard character mark, could
be displayed in a similar stylized format. See Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); (“If the registrant
... obtains a standard character mark without claim to ‘any particular font style, size
or color,’ the registrant is entitled to depictions of the standard character mark
regardless of font, style, size, or color.”).
This first du Pont factor weighs in favor of finding a likelihood of confusion.

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Strength of the Mark
Applicant argues that the shared term “SINBAD” is weak and that consumers
will recognize subtle differences between the marks due to the number and nature
of similar marks in use on similar goods. See Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015). In this regard, Applicant
submitted evidence of four registrations that contain the term “SINBAD” and are
registered for goods similar to registrant’s goods. However, as pointed out by the
Examining Attorney, these registrations have all been cancelled. Applicant states in
its brief:
While the examining attorney is correct that there are no CURRENT
REGISTERED marks with the word SINBAD, there is both an
abundance of current common-law use by multiple companies as well
as several cancelled trademark applications.
8 TTABVUE 103.

A cancelled registration is not evidence of the weakness of a mark, and an
application only serves as proof that an application was filed. TBMP § 1208.02
(June 2016). Thus we accord the cancelled registrations and the applications
submitted by Applicant no probative value. Id. Applicant has also submitted four
webpages that contain the term “SINBAD” for gaming applications and software,3

3 An additional exhibit, submitted by Applicant for the first time as Exhibit D to its brief, was
objected to by the Examining Attorney. The record in an application should be complete prior
to the filing of an appeal. 37 CFR § 2.142(d); see also TBMP § 1207.01. Thus the objection is
sustained and we do not give further consideration to Exhibit D. We note, however, that if
we had considered Exhibit D, we would reach the same conclusion because it appears to be
merely one more example of use of the term “Sinbad.”
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namely, Sinbad gaming (https://games.cwgds.com); Sinbad Slot – Casino game
(itunes.apple.com); Sinbad™ (Aruzegaming.com);4 and The Voyages of Sinbad
(slotozilla.com). Applicant also submitted evidence that Sinbad is the name of a
stand-up comedian.5 The Examining Attorney submitted a definition of “SINBAD”
as “a citizen of Baghdad whose adventures at sea are told in the Arabian Nights’
Entertainments.”6
Evidence of extensive registration and use of a term by others can be “powerful”
evidence of weakness. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d at 1136; Juice Generation,
Inc. v. GS Enters. LLC, 115 USPQ2d at 1674. We note, however, that in Juice
Generation, there were at least twenty-six relevant third-party uses or registrations
of record, see 115 USPQ2d at 1672 n. 1, and in Jack Wolfskin, there were at least
fourteen, 116 USPQ2d at 1136 n. 2. By comparison, a few web pages showing games
with the term Sinbad, and at least one of which appears to be owned by a subsidiary
of the owner of the cited registration, has extremely limited persuasive value. While
we note that the term “SINBAD” has some historic literary significance, there is
insufficient evidence that is has specific significance to consumers of gaming

4 The Examining Attorney submitted evidence that Aruze Gaming America is a subsidiary of
Universal Entertainment Corporation, the owner of the cited registration. See July 22, 2015
Final Office Action, at 2; February 12, 2016 Denial of Request for Reconsideration, at 4-5, 6.
5 November 14, 2014 Response to Office Action, at 2.
6 Merriam-Webster.com; July 22, 2015 Final Office Action, at 80. To the extent the games
may be about the character “Sinbad,” the marks are suggestive or potentially conceptually
weak. Registrant, however, is the owner of a valid and extant registration which is entitled
to all the presumptions of Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), including
the presumption of validity.
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software and machines, and we find that Applicant has not established weakness in
the term “Sinbad”.
Goods/Channels of Trade
We next consider the relatedness of the goods and the channels of trade. The cited
registration identifies various gaming machines and the application identifies game
software.
To show the related and complementary nature of these goods, the Examining
Attorney submitted use-based third-party registrations that identify both gaming
machines and game software. Examples7 include RHINESTONE COWBOY
(Registration No. 4505960); MEGA MEGA (Registration No. 4482077); HOMERUN
CRAPS (Registration No. 3939094); LION’S LOOT (Registration No. 4122326); ML
(Registration No. 4272905); BIZCORE (Registration No. 4232987); GAME DAY
(Registration No. 4522660); THE MAGIC BRUSH (Registration No. 4485926) and
THE GODFATHER (Registration No. 4346885). Copies of use-based, third-party
registrations may serve to suggest that the goods are of a type which may emanate
from a single source. See In re Albert Trestle & Sons Co., 29 USPQ2d 1783, 1785
(TTAB 1993). The Examining Attorney also submitted third party web pages that
offer for sale gaming machines and game software. These include
Toccatagaming.com; Zitrogames.com; and Novomatic.com. Thus we find that the
goods are related and complementary.

7 These and others were attached to the July 22, 2015 Final Office Action.
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With regard to the channels of trade, in the absence of specific limitations in the
cited registration, we must presume that Registrant’s goods will travel in all normal
and usual channels of trade and methods of distribution. Squirtco v. Tomy
Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); see also In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations
as to channels of trade or classes of purchasers in either the application or the cited
registration, it is presumed that the services in the registration and the application
move in all channels of trade normal for those services, and that the services are
available to all classes of purchasers for the listed services). Since there are no
limitations on the channels of trade in Applicant’s identification of goods either, we
must make the same presumption with regard to Applicant’s goods. In other words,
there is nothing that prevents Applicant’s game software from being sold in some of
the same channels of trade and to the same classes of consumers as Registrant’s
gaming machines, and vice versa, specifically to those seeking to purchase gaming
machines and game software that may be used in or on those gaming machines.
Indeed, as indicated above, several websites offer both types of complementary goods
together.
Accordingly, the du Pont factors regarding the goods and trade channels favor
finding a likelihood of confusion.
II. Conclusion
On balance, after considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we find that the marks, when viewed in their
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entireties, are similar in sight, sound, connotation and commercial impression, and
the goods are also similar and complementary, and would travel through some of the
same channels of trade to some of the same consumers. Accordingly, we find a
likelihood of confusion between the mark SINBAD AND THE SULTAN OF FIRE for
game software, and the stylized mark in the cited registration for
various gaming machines.
Decision: The refusal to register under Section 2(d) of the Trademark Act is
affirmed.