Robert J. Thatev.YaYa, LLC and YaYa Media, Inc.

Trademark Trial and Appeal Board

Feb 6, 2006

No. 91152228 (T.T.A.B. Feb. 6, 2006)

Ma
Mailed: 2/6/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Robert J. Thate
v.
YaYa, LLC and YaYa Media, Inc.,
joined as party defendants
_____

Opposition Nos. 91152180; 91152228; 91152320; and 91152712
_____

Robert J. Thate, pro se.

Elizabeth Barrowman Gibson, Bernard R. Gans, and Alan A.J.
Leggett of Jeffers, Mangels, Butler & Marmaro for YaYa LLC
and YaYa Media, Inc.
______

Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Applications were filed by YaYa, LLC1 to register the
mark YAYA for “computer game software for use on third[-]
party web sites to promote the goods, services, and business
of the third party” (in International Class 9);2 and for

1 In view of assignments of the involved applications, and
pursuant to the parties’ agreement, the Board, on October 1,
2003, joined YaYa Media, Inc. as a party defendant. The joined
party defendants will be referred to as “applicant” in this
decision.
2 Application Serial No. 76105574, filed August 9, 2000, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
2
“dissemination of advertising for others via an on-line
electronic communications network, developing promotional
campaigns for business, and promoting the goods and services
of others by providing video games which are placed on web
sites of others including allowing users of the web site to
send challenges to others thereby expanding the promotional
value of the web site” (in International Class 35);
“entertainment services, namely, providing an on-line
computer game” (in International Class 41); and “product
development, namely, developing computer video games for
others” (in International Class 42);3 and the mark YAYA.COM
for “computer game software for use on third[-] party web
sites to promote the goods, services, and business of the
third party” (in International Class 9);4 and for “providing
computer games that may be accessed through a global
computer network” (in International Class 41).5
Robert J. Thate opposed registration in each instance
pursuant to Section 2(d) of the Trademark Act on the ground
that each of applicant’s marks, when used in connection with
applicant’s goods and services, so resembles opposer’s

3 Application Serial No. 76198605, filed January 20, 2001, based
on an allegation of a bona fide intention to use the mark in
commerce.
4 Application Serial No. 76105564, filed August 9, 2000, based on
an allegation of a bona fide intention to use the mark in
commerce.
5 Application Serial No. 76105571, filed August 9, 2000, based on
an allegation of a bona fide intention to use the mark in
commerce.
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
3
previously used and registered mark shown below

for “toys, namely, spinning tops”6 as to be likely to cause
confusion.
Applicant, in its answer, denied the allegation of
likelihood of confusion.
The Board, in an order dated December 27, 2002,
consolidated the four opposition proceedings, indicating
that the case could be presented on the same record and
briefs. The record consists of the pleadings; the files of
the involved applications; and a status and title copy of
opposer’s pleaded registration introduced by way of
opposer’s notice of reliance.7 Applicant did not take
testimony or offer any other evidence. Only opposer filed a
brief.8 An oral hearing was not requested.
In view of opposer’s ownership of a valid and

6 Registration no. 2470111, issued July 17, 2001. The
registration indicates that the drawing is lined for the colors
red and blue.
7 In this situation, where opposer offered no evidence other than
a copy of its registration, applicant could have filed a motion
for judgment under Trademark Rule 2.132(b) on the ground that
upon the law and facts opposer had shown no right to relief.
However, applicant was under no obligation to file such a motion;
the motion is optional, not mandatory. TBMP § 534.03 (2d ed.
rev. 2004).
8 The filing of a brief on the case is optional, not mandatory,
for a party in the position of defendant. TBMP § 801.02(b) (2d
ed. rev. 2004).
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
4
subsisting registration, there is no issue regarding
opposer’s priority. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, the only issue to decide herein is likelihood of
confusion.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). Opposer, as plaintiff in the
opposition, bears the burden of proving that there is a
likelihood of confusion. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Eastman
Kodak Co. v. Bell & Howell Document Mgmt. Products Co., 994
F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993).
With respect to the parties’ YAYA marks, opposer’s YAYA
mark (stylized and in color) is identical in sound to
applicant’s YAYA mark. Further, the stylization in
opposer’s mark is relatively minimal, and is insufficient to
distinguish the mark in terms of appearance from applicant’s
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
5
mark. The YAYA marks would appear to be arbitrary for the
involved goods and services; we can discern no difference in
the meanings that would be conveyed by the marks. In
addition, the marks convey virtually identical commercial
impressions.
Likewise, opposer’s YAYA mark (stylized and in color)
is substantially similar to applicant’s mark YAYA.COM. The
mere addition of the generic top level domain name “.COM” in
applicant’s mark is hardly sufficient to distinguish the
mark from opposer’s mark. In this connection, we have taken
judicial notice of various dictionary definitions of “.com.”
See: University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983)[dictionary definitions are
proper subject matter for judicial notice]. The term “.com”
is defined in the following ways: “a domain type used for
Internet locations that are part of a business or commercial
enterprise” CNET Glossary (1998); “abbreviation of
commercial organization (in Internet addresses)” The
American Heritage Dictionary of the English Language (4th
ed. 2000); and “Internet abbreviation for company: used to
show that an Internet address belongs to a company or
business” Cambridge Dictionaries Online (2001).
Applicant’s YAYA.COM mark is dominated by the arbitrary
“YAYA” portion. In re National Data Corp., 753 F.2d 1056,
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
6
224 USPQ 749, 751 (Fed. Cir. 1985) [“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 [that] the ultimate conclusion rests on
consideration of the marks in their entireties”]. “YAYA” is
the first portion of the mark, and would be used by relevant
purchasers in calling for applicant’s goods and services.
Opposer’s mark YAYA (stylized and in color) and applicant’s
mark YAYA.COM are similar in sound and appearance. Although
the “.COM” portion of applicant’s mark connotes a connection
with the Internet, the marks convey similar meanings given
the commonality of “YAYA.” The marks, YAYA (stylized and in
color) and YAYA.COM, when considered in their entireties,
engender similar overall commercial impressions.
In sum, the differences between opposer’s mark YAYA
(stylized and in color) and applicant’s marks YAYA and
YAYA.COM do not sufficiently distinguish the marks so as to
create separate and distinct commercial impressions. We
find that the parties’ marks, considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression so that, if they were used in
connection with similar goods and/or services, confusion
would be likely to occur among purchasers.
Inasmuch as opposer has filed no evidence in this case
other than a copy of its registration, the similarity
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
7
between opposer’s goods and applicant’s goods and/or
services turns solely upon a consideration of the
identifications of goods and services in the respective
registration and applications. American Grease Stick Co. v.
Chemplast, Inc., 341 F.2d 942, 144 USPQ 676 (CCPA 1965).
Opposer contends that its spinning top toys, on the one
hand, and applicant’s computer game software for use on the
Internet, and applicant’s Internet services related thereto,
on the other hand, are similar. Opposer, in its brief,
alleges that “games and playthings and ‘online computer
games’ are forms of toy and gaming equipment”; that “both
parties provide consumers, as well as third[-]party
businesses, product development services and goods that are
considered entertainment products”; that the parties’ goods
and services “are likely to be marketed in the same trade
channel, i.e. the World Wide Web”; and that “[w]ith [the]
advent and continued expansion of the Internet as a source
of information and acquisition of consumer products and
entertainment, Opposer believes that a large segment of its
potential customers, primarily children, will lack the
sophistication required to discern the difference between
the goods and services offered by both parties.”
Suffice it to say, opposer’s allegations are entirely
unsupported by any evidence. TBMP § 704.06(b) (2d ed. rev.
2004) [statements in a brief have no evidentiary value and
Opposition Nos. 91152180; 91152228; 91152320; and 91152712
8
can be given no consideration unless they are supported by
evidence properly introduced at trial]. Although toys and
computer games may be tangentially related in a very broad,
general sense, there is no evidence in the record to
establish a relatedness between opposer’s spinning tops and
applicant’s computer games offered on the Internet and
applicant’s Internet services related thereto. Any
relationship between the specific goods and services
involved herein on which to base a finding of likelihood of
confusion is not apparent from the face of the involved
registration and applications.
We find that the mere introduction of opposer’s
registration is insufficient to make out a prima facie case
of likelihood of confusion. Opposer, as the party with the
burden of proof, has failed to sustain its burden.
Decision: The opposition is dismissed.