Ronald B. Chandler

Trademark Trial and Appeal Board

Dec 28, 2015

No. 85903535 (T.T.A.B. Dec. 28, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chandler
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Serial No. 85903535
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Ronald B. Chandler, pro se, dba Galactic Enterprise.

Gretta Yao, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
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Before Kuhlke, Taylor and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Ronald B. Chandler dba Galactic Enterprise (“Applicant”) seeks registration on
the Principal Register of the mark STARFIGHTER COMMAND (in standard
characters) for
On-line retail store services featuring physical and virtual
merchandise for use by members of an online community
in connection with a designated website featuring
fictional characters in International Class 35.1

1 Application Serial No. 85903535 was filed on April 13, 2013, based upon 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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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 so resembles the registered mark STARFIGHTER (in standard
character form) for
Interactive entertainment software and accompanying
instruction manuals sold as a unit, namely, computer
game software and manuals sold as a unit, video game
software and manuals sold as a unit; video game software,
computer game software, and pre-recorded CD-ROMs and
DVDs featuring games, music, computer game software,
and video game software; downloadable video game
software and downloadable computer game software” in
International Class 92 and
Toy model vehicles and toy model space craft; play sets for
toy model vehicles and for toy model space craft; toy
model space crafts and related accessories sold as units;
role playing toys; toy model vehicles and related
accessories; toy vehicles; toy model vehicles and
accessories therefor sold as a unit” in International Class
283
as to be likely to cause confusion.
After the Trademark Examining Attorney made the refusal final, Applicant filed
two requests for reconsideration, both of which were denied. On March 22, 2015,
Applicant filed a third request for reconsideration and this appeal. The Examining
Attorney did not have an opportunity to address the third request and thus, on
November 12, 2015, we restored jurisdiction and remanded the application to the
Examining Attorney. On November 20, 2015, the Examining Attorney denied the
third request for reconsideration.

2 Registration No. 4543714, issued June 3, 2014.
3 Registration No. 4218293, issued October 2, 2012.
Serial No. 85903535
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Proceedings were resumed on December 4, 2015. The matter has been fully
briefed.
I. Discussion
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 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 and/or
services. 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).
A. Similarity or Dissimilarity of Marks.
We start our analysis with the first du Pont factor, the similarity of the marks.
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). ).4 “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

4 Applicant acknowledges that “some resemblance could be construed between Starfighter
and Starfighter Command in appearance and sound, and, perhaps, some similarities in
connotation and commercial impression could be implied within the mind of a very
uneducated consumer.” Response dated August 31, 2013.
Serial No. 85903535
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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).
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, … 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 National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
With respect to Applicant’s mark, the first word, STARFIGHTER, is the
dominant portion of the mark that should be given greater weight. “[I]t is often the
first part of a mark which is 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) (Likelihood of confusion found between
KIDWIPES and KID STUFF for pre-moistened disposable towelettes). See also
Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “Veuve” is the first word in the mark and
the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word).
The dominant portion of Applicant’s mark, STARFIGHTER, is identical to
Registrant’s entire mark, STARFIGHTER. Applicant contends that “Applicant’s
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mark is not likely to generate source confusion with Registrant’s mark because the
first element, STARFIGHTER, is descriptive, and not suggestive or fanciful, and
because it has not acquired secondary meaning.” Appeal Brief, 4 TTABVUE 11.5 To
support its argument, Applicant refers to the definition of “Starfighter” in The Free
Dictionary by Farlex, which is “a science fiction term used to describe a small, fast,
usually one-manned space craft designed for armed combat”6; several pages of
truncated Google and Yahoo search results for the term “Starfighter Command”;
several pages of what appear to be screen shots of webpages from two websites
reflecting use of the term “Starfighter”; and webpages from Applicant’s own website.
The truncated Google and Yahoo search results are entitled to little weight. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007)
[“Bayer asserts that the list of GOOGLE search summaries is of lesser probative
value than evidence that provides the context within which a term is used. We
agree. Search engine results – which may provide little context to discern how a
term is actually used on the webpage that can be accessed through the search result
link – may be insufficient to determine the nature of the use of a term or the
relevance of the search result to registration considerations.”].

5 Citations to TTABVUE refer to the Board’s electronic case file database, by entry and
page number.

6 Definition from The Free Dictionary by Farlex, www .encyclopedia.freedictionary.com
/Starfighter. August 31, 2013 response to Office Action.
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The screen shots do not establish that “Starfighter” is a descriptive term for the
relevant goods and services.7 One of the sites, wikia.com, references “The Last
Starfighter,” which is the title of a movie. The other site, entitled “Star Trek
Swiftfire Wiki,” refers to use of the phrase “Starfleet Starfighter Command” in
connection with the Star Trek series.
While Applicant’s evidence does not establish that the term STARFIGHTER is
descriptive, it does indicate that the term may be somewhat weak. However, even
weak marks are entitled to protection against the use of the same or similar marks
on related goods and services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB
1982) (internal citations omitted.) Moreover, the term COMMAND is also weak.
“Command” is defined as “a military organization.”8 Appeal Brief, 4 TTABVUE 14.

7 Applicant argues that the mark STARFIGHTER is descriptive of Registrant’s goods and
that it has not acquired secondary meaning. Id. at 14. Applicant’s contention that the cited
mark is merely descriptive of Registrant’s goods constitutes an improper collateral attack
on the cited registrations.
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal Register shall
be prima facie evidence of the validity of the registration, of the
registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the mark in commerce in connection with
the goods or services specified in the certificate. During ex
parte prosecution, an applicant will not be heard on matters
that constitute a collateral attack on the cited registration.
Dixie Rests., 41 USPQ2d at 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d
1360, 1363 (TTAB 2007); In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). The proper action for
attacking the validity of a cited registration is a cancellation action. In re Mountaire
Corporation, 231 USPQ 986, 988 (TTAB 1986) citing In re Calgon Corp. 435 F.2d 596, 598,
168 USPQ 278, 280 (CCPA 1971); In re Home Federal Savings and Loan Association, 213
USPQ 68, 70 (TTAB 1982).
8 “Command” is defined as “a military unit, district or region under the control of one
officer.” The Free Dictionary, www.encyclopedia.freedictionary.com /command. August 31,
2013 response to office action, 8-31-2013.
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As so defined, the mark STARFIGHTER COMMAND connotes a military unit for
spacecraft, which makes “command,” subordinate. By way of example, the term is
analogous to an Airforce Unit, wherein “unit” refers to a military organization and
“Airforce” defines the organization. Further, the Examining Attorney has submitted
evidence of the use of Starfighter Command in connection with Registrant’s Star
Wars movie from “Wookieepedia – The Star Wars Wiki.” Office Action dated August
15, 2013, i.e.,
Starfighter Command, the department responsible for
Starfighter operations in the Alliance to Restore the
Republic.
New Republic Starfighter Command, the department for
Starfighter operations in the New Republic.
Galactic Alliance Starfighter Command, the department
responsible for Starfighter operations in the Galactic
Federation of Free Alliances.
Thus, Applicant has adopted Registrant’s entire mark (STARFIGHTER) and
added subordinate matter (COMMAND) thereto. “The general rule is that a
subsequent user may not appropriate the entire mark of another and avoid a
likelihood of confusion by adding descriptive or subordinate matter thereto.” In re
Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006), cf. Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) [HEWLETT
PACKARD and PACKARD TECHNOLOGIES]; In re El Torito Restaurants Inc., 9
USPQ2d 2002 (TTAB 1988) [MACHO and MACHO COMBOS]; In re Equitable
Bancorporation, 229 USPQ 709 (TTAB 1986) [RESPONSE and RESPONSE CARD];
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and In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) [CONFIRM and
CONFIRMCELLS].
The marks STARFIGHTER COMMAND and STARFIGHTER are similar in
appearance, sound, connotation and commercial impression. Accordingly, we find
that the first du Pont factor strongly favors a finding of likelihood of confusion.
B. Relationship between the goods and services.
We continue our analysis with the second du Pont factor and look at the
relationship between the goods at issue. “It is well settled that the issue of
likelihood of confusion between applied-for and registered marks must be
determined on the basis of the goods [and service] as they are identified in the
involved application and cited registration, rather than on what any evidence may
show as to the actual nature of the goods [and services], their channels of trade
and/or classes of purchasers.” In re Total Quality Group Inc., 51 USPQ 1474, 1476
(TTAB 1999). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 - 1162 (Fed. Cir. 2014). (emphasis added).
The services as recited in the application are “on-line retail store services
featuring physical and virtual merchandise for use by members of an online
community in connection with a designated website featuring fictional characters.”
The goods as identified in the cited registrations are: “interactive entertainment
software and accompanying instruction manuals sold as a unit, namely, computer
game software and manuals sold as a unit, video game software and manuals sold
as a unit; video game software, computer game software, and pre-recorded CD-
Serial No. 85903535
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ROMs and DVDs featuring games, music, computer game software, and video game
software; downloadable video game software and downloadable computer game
software” and toy model vehicles and toy model space craft; play sets for toy model
vehicles and for toy model space craft; toy model space crafts and related accessories
sold as units; role playing toys; toy model vehicles and related accessories; toy
vehicles; toy model vehicles and accessories therefor sold as a units.”
As identified, the services offered by Applicant are retail sale services of physical
and virtual merchandise. Despite Applicant’s assertion that “he does not now and
does not intend in the future to sell toys or video games,”9 the relationship between
Applicant’s services and Registrant’s goods is determined by the way they are
identified in the application and registrations. The recitation of Applicant’s services
does not limit the goods to be sold. As such, it is not relevant to our determination
that the goods Applicant plans on selling are apparel items and board games. As
identified, the goods sold by Registrant, i.e. computer game software and model toy
vehicles, may be sold by Applicant, and as such are related. See In re The United
States Shoe Corp., 229 USPQ 707 (TTAB 1985) (retail clothing store services and
uniforms are related).
Accordingly, we find that the second du Pont factor favors a finding of likelihood
of confusion.

9 Appeal Brief, 4 TTABVUE 24. Citations to TTABVUE refer to the Board’s electronic case
file database, by entry and page number.
Serial No. 85903535
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C. Channels of Trade.
Applicant argues that because his services are restricted to “use by members of
[his] online community,” the channels of trade for and customers of his products are
different from those of Registrant.” Appeal Brief, 4 TTABVUE 24. He further argues
that “Registrant’s goods are available widely through wholesale and retail channels
as well as on websites, some official and associated with the Registrant, and some
unaffiliated with Registrant.” Id., at 25. This argument is not persuasive.
As discussed above, our evaluation of the goods and services is based solely on
the identification of goods and recitation of services. Total Quality Group, at 1476.
There is no restriction on the channels of trade of Registrant’s goods (e.g. computer
game software and model toy vehicles). Thus, Registrant’s goods may be sold on
Applicant’s website or on another website, consisting of an online retail store for
members of an online community. Further, since the specification of Applicant’s
services includes sale of virtual goods and services and there is no limitation on the
specific items to be offered, the goods sold by Applicant could include Registrant’s
computer game software and model toy vehicles. As such, Applicant’s services, and
in particular the sale of physical and virtual merchandise may be promoted in the
same channels of trade as Registrant’s goods.
Accordingly, we find that the third du Pont favors a finding of likelihood of
confusion.
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D. The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing.
As with channels of trade, the fourth du Pont factor, “the condition under which
and buyers to whom sales are made” is also determined by the goods as identified in
the cited registrations and the application. Therefore, although Applicant asserts
that “[b]oth the Registrant’s mark and the Applicant’s mark identify goods and
services designed to appeal to fans of the science fiction genre,”10 there is no such
restriction in the identifications of goods and services. Further, even if Applicant’s
assertion was correct, the fans of goods and services in the science fiction may be
the same. There is no evidence that these purchasers are sophisticated and while
some may be sophisticated, other purchasers may be unsophisticated. The
purchasers may also overlap, i.e. members of an online community may purchase
goods, such as Registrant’s either on the community website or said customers may
purchase these goods on another website or a brick and mortar store and because of
the similarity between the marks, be confused as to the source of the goods and
services.
There is insufficient evidence to establish the sophistication of the purchasers
and thus we find the fourth du Pont to be neutral.
E. Actual Confusion.
Applicant claims that he has been using the term “STARFIGHTER COMMAND
since 1994 in conjunction with the fictional story told on Applicant’s website --- [and

10 Id., at 21.
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that] there has never been a reported case of actual confusion. It is of note that
Applicant neither alleges nor proves trademark use of the phrase STARFIGHTHER
COMMAND. Further, while a showing of actual confusion would be probative, if not
conclusive, of a high likelihood of confusion, the opposite is not true. The lack of
evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte
context.
F. Conclusion.
Having considered all the evidence and argument on the relevant du Pont
factors, whether discussed or not, we find that Applicant’s mark is likely to cause
confusion with the cited registrations.
Decision: The refusal to register Applicant’s mark STARFIGHTER COMMAND
is affirmed.