Source Interlink Magazines, LLC

Trademark Trial and Appeal Board

Jan 18, 2012

No. 77879157 (T.T.A.B. Jan. 18, 2012)

Mailed:
January 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Source Interlink Magazines, LLC
________

Serial No. 77879157
_______

Scott J. Spooner, Esq. for Source Interlink Magazines, LLC.

James Ringle, Trademark Examining Attorney, Law Office 111
(Robert Lorenzo, Managing Attorney).
_______

Before Bucher, Zervas and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Source Interlink Magazines, LLC (“applicant”) filed an
intent-to-use application for the mark ULTIMATE PUZZLE
SOURCE, in standard character form, for a “magazine
containing puzzles,” in Class 16. Applicant disclaimed the
exclusive right to use the term “Puzzle Source.”
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used
in connection with a “magazine containing puzzles” so
resembles the registered mark THE ULTIMATE PUZZLE and
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77879157
2
design, shown below, for “puzzles,” in Class 28,1 as to be
likely to cause confusion. Registrant disclaimed the
exclusive right to use the word “Puzzle.”

Preliminary Issue
In its brief, applicant argues, in essence, that
because the goods at issue are categorized in different
International Classes (i.e., Class 28 vs. Class 16), by
operation of law, they are not related.2
The International Classification of
Goods and Services was created
specifically to define the scope of a
party’s trademark rights by limiting a
particular registration to the
particular classes of goods and
services covered by the registration.3

Applicant’s argument is incorrect. Section 30 of the
Trademark Act of 1946, 15 U.S.C. § 1112, provides that the

1 Registration No. 3103446, issued June 13, 2006.
2 Applicant’s Brief, pp. 2-3.
3 Applicant’s Brief, p. 2.

Serial No. 77879157
3
classification of goods and services does not “limit or
extend applicant’s or registrant’s rights.” Thus, the
classification of goods is not controlling insofar as
likelihood of confusion is concerned. In re Knapp-Monarch
Co., 296 F.2d 230, 132 USPQ 6, 7 (CCPA 1961); Graco Inc. v.
The Warner-Graham Co., 164 USPQ 400, 402 (TTAB 1969).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
Serial No. 77879157
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commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987). 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 overall
commercial impression so that confusion as to the source of
the goods 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 1835,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992).
Although the mark in the cited registration features a
design element and the words are displayed in a distinctive
style, the marks THE ULTIMATE PUZZLE and design and
ULTIMATE PUZZLE SOURCE are similar to the extent that they
both feature the term “Ultimate Puzzle.” Thus, the primary
question is whether the difference in appearance caused by
registrant’s design and distinctive display of the words
“The Ultimate Puzzle” is sufficient for consumers to
Serial No. 77879157
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distinguish between applicant’s mark ULTIMATE PUZZLE SOURCE
and the mark in the cited registration THE ULTIMATE PUZZLE
and design. In this regard, it is a well-established
principle that 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); see also Dixie Rest.,
105 F.3d at 1407, 41 USPQ2d 1531 (affirming TTAB finding
that DELTA was the dominant feature of the mark THE DELTA
CAFE and design, and that the design element and generic
word “CAFE” were insufficient to overcome likelihood of
confusion with the registered mark DELTA).
We find that the word “THE ULTIMATE PUZZLE” is the
dominant portion of the mark in the cited registration and
that is entitled to greater weight than its design elements
because it is the term “The Ultimate Puzzle” by which
consumers will refer to registrant’s goods. See In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
200 (Fed. Cir. 1983) (“in a composite mark comprising a
design and words, the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it
Serial No. 77879157
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is affixed”); Giant Food, Inc. v. Nation's Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395-96 (Fed. Cir. 1983).
With respect to the distinctive display of the term
“The Ultimate Puzzle” in registrant’s mark (i.e., the
comparatively small font for the word “Ultimate” and the
letter “E” in the word “Puzzle” formed by a puzzle piece),
these features of the mark do not alter the manner in which
consumers would view or pronounce the mark, especially
consumers who are interested in solving puzzles.
Furthermore, a customer who has been satisfied with
registrant’s goods would recommend them by referring to the
word portion of the mark, THE ULTIMATE PUZZLE. In this
regard, we note that a “puzzle” is defined as “a toy,
problem, or other contrivance designed to amuse by
presenting difficulties to be solved by ingenuity or
patient effort.”4 The relevant consumers would appreciate
the intricacies of the display of the registrant’s mark,
appreciating the mark itself as a puzzle; they would get it
that the letter “E” is last letter of the word “puzzle”
(although the E is an integral part of a design) and would
they would perceive the last word as “puzzle.”

4 The Random House Dictionary of the English Language
(Unabridged), p. 1572 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 77879157
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With regard to applicant’s mark, ULTIMATE PUZZLE
SOURCE, the term “Ultimate Puzzle” is the dominant feature
of applicant’s mark because the adjective “Ultimate”
modifies the word “Puzzle.” The word “Ultimate is defined
as “maximum; decisive; conclusive: the ultimate authority
… not to be improved upon or surpassed; greatest;
unsurpassed; the ultimate vacation spot.” (Emphasis in the
original).5 Thus, applicant’s mark means and engenders the
commercial impression of the greatest puzzle; the same
commercial impression engendered by registrant’s mark.
The significance of the term ULTIMATE PUZZLE is
reinforced by its position as the first part of applicant’s
mark. See Presto Products Inc. v. Nice-Pak Products, Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered”); see also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“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.

5 The Random House Dictionary of the English Language
(Unabridged), p. 2050.
Serial No. 77879157
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1992) (upon encountering the marks, consumers must first
notice the identical lead word).
Moreover, because applicant’s mark is displayed in
standard character form, it is not limited to any special
stylization and we must assume that it could be displayed
in a style that takes on the appearance of a puzzle similar
to the display adopted by registrant. In re RSI Systems
LLC, 88 USPQ2d 1445, 1448 (TTAB 2008).
As indicated above, the process of comparing the marks
does not rest on a side-by-side analysis or a point-by-
point comparison of the mark isolating the similarities and
differences. The focus is on the average purchasers who do
not memorize marks and “there is a tendency for individuals
to equate a new mark or experience with one that they have
long experienced without making an effort to ascertain
whether or not they are the same marks.” Cumberland
Packing Corp. v. Estee Corp., 224 USPQ 50, 52 (TTAB 1984).
Therefore, it is highly unlikely that consumers would
differentiate applicant’s mark from the registered mark.
In view of the foregoing, we find that when the marks
are compared in their entireties, they are more similar
than dissimilar in terms of appearance, sound, meaning and
commercial impression.
Serial No. 77879157
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B. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

The mark in the cited registration is for puzzles and
applicant is seeking to register its mark for a “magazine
containing puzzles.” Registrant’s goods and applicant’s
goods are related because they are both puzzles albeit in
different forms: toys and games [Class 28] vs. written
form [Class 16]. It is well settled that applicant’s goods
and registrant’s goods do not have to be identical or
directly competitive to support a finding that there is a
likelihood of confusion. It is sufficient if the
respective products are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The Examining Attorney submitted six use-based, third-
party registrations for products listed in both the
Serial No. 77879157
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application and registration at issue.6 Third-party
registrations which individually cover a number of
different goods that are based on use in commerce may have
some probative value to the extent that they serve to
suggest that the listed goods are of a type that may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d at 1785-86; In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The Examining Attorney also submitted the following
evidence to show that the goods in the application and
registration move in the same channels of trade and are
sold to the same classes of consumers, namely the general
public:
1. An excerpt from the THINKS.COM website, “the
place for family-friendly puzzles and games.” The website
offers free access to Sudoku puzzles, crossword puzzles,
jigsaw puzzles, chess, and checkers.
Puzzles & Games:
Sudoku, Crosswords,
Chess, Checkers & More

Welcome to Thinks.com, the place for
family-friendly puzzles and games!

6 We did not consider the registrations based on applications
filed under Section 44 of the Trademark Act (foreign
registrations). In re Mucky Duck Mustard Co. Inc., 6 USPQ2d at
1470 n.6.

Serial No. 77879157
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Whether you are young or old,
Thinks.com offers an incredible
collection of free online puzzles and
games. Enjoy Sudoku, crossword puzzles
and jigsaw puzzles. Play great online
games like chess, checkers and even
Chinese checkers. Thinks will keep you
happily entertained for hours.

Explore Thinks, solve puzzles and enjoy
game!

2. An excerpt from the CHRON ENTERTAINMENT website
(chron.com) providing access to online crossword puzzles,
Sudoku puzzles and jigsaw puzzles;
3. An excerpt from the JIGSAW JUNGLE website
(jigsawjungle.com) advertising the sale of jigsaw puzzles,
3D puzzles, crossword puzzles and “word searches.”
In addition to jigsaw puzzles we
feature an excellent selection of
specialty hobbies for your
entertainment including:

Quality Paint by numbers kits,
Needlepoint, Cross Stitch kits,
Matchitecture, Scraperfoils, 3D Puzzle
Spheres, Games, Arts and Crafts,
Construction Kits, Educational Products
and Brainteasers (Mind puzzles, logic
puzzles, Crossword puzzles, Word
searches and more).

4. An excerpt from the FAT BRAIN TOYS website
(fatbraintoys.com) advertising the sale of a wide variety
of puzzles including jigsaw puzzles and “brainteaser”
puzzles. The website provides the listing of categories
set forth below.
Serial No. 77879157
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Puzzles Sub-Categories:
3-D Puzzles Brainteaser Puzzles
Floor Puzzles Geography Puzzles
Jigsaw Puzzles Toddler & Preschool Puzzles
We take judicial notice that crossword puzzles, Sudoku
puzzles and brainteasers appear in newspapers, magazines
and books.
While the evidence submitted by the examining attorney
is not particularly compelling, we find that it is
sufficient to establish a prima facie case that the goods
are related, that they move in the same channels of trade
and that they are sold to same classes of consumers.
Applicant did not present any evidence regarding the
relationship of the goods and, as discussed above, its only
argument regarding the goods was that because the goods at
issue are categorized in different International Classes
(i.e., Class 28 and Class 16), they are not related.
C. Balancing the factors.
The du Pont factors require to us to consider the
factors for which evidence has been made of record in
likelihood of confusion cases. In view of the facts that
the marks are similar and the goods are related, move in
the same channels of trade and are sold to the same classes
of consumer, we find that applicant’s mark ULTIMATE PUZZLE
Serial No. 77879157
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SOURCE applied to “magazines containing puzzles” is likely
to cause confusion with the mark THE ULTIMATE PUZZLE and
design for “puzzles.”
Decision: The refusal to register is affirmed.