Steve Jackson Games Incorporatedv.inXile Entertainment, Inc.

Trademark Trial and Appeal Board

Jan 22, 2019

No. 91225722 (T.T.A.B. Jan. 22, 2019)

Mailed: January 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Steve Jackson Games Incorporated
v.
inXile Entertainment, Inc.
_____

Opposition No. 91225722
_____

Brandon M. Ress, Richard J. Groos and Samantha M. Ade of King & Spalding LLP,
for Steve Jackson Games Incorporated.

Ronald P. Oines and Lindsay J. Hulley of Rutan & Tucker, LLP,
for inXile Entertainment, Inc.
_____

Before Taylor, Wolfson, and Hightower, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Applicant, inXile Entertainment, Inc., seeks registration on the Principal Register
of the mark AUTODUEL (in standard characters) for “[p]roviding online
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91225722
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downloadable computer and video game programs; [i]nteractive video game
programs” in International Class 9.1
Steve Jackson Games Incorporated (“Opposer”) has opposed registration of
Applicant’s mark on the following grounds:
(1) likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d); and that

(2) “Applicant had no bona fide intent to use the
AUTODUEL mark in commerce when it filed Application
Serial No. 86/702,458.”2

With regard to the likelihood of confusion ground, Opposer pleaded, inter alia,
ownership of Application Serial No. 86806802 for its AUTODUEL mark, filed
November 2, 2015, for “[d]igital media and electronic media, namely, downloadable
text and graphic files featuring rules, maps, components, and supplements for family
games, board games, and roleplaying games,” and common law rights in the mark.
Opposer further alleged that prior to any filing date or date of first use upon which
Applicant can rely, Opposer adopted and continuously used the mark AUTODUEL
“in connection with gaming products since as early as 1982, and with digital games

1 Application Serial No. 86702458, filed July 23, 2015, based upon Applicant’s allegation of a
bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
2 5 TTABVUE 9. Because the Board primarily uses TTABVUE (the Board’s publicly available
docket history system) in reviewing evidence, citations to material or testimony in the record
that has not been designated confidential should include the TTABVUE docket entry number
and the TTABVUE page number. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014). For material or testimony that has been designated confidential, the
TTABVUE docket entry number wherein such material or testimony has been designated
confidential should be listed as the citation.
Opposition No. 91225722
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since at least as early as 2005”;3 and that Applicant’s AUTODUEL mark so resembles
Opposer’s pleaded AUTODUEL mark as to be likely, when applied to the identified
goods, to cause confusion, mistake, or deception.
Applicant, in its answer, admitted that Opposer filed an intent to use application
for the mark AUTODUEL and that Opposer’s application has been suspended
pending the disposition of Applicant’s application, and otherwise denied the salient
allegations in the notice of opposition. Applicant additionally asserted the
affirmative defenses of unclean hands and abandonment.4 On August 4, 2017, the
Board partially granted Opposer’s motion for summary judgment, holding that
Opposer has standing to bring this opposition proceeding;5 that Applicant’s
affirmative defense of abandonment fails as a matter of law;6 and that Applicant’s
remaining defense of unclean hands was insufficiently pleaded (and was stricken).7
In regard to the abandonment defense, the Board noted that Opposer had proven
prior use of its mark with respect to at least some of its goods: “In particular,
Opposer submitted probative evidence that it has used the mark in commerce by

3 Id.
4 13 TTABVUE. Applicant also asserted as an “affirmative defense” that the notice of
opposition fails to state a claim upon which relief can be granted. Because Applicant did not
file a motion to dismiss the opposition on the basis of Fed. R. Civ. P. 12(b)(6), we treat the
“defense” as having been waived. See Motion Picture Association of America v. Respect
Sportswear Inc. 83 USPQ2d 1555, 1557 n.5 (TTAB 2007).
5 18 TTABVUE 2.
6 18 TTABVUE 5. “Accordingly, we find an absence of a genuine dispute of material fact on
Applicant’s claim of abandonment as to all of the goods asserted by Opposer and therefore
GRANT Opposer’s motion for summary judgment on this defense.”
7 18 TTABVUE 5.
Opposition No. 91225722
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offering for sale digital versions of Opposer’s ‘Autoduel Quarterly’ continuously since
2005.”8 In view thereof, the issues remaining for trial are (1) whether Opposer has
priority with respect to any goods other than digital versions of its “Autoduel
Quarterly”; (2) whether there is a likelihood of confusion; and (3) whether Applicant
lacked a bona fide intent to use the mark when it filed its application for
AUTODUEL on July 23, 2015.
I. THE RECORD
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application. The record also includes:
A. Opposer’s Testimony and Evidence
1. The testimony declaration of its Chief Executive Officer, Phil Reed, with
Exhibits 1-32 (“Reed declaration”).9

2. Four Notices of Reliance on:
a. Internet materials (Exhibits 33-42);10

b. Excerpts from Applicant’s responses to Opposer’s discovery requests
(Exhibits 43-44);11

c. USPTO official records (Exhibits 45-51);12 and

d. Excerpts from the discovery deposition of Brian Fargo, Applicant’s
founder and Chief Executive Officer, with accompanying Exhibits 63,

8 18 TTABVUE 3.
9 25 TTABVUE (confidential version); 26 TTABVUE (public version).
10 27 TTABVUE.
11 28 TTABVUE.
12 29 TTABVUE.
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74, 77, 78, 80, 95 and 96; and (in the confidential version) additional
Exhibits 64-69 (“Fargo deposition”).13
B. Applicant’s Testimony and Evidence
1. Excerpts from the testimony declaration of Brian Fargo, with Exhibits 54-
62 to the declaration;14 and

2. The cross-examination testimony deposition of Phil Reed, with Exhibits A
(and sub-exhibits 1-32), B, and C; and Exhibits 34 and 37 (“Reed
testimony”).15

3. Two Notices of Reliance on:
a. USPTO official records (Exhibits 63-76);16 and

b. Excerpts from the discovery depositions of Steve Jackson, Opposer’s
founder and President, and of Phil Reed, with accompanying
Exhibits 77-93.17

II. EVIDENTIARY OBJECTIONS
Applicant objects to passages of testimony from the Reed declaration and to
Exhibits 13, 14, 15 and 17 to the Reed declaration; the Internet printouts submitted
with Opposer’s first Notice of Reliance (Exhibits 33-42); and excerpts from the
discovery deposition of Brian Fargo (Exhibit 52, pages SJG000472-474 and

13 30 TTABVUE (confidential version); 31 TTABVUE (public version). Opposer designated
the public version of these excerpts as Exhibit 52 and the confidential version of these
excerpts as Exhibit 53.
14 36 TTABVUE (public version); 37 TTABVUE (confidential version).
15 Id.
16 33 TTABVUE.
17 34 TTABVUE (public version); 35 TTABVUE (confidential version).
Opposition No. 91225722
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SJG000496-505).18 We have considered each objection. For the reasons discussed
below, we deny the objections and admit the testimony and evidence.
A. The Reed Declaration and Exhibits 13-15 and 17.
Applicant argues that the select passages from the Reed declaration are not based
on personal knowledge and objects to the exhibits on the grounds that they lack
foundation, have not been authenticated, and are hearsay. The objections are
overruled. Mr. Reed attested to all facts set out in his declaration as having been
made on his personal knowledge (paragraph 2). He further authenticated Exhibits 13
and 14 in paragraphs 11 and 12 of his declaration, and authenticated Exhibits 15 and
17 in paragraphs 15 and 21.19 To the extent Exhibit 17 contains statements from a
third party, these have not been considered for the truth of the matter asserted. The
correspondence is considered only for what it shows on its face.
B. Internet Printouts (Exhibits 33-42).
The Internet printouts attached to Opposer’s first Notice of Reliance display a
URL address and the date each has been printed; as such they are self-authenticating
and admissible into evidence in the same manner as printed publications in general
circulation under Trademark Rule 2.122(e). See Swiss Watch Int’l Inc. v. Fed’n of the
Swiss Watch Indus., 101 USPQ2d 1731, 1735 (TTAB 2012) (“[P]rintouts from Internet

18 These pages are designated as Exhibits 77 and 78 to the Fargo deposition (31 TTABVUE
92-104).
19 Mr. Reed also testified that Exhibit 13 was based on paper-printed records of sales that he
had seen, 38 TTABVUE 26, and records provided by Opposer’s business office, Id. at 27-8.
Mr. Reed testified that Exhibit 14 was a report correcting discrepancies in Exhibit 13 that
were discovered during Mr. Reed’s discovery deposition. Id. at 29. He testified that Exhibit
15 was “2016 and 2017 sales of Autoduel product.” Id. at 30. He testified under seal regarding
the authenticity of Exhibit 17. Id. at 53.
Opposition No. 91225722
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webpages may now be made of record by notice of reliance, without requiring the
testimony of the witness printing out the webpages to introduce and authenticate
them”); Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010).
Nonetheless, the probative value of the Internet documents is limited to what they
show on their face. “Although they do not prove the truth of the statements made
therein, the printouts are acceptable to show that the statements were made or the
information was reported in the webpages.” Swiss Watch, 101 USPQ2d at 1735.
C. Exhibits 77 and 78 to the Fargo Deposition.
Exhibit 77 is the same as Exhibit 34 to Opposer’s Notice of Reliance on Internet
materials and for the reasons stated above, Applicant’s objections to this exhibit are
overruled. Moreover, the exhibit is authenticated by the witness.20 Exhibit 78 has
also been authenticated as an Internet post that the witness confirmed is a printout
from the gaming message board NeoGAF.21 Its URL and access date are indicated at
the bottom of the exhibit. We admit the documents as evidence but do not view them
for the truth of matters asserted therein.
III. STANDING
On August 4, 2017, the Board determined that Opposer has standing to bring this
proceeding, stating: “As a threshold matter, we find no genuine dispute of material
fact that Opposer has standing to bring this opposition proceeding.”22

20 31 TTABVUE 42.
21 31 TTABVUE 50.
22 18 TTABVUE 2.
Opposition No. 91225722
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IV. PRIORITY
To establish priority on a likelihood of confusion claim brought under Trademark
Act Section 2(d), a party must prove that, vis-à-vis the other party, it owns “a mark
or trade name previously used in the United States ... and not abandoned....”
Trademark Act Section 2, 15 U.S.C. § 1052. A party may establish its own prior
proprietary rights in a mark through ownership of a registration, actual use or
through use analogous to trademark use. See Trademark Act Sections 2(d) and 45, 15
U.S.C. §§ 1052(d) and 1127; T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879 (Fed. Cir. 1996). Here, Opposer has established its prior rights through actual
use.23
As background, Opposer first used the mark AUTODUEL in 1982, when it began
selling miniature figurines under the mark “AUTODUEL!”24 The figurines were
designed for use by players of Opposer’s “Car Wars” board game. Mr. Reed, Opposer’s
CEO, described Car Wars as a “vehicular combat board game where players build
vehicles with weapons, armor, and more, and then engage in combat in a post-
apocalyptic setting.”25 In 1985 or 1986, Opposer licensed use of the AUTODUEL mark
for a computer game to Origin Systems, Inc., who released the game on multiple
platforms from 1985 or 1986 to 1988; Opposer received royalties from the license at

23 Opposer’s pending application is evidence only that the application was filed on a certain
date; it is not evidence of use of the mark. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187,
1193 n.8 (TTAB 2007).
24 Reed declaration, 26 TTABVUE 3.
25 Id.
Opposition No. 91225722
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least through September 1992.26 Opposer subsequently licensed the mark to another
company called VictorMaxx in 1995-1996, and a prototype game was created, but the
company filed for bankruptcy before the game came to market.27 In 2015, Opposer
received an inquiry about a potential license for a video game but it was not
pursued.28 Opposer developed other products to supplement its Car Wars game using
the term AUTODUEL, as discussed below.
A. AUTODUEL QUARTERLY
The Board granted Opposer summary judgment on the issue of priority with
respect to digital versions of its quarterly publication “Autoduel Quarterly.”29 In
addition, Opposer has shown that it has continuously used the AUTODUEL
QUARTERLY mark since prior to Applicant’s filing date of July 23, 2015.30 Opposer
started selling “Autoduel Quarterly” in 1983 to supplement the Car Wars game and
released the present digital version in 2005.31 The publications feature “campaign
seeds, scenarios, vehicles, mock advertisements, new weapons and accessories, and

26 See 26 TTABVUE 9, noting that the license commenced in 1985 and that Opposer “received
royalties from this license through at least September 1992.” But see 26 TTABVUE 12: “The
original computer game was released in 1986 by Origin Systems.” See also 38 TTABVUE 96
and Exhibit C, 38 TTABVUE 204 (confidential copy of royalty statement from 1992).
27 26 TTABVUE 9.
28 26 TTABVUE 9 and confidential Exhibit 17 (correspondence pertaining to potential license
of AUTODUEL for video games).
29 18 TTABVUE 3.
30 Applicant does not contend that it has commenced use of the AUTODUEL mark.
31 26 TTABVUE 5 (chart). “Opposer’s Autoduel™ Quarterly game supplements have had the
widest availability over the years in various forms, including print/physical form (1983-1993),
free online availability in HTML format at sjgames.com (1995-2006), and digital download
(2005-present).” Id. at 10.
Opposition No. 91225722
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fiction relating to Car Wars world.”32 In 2015, Opposer launched a Kickstarter
campaign to fund “Car Wars Arenas,” and rewarded 1520 customers who contributed
to the campaign with a set of 16 issues of Autoduel Quarterly, in digital format.33
Opposer continues to sell digital versions of Autoduel Quarterly on its website, and
included a copy of a cover from one of the publications as an exhibit to Mr. Reed’s
testimony.
34

32 26 TTABVUE 5 (chart).
33 26 TTABVUE 6.
34 Exhibit 4, 26 TTABVUE 27. Opposer does not indicate whether this cover is from a print
or digital version of the quarterly.
Opposition No. 91225722
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B. GURPS AUTODUEL
“GURPS” is an acronym created by Opposer that stands for “Generic Universal
RolePlaying System.”35 As described by Mr. Reed, “GURPS® is a tabletop role-playing
game system designed to allow for play in any game setting. GURPS® Autoduel™ is a
role-playing ‘worldbook’ that provides gamers with the rules, background, setting,
and details necessary to conduct role-playing games using the underlying GURPS
system and set in the post-apocalyptic setting of Car Wars.”36 The first print edition
came out in 1986 (on left); the second print edition was published in 1996 or 1997 (on
right):37

35 Reed testimony, 38 TTABVUE 107.
36 Id.
37 “Opposer has…expanded the collection of products bearing the AUTODUEL Mark over
time with digital product releases of…GURPS® Autoduel™ Classic (in 2008)…and GURPS®
Autoduel™ Classic, First Edition (in 2017).” 26 TTABVUE 10.
Opposition No. 91225722
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38 39
Opposer has offered a digital version of the second edition of GURPS AUTODUEL
since 2008 and currently offers it on the website “Warehouse 23” as shown:

38 Exhibit 7, 26 TTABVUE 34.
39 Exhibit 12, 26 TTABVUE 50.
Opposition No. 91225722
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40

Mr. Reed testified:

40 Exhibit 18, 26 TTABVUE 60.
Opposition No. 91225722
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Q Can you look at paragraph 23 of your declaration, please.
A Yes.
Q First sentence says, “Today, consumers can visit
Opposer’s Warehouse23.com online retail store and
purchase no less than 50 different products bearing the
Autoduel mark.” Do you see that?
A Yes.
Q Within that 50 different products, you’re including 40
Autoduel quarterlies, for example?
A Yes.41
D. AUTODUEL AMERICA MAPS
In 1989, Opposer published “two full-color maps for use with Car Wars and
GURPS Autoduel” under the mark AUTODUEL AMERICA.42 In 2013, Opposer
released a digital version of the maps.43 An example of the print version is reproduced
below:

41 Reed testimony, 38 TTABVUE 55.
42 26 TTABVUE 6 (chart).
43 “Opposer has…expanded the collection of products bearing the AUTODUEL Mark over
time with digital product releases of…Autoduel™ America maps (in 2013)….” 26 TTABVUE
10.
Opposition No. 91225722
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44
Applicant argues that because Opposer no longer produces miniature figurines or
licenses its mark for use on computer games, and intentionally abandoned its prior
application for AUTODUEL45 and its registration for AUTODUEL!,46 that Opposer
cannot claim proprietary rights in the abandoned term. While it is true that Opposer
may not claim proprietary rights in an abandoned application or cancelled
registration, because Opposer has established that it has continuously sold digital
versions of GURPS AUTODUEL worldbooks (second edition since 2008),47

44 Exhibit 11, 26 TTABVUE 48. Opposer did not provide a copy of a digital version.
45 Application Serial No. 85940537.
46 Registration No. 1293028.
47 26 TTABVUE 10. Sales of the print version of GURPS AUTODUEL (first edition)
commenced in 1986 but were interrupted from 1990-1995 and from 2004-2007. Id. at 11. The
digital version of the first edition was released in 2017 and the digital version of the second
edition was released in 2008 (under the title GURPS Classic: Autoduel). Id. at 10.
Opposition No. 91225722
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AUTODUEL QUARTERLY supplements (since at least 2005),48 and AUTODUEL
AMERICA maps (since 2013).49 Opposer has established its priority with respect to
these products vis-à-vis the earliest date upon which Applicant may rely, July 23,
2015 (the filing date of its application).50 Accordingly, Opposer has established its
priority with respect to these goods.
V. LIKELIHOOD OF CONFUSION
Our determination of the issue of likelihood of confusion 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 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). We consider these factors and any likelihood of confusion factors about which
the parties introduced evidence or argued, and treat the remaining factors as
neutral.

48 26 TTABVUE 10; see also Exhibit 31 (Wayback Machine archive from 1998 showing
Autoduel Quarterly supplements available at Opposer’s sjgamees.com website).
49 26 TTABVUE 10. Starting about January 2018, some of Opposer’s “GURPS titles” have
also been sold on a third-party website, DriveThruRPG.com. 38 TTABVUE 47-9.
50 Opposer introduced evidence of sales of its AUTODUEL goods under seal, at confidential
Exhibits 13-15, showing, for example, units sold for physical print as well as digital versions
of AUTODUEL QUARTERLY (print version #1/1 through #10/4 from 1983 to 1992; digital
version #1/1 through #10/4 from 2005 to 2016); units sold of the first edition of GURPS
AUTODUEL (print version from 1986 to 1989); and units sold of the print and digital versions
of the second edition of GURPS AUTODUEL (print from 1996 to 2003; digital from 2008 to
2016). The Exhibits also indicate the sales units of digital versions of AUTODUEL AMERICA
maps sold from 2013 to 2016. Reed declaration, 26 TTABVUE 7 (discussing Exhibits 13 and
14), 26 TTABVUE 8 (discussing Exhibit 15).
Opposition No. 91225722
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A. STRENGTH OF OPPOSER’S MARK
The relative strength of a mark is determined by weighing two factors: (1) the
degree of inherent distinctiveness of the mark; and (2) the marketplace recognition
value of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010); Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 101
USPQ2d 1163, 1171-72 (TTAB 2011); Tea Board of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1899 (TTAB 2006).
Opposer has used AUTODUEL since 1982 to identify supplements to its CAR
WARS board game and has sold digital versions of AUTODUEL QUARTERLY,
GURPS AUTODUEL, and AUTODUEL AMERICA supplements since at least as
early as 2012. Opposer submitted confidential reports on units sold of these products.
The sales figures appear to be modest, and there are no figures of other game
manufacturers with which to compare Opposer’s sales in terms of either absolute
sales figures or market share. However, Internet materials submitted by Opposer
show that consumers recognize the AUTODUEL mark as being a mark used by
Opposer and its former licensee, Origin Systems, Inc. For example, media reports
describe Autoduel as “a racing/RPG51 based on the Steve Jackson Games pencil-and-

51 The abbreviation “RPG” stands for “role-playing game.” At https://www.merriam-
webster.com/dictionary/RPG, accessed January 11, 2019. The Board may take judicial notice
of dictionary definitions from references that are the electronic equivalent of a print reference
work. See In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB 2009); 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).
Opposition No. 91225722
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paper RPG Car Wars”52 and as “the vehicular combat game derived from Steve
Jackson Games’ Car Wars.”53 Reference is also made in online articles to Origin
Systems, Inc., Opposer’s license of the original game. One example reads:
Autoduel was released back in 1985 by developer Origin
Systems, and it was known for being a vehicular combat
game, with RPG elements. It was received well by critics,
although it never got a sequel and is currently unavailable
to purchase commercially (although the copyright is still
intact).54
Some observers on Twitter, reacting to the announcement that Applicant had applied
to register the AUTODUEL mark, recalled playing Origin Systems, Inc.’s
AUTODUEL game on old computer systems such as Commodore 64 and Atari ST.55
Conceptually, the term AUTODUEL used in connection with a vehicle combat
game is not merely descriptive, but inherently distinctive, suggesting in an abstract
manner that the play of the game will involve use of fantasy cars that somehow will
“duel” each other.56 However, even if we were to attribute some degree of inherent
weakness to the term AUTODUEL, it nonetheless would be entitled to protection
against registration of a similar mark for related goods. See In re FabFitFun, Inc.,

52 27 TTABVUE 13, Andy Chalk, “inXile files Autoduel trademark,” PG GAMER, October 22,
2015.
53 27 TTABVUE 21, Adam Smith, “Revving Up: InXile Expand, File Autoduel Trademark,”
ROCK PAPER SHOTGUN, October 23, 2015.
54 27 TTABVUE 32, Brandon Orselli, “inXile Entertainment Files Trademark for Autoduel,”
NICHE GAMER, October 23, 2015.
55 27 TTABVUE 10. A reader posts: “Am I going to have to bust out my commodore 64?”
Another posts: “I’ve spent countless hours on #Autoduel on my Atari ST. That bring[s] back
such fond memories.”
56 Although the evidence shows some use of the term “autodueling” to describe the fantasy
combat play among users of Opposer’s Car Wars game, we reject the argument that the mark
is therefore merely descriptive of Opposer’s worldbooks or supplements.
Opposition No. 91225722
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127 USPQ2d 1670, 1676 (TTAB 2018) (citing China Healthways Inst., Inc. v. Wang,
491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007)).
In light of the evidence, we find that Opposer’s AUTODUEL marks are known
among gamers, and that it is entitled to the normal scope of protection for an
inherently distinctive mark. We do not find that the marks are famous or otherwise
well-known.
B. THE MARKS
In comparing the marks, we consider their appearance, sound, meaning, and
commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “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). Nonetheless, “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.” In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant has applied to register the mark AUTODUEL for a computer game.
Opposer uses the term AUTODUEL in combination with other matter in marks for
digital publications designed to supplement a user’s ability to play Opposer’s vehicle
combat game Car Wars. The marks are similar in appearance, pronunciation,
connotation and commercial impression due to the presence in each of the identical
Opposition No. 91225722
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suggestive term AUTODUEL. Applicant argues that because Opposer’s publications
use the term AUTODUEL in combination with other terms such as “QUARTERLY”
and “GURPS,” the marks are not confusingly similar. However, the term
AUTODUEL is the dominant portion of Opposer’s marks. With respect to GURPS
AUTODUEL (displaying on Opposer’s website as GURPS CLASSIC: AUTODUEL),
the terms “GURPS” and “AUTODUEL” form separate commercial impressions, as
shown by the illustrated covers above. With respect to AUTODUEL QUARTERLY,
because the publication was initially released on a quarterly basis, the term
“quarterly” is descriptive and thus stands in a subordinate position. See, e.g., In re
Chatam Int’l. Inc., 71 USPQ2d at 1946 (finding descriptive term “offering little to
alter the commercial impression of the mark”); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (the ‘descriptive component of a
mark may be given little weight in reaching a conclusion on the likelihood of
confusion.’”) (quoting Nat’l Data, 224 USPQ at 752.
Moreover, the term AUTODUEL forms Applicant’s entire mark. “Marks have
frequently been found to be similar where one mark incorporates the entirety of
another mark, as is the case here.” Tivo Brands LLC v. Tivoli, LLC, 129 USPQ2d
1097, 1115 (TTAB 2018); see also Stone Lion Capital Partners, L.P. v. Lion Capital
LLP, 746 F.3d 1317, 1322 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming Board’s
finding that the mark STONE LION CAPITAL incorporated the entirety of the
registered marks LION CAPITAL and LION, that the noun LION was the dominant
part of both parties’ marks, and that confusion was likely); In re Toshiba Med. Sys.
Opposition No. 91225722
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Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI
diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause
confusion, noting that the marks are more similar than they are different and that
the addition of applicant’s “product mark,” VANTAGE, to the registered mark would
not avoid confusion); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding
CAREER IMAGE (stylized) for clothing and retail women’s clothing store services,
and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion,
noting that CAREER IMAGE would be perceived by consumers as a shortened form
of CREST CAREER IMAGES).
Because the marks are similar in appearance, sound, connotation and commercial
impression, the first du Pont factor strongly favors a finding of likelihood of confusion.
C. THE GOODS
We determine the relatedness of the goods at issue by comparing Applicant’s goods
as identified in the application, namely “online downloadable computer and video
game programs, and interactive video game programs,” and those goods of Opposer
for which it has proven priority, namely GURPS AUTODUEL worldbooks,
AUTODUEL QUARTERLY publications, and AUTODUEL AMERICA maps. See In
re Elbaum, 211 USPQ 639 (TTAB 1981) (determining relatedness of goods as they
are recited in Applicant’s application). The respective goods need not be identical or
even competitive in order to find that they are related for purposes of our likelihood
of confusion analysis but need only be “related in some manner and/or if the
circumstances surrounding their marketing [be] such that they could give rise to the
mistaken belief that the goods emanate from the same source.” Coach Servs., 101
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USPQ2d at 1722; see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984). The issue, of course, is not whether
purchasers would confuse the goods or services, but rather whether there is a
likelihood of confusion as to their source. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000); In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB
2018).
Opposer argues that the respective goods are related for several reasons. First,
“both Opposer’s AUTODUEL products and Applicant’s proposed AUTODUEL game
are vehicular combat games in a post-apocalyptic setting.”57 Applicant does not
dispute this characterization. Second, Opposer asserts that both parties are known
for making role-playing games.58 Again, Applicant does not dispute this assertion,
although Applicant argues that its version of AUTODUEL may not be a role-playing
game.59 Third, “it is common in the industry for intellectual property, including
trademarks, to be licensed from makers of video games to makers of tabletop games,
and vice versa.”60 In support of this contention, Opposer notes that it previously
licensed the AUTODUEL mark to Origin Systems, Inc. for a vehicle combat video
game, and that its GURPS supplements were published for use with third-party video
games. Its “GURPS® Myth” was based “on the Myth computer game series that was

57 41 TTABVUE 23.
58 41 TTABVUE 23.
59 In a confidential passage from his deposition, Mr. Fargo discusses various role-playing
games Applicant has produced. 30 TTABVUE 25-26.
60 41 TTABVUE 23.
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released by the publisher Bungie,”61 and it also released “GURPS® Alpha Centauri,
which was based on the computer game Sid Meier’s Alpha Centauri released by the
publisher Electronic Arts.”62 Recently, “Opposer worked with developer Auroch
Digital to produce a tank warfare computer game, OGRE®, based on its classic tank
warfare board game.”63 Opposer is also working “with developer Asmodee Digital to
produce a digital adaptation of [Opposer’s] MUNCHKIN board game.”64 In
Applicant’s confidential testimony, it indicated that it had also produced video games
from tabletop games.65 These examples show that manufacturers of computer games
license the right to use their marks to makers of board games and vice versa.
The second du Pont factor favors likelihood of confusion.
D. TRADE CHANNELS; CLASSES OF CONSUMERS
Opposer’s AUTODUEL products are currently available on its website and on one
other party’s website. Opposer’s mobile games and applications have a wider
distribution; they “are offered or sold through the Apple App Store, the Google Play
store, the Microsoft/Windows Phone store.”66 Applicant also plans to offer its game

61 26 TTABVUE 12.
62 Id.
63 Id.
64 Id.
65 30 TTABVUE 25, 149-50.
66 26 TTABVUE 12.
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“at least through the Ios and Google Android store,”67 and is considering “a mobile
phone version of Autoduel.”68
Opposer’s recently released OGRE computer game is distributed through the
“Steam” digital distribution platform.69 Applicant also intends to sell its Autoduel
game “on third party gaming sites such as iTunes and Steam.”70
Applicant argues that it is irrelevant that Opposer sells games through Steam,
the Apple App Store and the Google Play store because Opposer’s AUTODUEL
products are not games, “they are supplements to a board game, and the only place a
person has been able to purchase such products for the past ten plus years is on a
single website operated by Opposer.”71 We agree that the Internet is a vast market,
and the fact that goods are sold over the Internet does not necessarily make them
available through the same trade channels. On the other hand, there is no dispute
that Opposer’s games are sold through the same trade channels as are Applicant’s
games, and that people who enjoy playing games include those who enjoy playing
computer games as well as board games. We also note that both parties have used

67 Applicant’s Response to Opposer’s Interrogatory No. 12, 28 TTABVUE 11.
68 36 TTABVUE 6.
69 26 TTABVUE 12.
70 36 TTABVUE 9.
71 43 TTABVUE 25. As noted supra, a third party also sells Opposer’s AUTODUEL products
on its website, www.drivethrurpg.com. 38 TTABVUE 48.
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the Kickstarter crowdfunding platform to fund their game releases72 and that both
attend industry trade shows.73
Accordingly, the third du Pont factor, whether the established, likely-to-continue
trade channels are similar, favors a finding of likelihood of confusion.
E. ACTUAL CONFUSION
Opposer argues that there has been actual confusion regarding the anticipated
release of an AUTODUEL computer game from Applicant. In support, Opposer
submitted copies of a tweet from Brian Fargo, Applicant’s CEO (whose Twitter handle
is “@BrianFargo”) following an announcement from RPG Codex (a gaming news site)
in which RPG Codex reports on Applicant’s trademark filing. Mr. Fargo tweets: “Once
again the Codex is the first on the scene….”74 Several of the readers of Mr. Fargo’s
tweet posted their own tweets in response. One such reader posited a licensing
relationship between Applicant and Opposer:

72 26 TTABVUE 13 (Opposer); 30 TTABVUE 146 (confidential; Applicant).
73 Mr. Reed testified that “Opposer’s representatives also appear at industry conventions that
are open to the public,” 26 TTABVUE 13, and Mr. Fargo testified that he personally attends
trade shows. 31 TTABVUE 67.
74 27 TTABVUE 9 (Exhibit 34).
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75
In an article on a PC Game reviewing site, ROCK PAPER SHOTGUN, the writer
discusses Applicant’s physical studio expansion and AUTODUEL trademark filing
(presuming it is under license):
[Applicant] is expanding, with a New Orleans satellite
studio set to open and create 50 new jobs over the next five
years.
A trademark filing spotted by the RPG Codex suggests one
possible reason for the expansion - another license for
another RPG. This time it’s Autoduel, the vehicular combat
game derived from Steve Jackson Games’ Car Wars.76
Applicant posted a copy of its trademark application on its website.77 It is followed
by postings from several readers, discussing the filing; one presumes there is a license
in place:

75 27 TTABVUE 10.
76 27 TTABVUE 21. Adam Smith, “Revving Up: InXile Expand, File Autoduel Trademark,”
ROCK PAPER SHOTGUN, October 23, 2015.
77 27 TTABVUE 44.
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78
Applicant argues that there is no convincing evidence of actual confusion because
“evidence of persons wondering whether Applicant’s game is related to Origin
Systems’ thirty year old game is not evidence of confusion,”79 and because the articles
Opposer relies upon to prove actual confusion “recognize that the ‘autoduel’ mark had
not been used for more than twenty years.”80 Despite the recognition that Opposer’s
computer game (made under license to Origin Systems, Inc.) was no longer being
made, and the fact that some of the readers merely inquired as to whether Applicant’s
game would be related to Opposer’s earlier licensed game, a sufficient number of
postings on their face show that the reader believed a license was in place.
Accordingly, we find that Opposer has made a showing of actual confusion. This du
Pont factor favors a finding of likelihood of confusion.
VI. CONCLUSION
After considering all of the evidence made of record pertaining to the issue of
likelihood of confusion, as well as all of the arguments related thereto, including any

78 27 TTABVUE 45.
79 43 TTABVUE 27.
80 43 TTABVUE 28.
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evidence and arguments not specifically discussed in this opinion, we conclude that
confusion is likely between Applicant’s AUTODUEL mark for “[p]roviding online
downloadable computer and video game programs; [i]nteractive video game
programs” and Opposer’s marks AUTODUEL QUARTERLY, GURPS AUTODUEL,
and AUTODUEL AMERICA used in connection with supplements for Opposer’s Car
Wars game. We conclude so principally due to the similarities between the marks,
the relatedness of the goods, the identity in classes of purchasers and Opposer’s
showing of actual confusion by some members of the gaming community.
VII. BONA FIDE INTENT TO USE
Because we have found Applicant’s AUTODUEL mark to be confusingly similar
to Opposer’s pleaded AUTODUEL marks, we need not address Opposer’s alternative
claim that Applicant lacked a bona fide intent to use the mark when it filed its
AUTODUEL application. See Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170,
1172 (TTAB 2013) (“We see no point in going forward with a fraud claim when entry
of judgment on the abandonment claim will result in cancellation of the registration,
and judgment on the claim of fraud — which relates specifically to the procurement
of the involved registration itself — would neither bar applicant from filing a new
application nor allow petitioner to challenge it on the basis of claim preclusion.”).
Decision: The opposition on the ground of likelihood of confusion is sustained.