Tinderbox Entertainment, LLCv.Flint & Tinder Studios, LLC DBA Flint & Tinder Studios

Trademark Trial and Appeal Board

Aug 1, 2018

No. 91227247 (T.T.A.B. Aug. 1, 2018)

Mailed: August 1, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tinderbox Entertainment, LLC
v.
Flint & Tinder Studios, LLC DBA Flint & Tinder Studios
_____

Opposition No. 91227247
_____

Bryan Wasetis, Aspect Law Group, LLC,
for Tinderbox Entertainment, LLC.

Flint & Tinder Studios, LLC DBA Flint & Tinder Studios,
pro se.1
_____

Before Mermelstein, Hightower, and Lynch,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Flint & Tinder Studios, LLC DBA Flint & Tinder Studios seeks to
register the mark on the Principal Register for “arcade
game machines for team play; arcade video game machines” in International Class

1 Flint & Tinder Studios, LLC DBA Flint & Tinder Studios acted in this proceeding through
its principal member, Jack Meade. See Patent and Trademark Office Rule 11.14(e)(3),
37 C.F.R. § 11.14(e)(3); TBMP § 114.01 (2018).
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91227247
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28.2 Opposer Tinderbox Entertainment, LLC, opposes registration on the following
grounds:
(1) likelihood of confusion with its mark TINDERBOX ENTERTAINMENT,
previously used for goods including game software, pursuant to Trademark
Act Section 2(d), 15 U.S.C. § 1052(d); and
(2) the application is void ab initio under Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a), because Applicant had not commenced use of the mark on or in
connection with the goods identified in the application as of the filing date.
We sustain the opposition pursuant to Trademark Act Section 2(d).
I. Record
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Opposer submitted the following evidence:
• A notice of reliance on USPTO database records and search results,
Internet printouts, and Applicant’s discovery responses, Exhibits 1-14
(17 TTABVUE).
• Testimony declarations of:
1. Kyle Rhone, Opposer’s principal member, with Exhibits A-H (“Rhone
Dec.”) (18 TTABVUE); and
2. Jake Richmond, owner of webcomic Modest Medusa (“Richmond
Dec.”) (19 TTABVUE).
Applicant submitted neither evidence nor a brief. Nonetheless, the filing of a brief
on the case is optional, not mandatory, for a party in the position of defendant. See
Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1); Trademark Trial and Appeal

2 Application Serial No. 86784325 was filed October 11, 2015, alleging first use of the mark
on August 11, 2015, and first use in commerce on August 28, 2015, pursuant to Trademark
Act Section 1(a), 15 U.S.C. § 1051(a). The description of the mark states: “The mark consists
of the name ‘TinderBox’ in a [sic] hand drawn capital letters, with the ‘T’ and ‘B’ larger than
the other letters. ‘TinderBox’ is surrounded by a thick, hand drawn rectangular border which
extends from and ties into the letter ‘T’.” Color is not claimed as a feature of the mark.
Opposition No. 91227247
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Board Manual of Procedure (TBMP) § 801.02(b) (2018). The burden of proof to
establish the elements of its claim remains with Opposer whether or not Applicant
offers any evidence or files a brief. See, e.g., B&B Hardware, Inc. v. Hargis Indus.,
Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015).
II. Opposer’s Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Under Section 13 of the
Trademark Act, 15 U.S.C. § 1063, a party with a real interest in the proceeding and
a reasonable belief that it would be damaged by a registration has standing to oppose.
Opposer owns trademark application Serial No. 87107636, filed July 18, 2016, for
TINDERBOX ENTERTAINMENT (in standard characters, “ENTERTAINMENT”
disclaimed) for “game software” in International Class 9 and “dice; dice games;
equipment sold as a unit for playing board games; board games; dice games [sic];
tabletop games” in International Class 28. Rhone Dec. ¶ 17 & Exhibit G, 18
TTABVUE 7, 41-43; Notice of Reliance, Exhibit 1, 17 TTABVUE 6-8. Opposer
submitted evidence that its application has been suspended based on a potential
likelihood of confusion with the mark in Applicant’s earlier-filed application. Rhone
Dec. at ¶ 18 & Exhibit H, 18 TTABVUE 7, 44-50; Notice of Reliance, Exhibit 2, 17
TTABVUE 9-15. This evidence demonstrates that Opposer has a real interest in the
proceeding and a reasonable belief that it would be damaged by registration of
Opposition No. 91227247
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Applicant’s mark, establishing its standing. Life Zone Inc. v. Middleman Grp. Inc., 87
USPQ2d 1953, 1959 (TTAB 2008).
III. Priority
In Applicant’s discovery responses introduced by Opposer, Applicant identified its
first use date as August 11, 2015. Applicant’s Response to Opposer’s Interrogatory
No. 3, 17 TTABVUE 212. Opposer submitted testimony that it has continuously used
its mark TINDERBOX ENTERTAINMENT in commerce for both game software and
other goods3 since at least September 2008. Rhone Dec. ¶ 4, 18 TTABVUE 4. We find
this testimony establishes Opposer’s use as of September 2008.
By showing first use of its inherently distinctive mark nearly seven years before
Applicant’s first use date, Opposer has established common-law priority in the
TINDERBOX ENTERTAINMENT mark. Because Opposer has established priority
of use, we proceed to analyze whether Applicant’s mark is likely to cause confusion
with Opposer’s mark.
IV. Likelihood of Confusion
We assess all probative facts in evidence that are relevant to the factors bearing
on the issue of 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 Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services, the first two du Pont factors. See Federated

3 Dice, dice games, equipment sold as a unit for playing board games, board games, and table
top games.
Opposition No. 91227247
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Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”). As noted supra, Opposer bears the burden of proving its claim of likelihood
of confusion, by a preponderance of the evidence. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000). We address in turn the du Pont
factors dispositive of this proceeding.
A. Similarity of the Marks
The first du Pont factor is the similarity of the parties’ marks. In a likelihood of
confusion analysis, we compare the marks in their entireties for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1160 (Fed. Cir. 2014). “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) (quotation omitted).
For marks consisting of wording and a design, the verbal portion normally is
accorded greater weight because it is likely to make a greater impression on
purchasers, to be remembered by them, and to be used by them to request the goods.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); see also,
e.g., In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). Here,
the lightly stylized wording “TinderBox,” which is incorporated into a relatively plain
Opposition No. 91227247
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rectangular carrier, is the dominant portion of Applicant’s mark .
Because it appears first in the mark and because “entertainment” is descriptive for
Opposer’s games and game software, we find that TINDERBOX also is the dominant
element of Opposer’s mark TINDERBOX ENTERTAINMENT. See, e.g., Palm Bay
Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods. Inc. v. Nice-Pak Prods. Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
While there is no rule that likelihood of confusion automatically applies where
Opposer’s mark encompasses Applicant’s entire mark, the fact that the literal portion
of Applicant’s mark is subsumed by Opposer’s mark increases the similarity between
the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (affirming decision finding applicant’s mark ML similar to registered mark
ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ
406, 407 (CCPA 1967) (affirming that THE LILLY is likely to be confused with LILLI
ANN); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660-61 (TTAB 2014)
(finding applicant’s mark PRECISION similar to opposer’s mark PRECISION
DISTRIBUTION CONTROL); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)
(finding applicant’s CAREER IMAGE marks similar to registered mark CREST
CAREER IMAGES).
For these reasons, we find Applicant’s mark highly similar to
Opposer’s mark TINDERBOX ENTERTAINMENT in sight, sound, meaning, and
Opposition No. 91227247
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overall commercial impression. The first du Pont factor weighs heavily in favor of a
finding that confusion is likely.
B. Similarity of the Goods
We next consider the second du Pont factor, the similarity or dissimilarity of the
parties’ goods. Our analysis is based on the identification of goods as set forth in the
application. Stone Lion, 110 USPQ2d at 1162. In this case, we compare Applicant’s
identified goods to the goods in which Opposer has proven its priority. See, e.g., Bell’s
Brewery, 125 USPQ2d at 1344 (finding prior proprietary rights in both opposer’s
registered and common-law marks).
Applicant’s goods are identified as “arcade game machines for team play; arcade
video game machines.” The goods in which Opposer has established priority include
game software, as discussed supra. Opposer submitted testimony that: “It is common
in the game product industry for businesses to manufacture or develop both game
software, such as video games, and hardware used to play games, such as gaming
equipment or tabletop games.” Rhone Dec. ¶ 5, 18 TTABVUE 5. This evidence
indicates that the parties’ respective goods are of a type that consumers would expect
to emanate from the same source under the same mark.
In addition, Applicant admits that its goods were developed, and are built, to play
game software, demonstrating that arcade game machines and game software are
related and complementary. Applicant’s Responses to Opposer’s Requests for
Admission Nos. 56, 62, Notice of Reliance, Exhibit 14, 17 TTABVUE 281-82. Cf., e.g.,
Hewlett-Packard Dev. Co. v. Vudu Inc., 92 USPQ2d 1630, 1633 (TTAB 2009) (granting
partial summary judgment on likelihood of confusion and finding that, “by their
Opposition No. 91227247
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descriptions, applicant’s particular type of software for computers and opposer’s
personal and gaming computers are complementary goods”). “[C]omplementary use
has long been recognized as a relevant consideration in determining a likelihood of
confusion.” In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984).
Based on the evidence of record, we find Applicant’s arcade game machines to be
related and complementary to Opposer’s game software. The second du Pont factor
also weighs in favor of a finding that confusion is likely.
C. Actual Confusion
Finally, we address the seventh du Pont factor, the nature and extent of any
actual confusion. A showing of actual confusion may be highly probative, if not
conclusive, of a likelihood of confusion. Majestic Distilling, 65 USPQ2d at 1205.
Evidence of actual confusion is difficult to obtain, however, and is not necessary to
show a likelihood of confusion. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d
1546, 14 USPQ2d 1840, 1843 (Fed. Cir. 1990); Lebanon Seaboard Corp. v. R&R Turf
Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012).
Opposer introduced the testimony declaration of Jake Richmond, who has worked
in the game industry for more than 15 years and is familiar with Opposer, its goods,
and its use of the TINDERBOX ENTERTAINMENT mark, having worked with
Opposer on a project in the past. Richmond Dec. ¶¶ 2-3, 19 TTABVUE 4.
Mr. Richmond testified that he encountered Applicant’s booth displaying games and
promotional material at the Portland Retro Gaming Expo in Fall 2015. Id. at ¶¶ 4-5,
Opposition No. 91227247
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19 TTABVUE 5. Mr. Richmond “believed at the time that the booth and the goods on
display were those of Tinderbox Entertainment because of the use of the ‘Tinderbox’
mark at the booth.” Id. at ¶ 12, 19 TTABVUE 6. He learned only “a few weeks later”
that the booth he visited was Applicant’s, not Opposer’s. Id. at ¶ 10, 19 TTABVUE 5-
6. Mr. Richmond testified:
I found the whole situation to be confusing. I was confused
at the time at Portland Retro Gaming Expo that the
“Tinderbox” booth I had visited was not one owned, run, or
sponsored by Tinderbox Entertainment, and that the goods
at the booth were not the goods of Tinderbox
Entertainment or sponsored by or affiliated with Tinderbox
Entertainment.
Id. at ¶ 11, 19 TTABVUE 6.
Similarly, Opposer introduced evidence of a Twitter exchange indicating that a
user mistook Opposer as the creator and source of Applicant’s goods. See Rhone Dec.
¶ 14 & Exhibit F, 18 TTABVUE 6, 39-40. Also, Applicant stated in its discovery
responses that “a personal acquaintance of Opposer approached Applicant at a
convention (South by Southwest, or SXSW) in Austin, Texas, and asked if Applicant
worked with Opposer and was informed otherwise.” Applicant’s Response to
Opposer’s Interrogatory No. 14, Notice of Reliance, Exhibit 12, 17 TTABVUE 214.
Missing is evidence that Mr. Richmond, the Twitter user, or Opposer’s
acquaintance are purchasers or prospective purchasers of game software or arcade
game machines. See Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713,
21 USPQ2d 1388, 1390 (Fed. Cir. 1992) (stating that “our concern is directed
primarily toward the likelihood of confusion among actual and potential purchasers”).
Nonetheless, although we give this evidence little probative value, it is consistent
Opposition No. 91227247
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with our evaluation of the first and second du Pont factors and our assessment as to
whether confusion is likely.
D. Conclusion as to Likelihood of Confusion
We have carefully considered all arguments and evidence, including the
arguments and evidence not specifically discussed. We have found that the first and
second du Pont factors support a conclusion that confusion is likely and treat the
remaining factors as neutral. We find that Opposer has carried its burden to establish
by a preponderance of the evidence that Applicant’s mark is likely to
cause consumer confusion with Opposer’s mark TINDERBOX ENTERTAINMENT
for game software when used in association with the goods identified in the subject
application.
V. Opposer’s Non-Use Claim
Because we have found for Opposer on its likelihood of confusion claim, we need
not reach the merits of its claim that the subject application is void ab initio due to
non-use. See Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170 (TTAB 2013).
Decision: The opposition to registration of application Serial No. 86784325 is
sustained based on a likelihood of confusion under Trademark Act Section 2(d).