U.S. Games Systems, Inc.

Trademark Trial and Appeal Board

Jan 12, 2012

No. 75983708 (T.T.A.B. Jan. 12, 2012)

Hearing: Mailed:
February 2, 2011 January 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re U.S. Games Systems, Inc.
________

Serial Nos. 75463414, 75463415, 75463417, 75983705,
75983707 and 75983708
_______

Thomas J. Moore of Bacon & Thomas, PLLC for U.S. Games
Systems, Inc.

Dezmona J. Mizelle-Howard, Trademark Examining Attorney,
Law Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Taylor and Lykos, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Applicant U.S. Games Systems, Inc. originally filed
applications Serial Nos. 75463414, 76463415 and 75463417,
and an oral hearing on the appeals for these applications
was held on February 9, 2011. At the hearing applicant
indicated that it wanted the Board to make a separate
determination as to the registrability of its marks for
tarot cards and for services involving tarot cards and, as
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

2
a result, it subsequently submitted a request to divide the
three applications in order to place tarot cards and
services involving tarot cards in child applications. The
Intent to Use Division completed applicant’s requests to
divide the applications, and the applications now involved
in this appeal are as follows:
Application Serial No. 75463414 (parent) for
USGAMESINC in typed form1 for “electronic games
comprised of computer software” in Class 9; “card
games; board games; hand-held units for playing
electronic games” (Class 28); and “on-line
distribution services and on-line wholesale
services featuring card games, board games,
stories, and collectibles; on-line retail store
services featuring card games, board games, and
collectibles” (Class 35); and “providing
information over a global computer network
featuring card games, stories, and directories
for card games, board games, and collectibles”
(Class 42);

Application Serial No. 75983705, the child
application of Serial No. 75463414 for the same
mark, USGAMESINC, for “tarot cards” (Class 28),
“on-line distribution services and on-line
wholesale services featuring tarot cards, on-line
retail store services featuring tarot cards”
(Class 35) and “providing information over a
global computer network featuring tarot cards,
and directories for tarot cards” (Class 42);

Application Serial No. 75463415 (parent) for
USGAMES in typed form for “providing information
over a global computer network featuring board
games, card games, stories, directories for board
games, card games, and collectibles”;

1 Prior to November 2, 2003, “standard character” drawings were
known as “typed” drawing. These applications were filed in 1999.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

3
Application Serial No. 75983707, the child
application of Serial No. 75463415 for the same
mark, USGAMES, for “providing information over a
global computer network featuring tarot cards,
and directories for tarot cards”;

Application Serial No. 75463417 (parent) for U.S.
GAMES SYSTEMS, INC. in typed form, with GAMES and
INC. disclaimed, for “board games, card games”
(Class 28); and

Application Serial No. 75463708, the child
application of Serial No. 75463417 for the same
mark, U.S. GAMES SYSTEMS, INC., for “tarot cards”
(Class 28).

All of the applications have a filing date of March 31,
1998, and all seek registration pursuant to Section 2(f) of
the Trademark Act. Application Serial Nos. 75463417 and
75983708 assert 1968 as the date of first use and first use
in commerce;2 the other applications are based on an
asserted bona fide intent to use the mark pursuant to
Section 1(b).3
Registration of the applications has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), in light of Registration No. 1246494 for U.S.

2 Although applicant originally claimed in Serial No. 75463417
that its mark was first used in 1968 and was first used in
commerce as early as 1970, it amended the application on December
27, 1999 to assert a date of first use in commerce “at least as
early as 1968.” When this parent application was divided, the
child application, Serial No. 75463708, retained that use date.
3 We assume that the examining attorney accepted the Section
2(f) claim for the applications for which there had been no use
based on applicant’s use of the marks on related goods. See TMEP
§ 1212.09(a).
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

4
GAMES, in typed form, for “playing equipment for physical
exercise games--namely, bats of various sizes and shapes,
balls of various sizes and shapes, ring-shaped pucks for a
hockey-type game, goals, nets, game boundary markers, and
storage and transportation bags and containers for the
foregoing sold separately or in combination with the
foregoing” (Class 28) and “mail order services in the field
of games, toys, and sporting goods” (Class 42).4 The
registration issued under Section 2(f).
Background
These applications have had a very long history at the
USPTO. Final refusals of registration issued in connection
with the parent applications in 1999, and notices of appeal
were filed in 2000. Proceedings were suspended in 2001 in
view of applicant’s petition to cancel the cited
registration. That cancellation proceeding, Cancellation
No. 92032131, was not terminated until 2010, when applicant
withdrew the petition, and the cancellation petition was
dismissed with prejudice. Thus, the cited registration

4 Registration No. 1246494 issued on July 26, 1983; a Section 8
affidavit was accepted and a Section 15 affidavit was
acknowledged, and the registration has been renewed. At the time
the registration issued the mark was shown as U.S. GAMES, INC.;
the registration was subsequently amended to show the mark as
U.S. GAMES.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

5
continues to be a bar to the registration of applicant’s
marks.
In 2010, proceedings in the appeals of the three
parent applications were resumed, briefs were filed, and an
oral hearing was held on February 2, 2011. Because of the
substantial time that had passed between the close of
prosecution in 2000, and the resumption of the appeals for
briefing in 2010, applicant had indicated at the oral
hearing that it might request remand to submit additional
evidence, a request to which the examining attorney
consented. After the applications were divided, applicant
filed such requests for remand on April 20, 2011. The
Board granted the requests on April 22, 2011, indicating
that, because of the advanced stage of the appeal, the
examining attorney could, for each application, respond to
applicant’s evidence and submit additional evidence in
support of her position as part of a supplemental examining
attorney brief. The examining attorney included some new
evidence with her supplemental briefs, and made clear that
the division of applicant’s applications did not obviate
the refusals to register the marks. Thus, the Section 2(d)
refusal on the basis of Registration No. 1246494 has been
maintained for the child applications. Hence, the issue in
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

6
the six appeals before us is whether applicant’s marks for
the various goods and services are likely to cause
confusion with the mark in that registration. Because the
appeals involve similar questions of law and fact, we
hereby consolidate the appeals and determine them in this
single opinion.
Likelihood of Confusion
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).
Because each parent application was divided after the
oral hearing, the brief and reply brief that were filed in
each parent application are applicable to the respective
child application, although the supplemental examining
attorney’s brief and the supplemental reply brief are not.
Accordingly, we will discuss each paired parent and child
application together, specifically addressing the different
goods or services in each.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

7
First, though, we will address arguments made by
applicant in connection with each application. Applicant
has argued that the registrant and applicant are companies
located in the United States and use their marks for games
and game-related services. Applicant also states that no
party is entitled to the exclusive use of a generic term,
i.e., “game.” It appears that applicant is asserting that
the registered mark is weak, and entitled to a limited
scope of protection. Although we would agree that “U.S.”
would be geographically descriptive of the registrant’s
goods and services, and “games” would be at least merely
descriptive if not generic of the registrant’s identified
equipment for playing games, and mail order services in the
field of games, we must point out that the mark was
registered under Section 2(f). Thus, whatever
descriptiveness the individual elements of the mark may
have, U.S. GAMES had acquired distinctiveness as a mark
prior to its registration in 1983.5 We also point out that

5 During prosecution of these applications, in responses filed
in 1999, applicant claimed that the components of the registered
mark and the components of applicant’s marks have each been
incorporated into a “relatively large number of trade names,
trademarks and service marks owned by a number of different
parties.” Applicant did not submit copies of any registrations
or examples of actual use of any marks or trade names. In any
event, the registrant’s mark has acquired distinctiveness as a
whole, and third-party use of individual elements has no effect
on that. Further, as discussed infra, the similarity of the
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

8
even weak marks are entitled to protection from the
registration of similar marks for similar goods or
services, factors that we discuss subsequently in this
opinion.
Applicant also argues, with respect to each of the
applications, that the du Pont factors of market interface
and no evidence of actual confusion favor applicant.
Applicant’s arguments center on the cancellation proceeding
it brought against the registrant’s registration.
Applicant points to the fact that in answering the petition
for cancellation, the registrant denied that applicant’s
name U.S. GAMES is so similar to registrant’s mark that a
connection between applicant and the registrant would be
presumed, and did not assert a counterclaim alleging
likelihood of confusion. Applicant appears to argue that
this denial, as well as the registrant’s asserted failure
to take any action for what it characterizes as more than
38 years of simultaneous use, acts as laches or estoppel or
acquiescence.
We are not persuaded by these arguments. In terms of
the cancellation proceeding, applicant brought a petition

marks is not based on the inclusion of the individual common
elements, such as US or GAMES, but on a comparison of the marks
as a whole.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

9
to cancel the registrant’s registration, asserting in its
amended petition for cancellation the Section 2(a) ground
of false suggestion of a connection.6 As part of that
allegation, applicant (petitioner) alleged that “The
registered mark U.S. GAMES INC., is the same as, or a close
approximation of Petitioner’s previously used name or
identity U.S. GAMES because the term ‘INC.’ in the
registered mark is non-distinctive and generic.”
Registrant denied all of the salient allegations in the
petition for cancellation, including the allegations
relating to applicant’s false suggestion of a connection
claim. We do not regard the denial of the allegation as an
admission of the opposite of that allegation, i.e., that
the registrant has stated that U.S. GAMES INC. is not the
same as, or a close approximation of Petitioner’s
previously used name or identity U.S. GAMES. Further, a
denial of the compound statements in applicant’s allegation
could go to any or all of the assertions, including that

6 Applicant’s original petition to cancel was dismissed for
failure to state a claim, but applicant was allowed to file an
amended petition to cancel. The amended petition also asserts
generally, and as part of the allegation of a false suggestion of
a connection, that the registrant’s mark comprises deceptive
matter and matter which may disparage applicant. The Board
dismissed those claims in its August 27, 2004 order, noting that
applicant had twice failed to adequately plead these grounds.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

10
U.S. GAMES is not petitioner’s previously used name or
identity.
As for applicant’s claim that the registrant did not
assert a counterclaim on the ground of likelihood of
confusion, the registrant could not do so because applicant
did not and could not assert ownership of a registration
for the marks and goods/services at issue herein. Put
another way, because applicant does not own registrations
for the marks that are the subject of this appeal, the
registrant could not counterclaim to cancel such
registrations, and therefore no conclusion can be drawn
from the absence of any counterclaims.
Applicant also claims that the registrant could not
object to the registration of its marks because of laches,
acquiescence and estoppel, due to over 38 years of
simultaneous use without objection by the registrant. The
du Pont factor of market interface between applicant and
the owner of a prior mark references “laches and estoppel
attributable to owner of prior mark and indicative of lack
of confusion.” However, it is settled that the equitable
defenses of laches, acquiescence and estoppel are not
applicable in ex parte proceedings. In re Opus One Inc.,
60 USPQ2d 1812 (TTAB 2001). “The owner of the prior
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

11
registration is not a party to the applicant’s ex parte
appeal; accordingly, any equitable defenses, including
laches and acquiescence, which the applicant might be able
to assert against the registrant in an inter partes case
are unavailable to the applicant in an ex parte proceeding.
Id. at 1821.
Nor can we view the registrant’s actions as indicating
that it believes that applicant’s marks are not likely to
cause confusion. As the Board has previously stated, there
can be various reasons, apart from such a belief, why a
registrant might not raise an objection to an applicant’s
use of a mark. See In re Opus One Inc., 60 USPQ2d at 1822.
In this case, because two of the parent applications in
existence at the time of the cancellation proceeding were
based on intent-to-use, the registrant could have decided
that there was no point in objecting or bringing a
proceeding then. This, of course, is speculation on our
part. What we do know is that the registrant defended
against the cancellation brought by applicant, and there is
nothing in the record before us indicating any agreement or
consent by the registrant to the registration of
applicant’s marks. Certainly if the registrant had no
objection, it could have provided applicant with a consent,
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

12
especially if by doing so it could have avoided or settled
the cancellation proceeding. We also point out that, even
if we could assume that the registrant had no objection to
applicant’s use of its various marks, it does not
necessarily follow that the registrant would have no
objection to their registration.
With respect to the du Pont factor of the absence of
evidence of actual confusion, applicant argues that there
has been more than 38 years of simultaneous use of
applicant’s and the registrant’s marks without such
confusion. Applicant bases the time period in which it
claims there has been simultaneous use on the dates recited
in the cited registration, 1972 for the identified goods
and 1973 for the identified services; the application for
the registration was filed in 1981. As for applicant’s use
of its own marks, we must point out that the evidence does
not show that applicant’s marks have been used for all of
its identified goods and services for that period of time.
First, the parent applications for USGAMESINC and USGAMES
were filed based on an intent-to-use the marks on the goods
and services in the respective classes, and the intent-to-
use basis also became the basis for the child applications.
Only the application for U.S. GAMES SYSTEMS, INC. was filed
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

13
based on use in commerce; that application (and
subsequently the child application) did assert use in 1968.
In addition, applicant has submitted a declaration in each
application stating that the particular mark has been in
continuous use in commerce for tarot cards since 1968 and
for card games from 1969 through the April 20, 2011 date of
the declaration; and an earlier filed declaration for each
application referenced use on games, stating that the marks
had been in continuous use in commerce as a trademark for
tarot cards and games since as early as 1968 through the
December 27, 1999 date of the declaration.
Thus, there is no evidence of use of applicant’s
USGAMES mark for the services identified in either the
parent and child application, and no use of USGAMESINC for
goods or services other than card games, board games and
tarot cards. Further, even if we accept that there has
been contemporaneous use of applicant’s marks U.S. GAMES
SYSTEMS, INC. and USGAMES for card games, board games and
tarot cards, and of the registrant’s mark for its
identified goods and services, with no evidence of actual
confusion, that does not necessarily mean that this du Pont
factor must favor applicant. First, the lack of evidence
of actual confusion has less significance in an ex parte
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

14
proceeding because we have no opportunity to know the
registrant’s experience. In this case, we acknowledge that
the registrant is aware of applicant’s existence and its
applications because of the cancellation proceeding.
However, because there is nothing that the registrant could
do, as part of the cancellation proceeding, to object to
applicant’s use, we cannot view the lack of objection or
counterclaim by the registrant as indicating that the
registrant has not encountered any instances of actual
confusion. Further, lack of evidence of actual confusion
is not dispositive. As we have frequently recognized, it
is very difficult to come by such evidence, particularly if
both applicant and the registrant are performing their
activities well, such that no complaints about the other
reach either party. It is not clear to us how a consumer
inquiry or statement about applicant’s goods being
connected to the registrant’s services would come to
applicant’s attention. Thus, we treat this du Pont factor
as neutral; to the extent that it can be said to favor
applicant we give it less weight in the likelihood of
confusion analysis than the other factors, discussed below.
The final argument that applicant makes with respect
to all the applications is that applicant has superior
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

15
rights to the registrant based on earlier use of its marks,
that it is therefore entitled to keep using its marks, and
that the right to register should follow the right to use.
However, as the Court said in du Pont, “the rights to use
and register are not identical,” and “a right to use is not
a right to confuse.” 177 USPQ at 569. Section 2(d)
prohibits the registration of a mark which so resembles a
mark registered in the U.S. Patent and Trademark Office as
to be likely, when used in connection with the goods or
services of the applicant, to cause confusion. If
applicant’s marks are likely to cause confusion with the
cited registered mark, the refusals of registration must be
affirmed.
U.S. GAMES SYSTEMS, INC.
We now turn to a consideration of the parent and child
applications for U.S. GAMES SYSTEMS, INC., Serial Nos.
75463417 (the parent application) and 75983708 (the child
application), and compare this mark with the cited mark,
U.S. GAMES. Obviously, applicant’s mark begins with the
cited mark, to which applicant’s mark has the added word
SYSTEMS and the corporate identifier INC. However, these
additional elements are not sufficient to distinguish the
marks. Corporate identifiers have no trademark
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

16
significance, and applicant does not argue that INC. does
in the present case. Instead, applicant focuses its
argument on the presence of SYSTEMS in its mark. Although
we agree that SYSTEMS is an additional term, it is, as
applicant’s seeking registration under Section 2(f)
acknowledges, descriptive for board games, card games and
tarot cards. Although the abbreviation U.S. is
geographically descriptive and the word GAMES is generic,
consumers are more likely to view the beginning part of the
mark, U.S. GAMES, as the source-identifier by which they
refer to the 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 mot likely to be
impressed upon the mind of a purchaser and remembered”).
Moreover, it is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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). Thus, although
applicant’s mark contains the descriptive word SYSTEMS and
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

17
the corporate identifier INC., when the marks are compared
as a whole, the commercial impression of the marks remains
the same, and consumers will view both marks as indicating
goods coming from a single source. The du Pont factor of
the similarity of the marks favors a finding of likelihood
of confusion.
We turn next to a consideration of the respective
goods and services. Applicant’s application Serial No.
75463417 is for board games and card games. The goods
identified in the cited registration are playing equipment
for playing physical exercise games, and “mail order
services in the field of games, toys and sporting goods.”
In determining the issue of likelihood of confusion, we
must base our analysis on the mark as applied to the goods
and/or services recited in applicant’s application vis-à-
vis the goods and/or services recited in the cited
registration, rather than what the evidence shows the goods
and/or services to be. In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant
“respectfully submits that the terms ‘games, toys and
sporting goods’ [in the identification of services in the
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

18
registration] should be interpreted in light of the
specific games, toys and sporting goods [as identified in
Class 28 of the registration].” Brief, p. 8. However,
case law does not support such an interpretation. Section
7(b) of the Trademark Act is prima facie evidence of the
owner’s exclusive right to use the registered mark on or in
connection with the goods or services specified in the
certificate. Each class of the registration is treated
independently. Thus, the registrant has the right to use
its mark covering “mail order services in the field of
games, toys, and sporting goods” for all types of games,
toys and sporting goods, not just those items which are
identified in Class 28 of its registration. Indeed, a
catalog of the registrant’s, made of record by applicant,
shows that the registrant offers a wide variety of games,
toys and sporting goods through its catalog services,
including board games and card games.
In sum, the “mail order services in the field of
games” identified in the cited registration must be deemed
to include “board games and card games,” i.e., the goods
identified in applicant’s application. There is obviously
an intrinsic relationship between games and mail order
services for those games. That relationship is borne out
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

19
by the evidence. The examining attorney has made of record
pages from applicant’s own website which show that
applicant offers catalog ordering services, and goods such
as playing cards and games, under the same mark. And, as
noted above, the registrant’s catalog by which it offers
its mail order services includes board games and card
games. Accordingly, we find that the examining attorney
has demonstrated that applicant’s identified board games
and card games are related to the registrant’s identified
mail order services in the field of games, and that this du
Pont factor favors a finding of likelihood of confusion.7
With respect to the child application, Serial No.
75983708 for tarot cards, the examining attorney has
submitted evidence showing that tarot cards are considered
to be a type of game. For example, the third-party website
Board Game Geek, http://boardgamegeek.com, describes
“tarot” under the categories “bluffing,” “card game,” “game

7 The examining attorney also submitted a number of third-party
registrations showing that companies have adopted a single mark
for both playing cards, games, and sports equipment such as
balls. However, because of the length of time that elapsed
between the time these registrations were made of record with the
Office action of September 10, 1998, and the briefing of the
appeal, many of these registrations were cancelled or have
expired. Accordingly, we choose not to rely on them to show
relatedness of applicant’s goods with the goods in the cited
registration. In any event, such a showing is not necessary in
view of the relatedness of applicant’s goods and the registrant’s
services.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

20
system” and “print & play,” and within the family “tarot
games.” This site also features a “Lord Of The Rings Tarot
Deck & Game”; we note that applicant has submitted as an
example of its use of the mark a “The Lord of the Rings
Tarot Deck & Card Game.” In this same example applicant
describes its tarot cards as being a card game.
For the same reason that we have found that games and
the registrant’s identified mail order services in the
field of games are related, applicant’s tarot cards, which
are a game, are related to the registrant’s services.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Further, the channels of trade for the goods in these
two applications and the services in the cited registration
must be deemed to be the same, in that board games, card
games and tarot cards (a subset of card games) can be sold
through mail order services in the field of games. In
fact, registrant’s catalog shows that it does indeed sell
board games, playing cards and card games through its mail
order service.8

8 We note that in the registrant’s 2000 catalog it makes
reference to organizations as purchasers of its goods. It does
not appear that only organizations may purchase goods through the
registrant’s mail order services. Further, even if that were
true, the identification in the registration is not so restricted
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

21
Applicant argues that the du Pont factor of customer
care favors a finding of no likelihood of confusion. With
respect to applicant’s board games and card games, it
contends that the consumers for such goods are interested
in entertainment, and they would review whether the board
games and card games are appropriate for the age group to
be entertained. As for tarot cards, applicant asserts that
its cards “would typically be sold to persons familiar with
tarot” who “are likely to be the owners of additional sets
of tarot cards, and would be careful in purchasing the
present goods.” Brief, p. 8. Applicant also claims that
the goods and services identified in the registration would
be subject to a careful purchasing decision because the
purchase of such goods from a mail order house “is usually
accompanied by a review of information in the catalog or in
an online database,” and that “the selection of an age
appropriate purchase would necessitate a careful purchasing
decision. Brief, p. 9.
We are not persuaded by applicant’s arguments. All of
applicant’s goods--board games, card games, tarot cards--
are general consumer items, purchased by the public at

and therefore we must assume that the services are rendered
through all appropriate channels of trade for such services,
including to individual members of the general public.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

22
large. Applicant has not submitted any evidence that tarot
cards are purchased only by persons familiar with tarot.
It seems illogical that only people who already own tarot
cards would purchase additional cards, since someone who
has a beginning interest in tarot and does not have a set
of cards would presumably need to purchase a set.
Alternatively, a customer might buy tarot cards as a gift
for another. Certainly the advertisements for tarot cards
that are of record do not indicate that these products are
not purchased by novices. To the extent that applicant is
asserting that the particular cards it sells would only be
purchased by those familiar with tarot cards, we cannot
read such a limitation into the identification.
Further, whether or not a consumer might check a board
game or card game for its age appropriateness does not mean
that the consumer will also carefully examine the trademark
under which it is sold. As for mail order services in the
field of games, toys and sporting goods, the question is
the care that the consumer exercises in choosing the
provider of the mail order services, not the care with
which a consumer selects a particular game or toy sold
through those services. The evidence of record shows that
board games, card games and tarot cards are rather
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

23
inexpensive. For example, The Lord of the Rings tarot deck
and game is offered for $15.00, an Old Maid card game is
$6.19, and a chess/checkers/ backgammon set is $9.49. Most
importantly, the marks are so similar, U.S. GAMES v. U.S.
GAMES SYSTEMS, INC., that even careful consumers are not
likely to notice the differences in the marks or, if they
do, to attribute the differences to different sources of
the goods and services. Because the goods and services are
purchased by ordinary consumers, and the items can be
relatively inexpensive, we find that this du Pont factor
favors a finding of likelihood of confusion.
USGAMES
The next set of parent and child applications we
consider are Serial Nos. 75463415 and 75983707 for USGAMES.
USGAMES is essentially identical to the cited mark U.S.
GAMES--the fact that applicant’s mark runs the letters
together to form a compound word does not have any
trademark significance because USGAMES would be recognized
by consumers as U.S. GAMES.” Thus, the marks are identical
in pronunciation, connotation and commercial impression,
and virtually identical in appearance. See In re Iolo
Technologies, LLC, 95 USPQ2d 1498 (TTAB 2010) (difference
between ACTIVECARE and ACTIVE CARE has no trademark
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

24
significance). Because of the virtual identity of the
marks, the du Pont factor of the similarity of the marks
strongly favors a finding of likelihood of confusion. In
fact, the more similar the marks at issue, the less similar
the goods or services need to be for the Board to find a
likelihood of confusion. In re Opus One Inc., 60 USPQ2d at
1815. When marks are substantially identical, it is only
necessary that there be a viable relationship between the
goods or services to support a finding of likelihood of
confusion. In re Concordia Int’l Forwarding Corp., 222
USPQ 355 (TTAB 1983).
Application No. 75463415, the parent application, is
for “providing information over a global computer network
featuring board games, card games, stories, directories for
board games, card games, and collectibles.” Again, the
goods and services identified in the cited registration are
various types of equipment for playing physical exercise
games, and “mail order services in the field of games,
toys, and sporting goods.” Although applicant’s services
provide information about board games and card games, and
the registrant uses its mark for equipment for exercise
games, the record shows that board games, card games and
equipment for exercise games can be sold by a single
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

25
entity; specifically, the registrant sells all of these
items. Further, as previously discussed, the services
identified in the cited registration include mail order
services in field of games, and “games” encompasses board
games and card games, the products for which applicant
provides information. In rendering these services the
registrant uses a catalog that provides information about
its various goods, including board games and card games.
The examining attorney has also submitted evidence showing
that the registrant has expanded its services to provide
information about its products on its website. We find
that this evidence is sufficient, given the virtually
identical marks, to demonstrate the relatedness of
applicant’s and the registrant’s services. This du Pont
factor favors a finding of likelihood of confusion.
As for applicant’s child application, Serial No.
75983707, the identification of services is “providing
information over a global computer network featuring tarot
cards, and directories for tarot cards.” Because the
evidence shows that companies, i.e., the registrant, that
offer mail order services in the field of games, also
provide information about their goods over a global
computer network (i.e., over the Internet), and because the
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

26
registrant’s identification of services must be deemed to
include mail order for tarot card games, we find that the
evidence is sufficient, given the virtually identical
marks, to demonstrate the relatedness of applicant’s and
the registrant’s services. This du Pont factor favors a
finding of likelihood of confusion.
As for the channels of trade, both the service of
providing information through the Internet and mail order
services in the field of games, as well as game equipment,
can be offered to the same classes of consumers, namely,
the public at large. Consumers may also view information
provided over the Internet about products such as games
prior to ordering such a product through mail order
services. Thus, the same class of consumers will encounter
both applicant’s and the registrant’s services.
Applicant argues that, with respect to the conditions
of purchase du Pont factor, purchasing decisions would be
made with care. It is applicant’s position that the goods
that are within the scope of the applicant’s services, and
particularly the collectibles, would be bought with care,
while the board games and card games would be carefully
reviewed by consumers to be sure they are appropriate for
the particular age group, and tarot cards would typically
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

27
be sold to persons familiar with tarot. It appears that
applicant views the identification “providing information
over a global computer network” featuring various goods as
being equivalent to purchasing the goods themselves. While
we need not comment here on the care which is exercised in
the purchase of board games, card games and the like
(although we have discussed this in connection with the
prior set of applications), the care with which one decides
to view information on the Internet, or to avail oneself of
the service of having that information provided, is not the
same as the care that is taken in purchasing the goods
themselves. Since information provided over a global
computer network about various products may be obtained for
free and with no significant effort, it is not clear to us
why consumers would exercise great care in deciding what
provider of such information they would choose. We have
already discussed why we are not persuaded that the
purchasers of the registrant’s services would exercise more
than ordinary care in choosing mail order services in the
field of games. Moreover, because the marks are virtually
identical, we do not believe that even the most careful
purchaser would note the differences between U.S. GAMES and
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

28
USGAMES, or believe that these marks identified different
sources of the services.
USGAMESINC
This brings us to the final set of parent and child
applications, for the mark USGAMESINC. We find that
USGAMESINC is confusingly similar to U.S. GAMES. Although,
as with USGAMES, the words have been run together,
consumers would immediately recognize USGAMESINC as the
equivalent of U.S. GAMES INC. The addition of the
corporate identifier INC, which has no trademark
significance, does not distinguish the marks.
Application Serial No. 75463414, the parent application,
has four classes. The first is for “electronic games
comprised of computer software.” These games would be the
subject matter of the mail order services in the field of
games and, for the reasons given in our discussion of the
relatedness of applicant’s board games and card games and
the mail order services, we find applicant’s electronic
games comprised of computer software to be related to the
registrant’s services. As for the card games and board
games identified in Class 28 of this application, for the
same reasons given in our discussion in connection with the
parent application for U.S. GAMES SYSTEMS, INC., these
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

29
goods are related to the services in the cited
registration.9 The Class 35 services are identified as “on-
line distribution services and on-line wholesale services
featuring card games, board games, stories, and
collectibles; on-line retail store services featuring card
games, board games, and collectibles.” We focus this
portion of our discussion on whether on-line retail store
services featuring card games and board games are related
to the registrant’s identified services because it is not
necessary for the Office to show likelihood of confusion
with regard to each item listed in a class of an
application; if there is likelihood of confusion because of
one item, that is sufficient to refuse registration for the
entire class. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
As the evidence submitted by the examining attorney
shows, applicant’s on-line retail store services are in the
nature of an on-line catalog; in fact, applicant invites
visitors to its website, www.usgamesinc.com, to click on

9 The identification in this class also includes “hand-held
units for playing electronic games”; we need not discuss whether
these goods are related to the registrant’s services because, as
noted previously, if there is likelihood of confusion with
respect to one of the goods in the class, a refusal of
registration of the entire class must be affirmed.

Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

30
one of its “On-Line Catalogs” (identified as “Tarot Card
Catalog,” “Playing Card Catalog” and “Games Catalog”) in
order “to browse and shop in our on-line store.” Another
webpage on its site provides ordering and contact
information for shopping in its “Online Catalog.”
Applicant’s on-line retail store services feature, inter
alia, card games and board games, and the registrant’s mail
order services are in the field of, inter alia, games.
Thus, the subject matter of applicant’s on-line retail
store services and the registrant’s mail order services is
legally identical and, in fact, is actually the same, in
that the registrant’s catalog includes board games and card
games. Because applicant’s on-line retail store services
and the registrant’s mail order services are in effect
alternative methods for obtaining the same types of goods,
they are related. Consumers who are familiar with U.S.
GAMES for such mail order services and see USGAMESINC for
on-line retail store services are likely to believe that
the registrant has expanded its services. With respect to
applicant’s services in Class 42, namely, “providing
information over a global computer network featuring card
games, stories, and directories for card games, board
games, and collectibles, the comments we made in connection
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

31
with Application Serial No. 75463415 apply. We acknowledge
that USGAMESINC has the additional element INC, so that it
is not as close to U.S. GAMES as the virtually identical
USGAMES. However, as previously discussed, the corporate
identifier has no source-indicating significance as used in
the mark, and therefore the marks are substantially
similar. As a result, the goods and services need not be
as closely related to find that the du Pont factor of
similarity of the goods favors a finding of likelihood of
confusion.
As for the child application for USGAMESINC, Serial
No. 75983705, the above comments largely apply to the goods
and services identified in this application, which are
limited to or involve tarot cards. Thus, the goods in
Class 28, “tarot cards,” would, as previously discussed, be
considered games that are encompassed by the “mail order
services in the field of games” identified in the
registration, and the relatedness of the goods and services
are manifest--goods and mail order services for the sale of
such goods. As for applicant’s “on-line retail store
services featuring tarot cards” in Class 35, the
registrant’s identification must be read as mail order
services in the field of games that include tarot cards.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

32
Accordingly, for the reasons given in finding that
applicant’s on-line retail store services featuring card
games and board games are related to the registrant’s
services, the services in Class 35 of the child application
are related as well. Similarly, the reasons given
previously in this opinion, finding that providing
information over a global computer network featuring card
games is related to mail order services in the field of
games, are applicable to applicant’s identified “providing
information over a global computer network featuring tarot
cards.” Thus, we find that for this child application, the
du Pont factor of the similarity of the services favors a
finding of likelihood of confusion.
With respect to the channels of trade, applicant’s
identified goods and services in this set of applications
for USGAMESINC are sold or rendered to the general public
who are interested in purchasing games, including tarot
card games, and these are the same consumers of
registrant’s goods and services. Thus, as previously
stated, these consumers are likely to encounter both
applicant’s and the registrant’s goods and services. This
du Pont factor favors a finding of likelihood of confusion.
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

33
Applicant’s final argument with respect to this set of
applications is that both applicant’s and the registrant’s
goods and services would be purchased carefully and not on
impulse. We have discussed this argument in connection
with applicant’s other applications, so we will limit our
comments here to the item that has not been the subject of
such applications, namely, “electronic games comprised of
computer software.” Applicant’s argument with respect to
these goods is that the consumers of these games would
carefully review whether the games are appropriate for the
age group to be entertained, in order not to select a game
designed for a young child as a gift for an adult. As
applicant’s argument seems to acknowledge, applicant’s
goods are purchased by the general public, and such
purchasers would not be deemed to have any expertise or
exercise more than the normal standard of care. Moreover,
even if we were to accept that consumers will note the
differences in the marks, they will not assume that the
marks identify different sources of the goods and services.
The marks USGAMESINC and U.S. GAMES are so similar, and the
goods and services are so closely related, that consumers
are likely to believe that electronic games comprised of
computer software sold under the mark USGAMESINC and mail
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

34
order services in the field of such electronic games
offered under the mark U.S. GAMES emanate from the same
source. Thus, this du Pont factor does not favor
applicant.
Conclusion
We have limited our discussion to the du Pont factors
for which applicant and the examining attorney have
submitted argument or evidence. To the extent any other du
Pont factors are relevant, we have treated them as neutral.
After considering all the relevant factors, we find that,
in particular, the du Pont factors of the similarities of
the marks, the relatedness of the goods and services, class
of consumers and conditions of purchase outweigh the lack
of evidence of actual confusion and any weakness of the
cited registration. In connection with the latter point,
even if the cited registration is entitled to a lesser
scope of protection than an arbitrary mark, that protection
still extends to prevent the registration of the
substantially similar marks USGAMES and USGAMESINC, or the
similar mark U. S. GAMES SYSTEMS, INC. for goods so closely
related to the registrant’s services. Accordingly, we find
that applicant’s three marks for the goods and services
Ser Nos. 75463414, 75463415, 75463417, 75983705, 75983707
and 75983708

35
identified in its six applications are likely to cause
confusion with Registration No. 1246494.
Decision
The refusals of registration in Application Serial
Nos. 75463414, 75463415, 75463417, 75983705, 7598370 and
74983708 are affirmed.