WeMade Entertainment Co., Ltd. and Link Tomorrow Co. Ltd.

Trademark Trial and Appeal Board

Mar 30, 2015

No. 85862680 (T.T.A.B. Mar. 30, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re WeMade Entertainment Co., Ltd. and Link Tomorrow Co. Ltd.
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Serial No. 85862680
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Bruce W. McKee of McKee Voorhees & Sease PLC,
for WeMade Entertainment Co., Ltd. and Link Tomorrow Co. Ltd.
Michael Tanner, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Bucher, Wellington, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
WeMade Entertainment Co., Ltd. and Link Tomorrow Co. Ltd. (“Applicants”)
seek registration on the Principal Register of the
mark shown at right for the following goods and
services, as amended:
“Recorded computer game programs; computer game
software recorded on optical disks; downloadable
computer game programs; downloadable computer game
software via a global computer network and wireless
devices; video game cartridges; video game cassettes” in
International Class 9;
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“Game services provided on-line from a computer
network, namely, providing on-line computer games;
providing of game centers, namely, amusement arcades”
in International Class 41; and
“Hosting computer sites, namely, web sites of others on a
computer server for a global computer network; creating
and maintaining web sites for others; conversion of data
or documents from physical to electronic media;
installation of computer software; computer system
design; data conversion of computer programs and data,
not physical conversion; duplication of computer
programs; computer rental; recovery of computer data;
computer game software design; updating of computer
game software; maintenance of computer game software;
computer systems analysis; computer programming;
technological consultation in the technology field of
computer hardware; product research and development in
the field of computer game software; rental of network
servers; providing internet search engines” in
International Class 42.1
The Trademark Examining Attorney has refused registration of all goods
identified in Class 9 and “game services provided on-line from a computer network,
namely, providing on-line computer games” in Class 41. The refusal has been made
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicants’ mark, as used in connection with the goods and services identified in the
preceding sentence, so resembles the mark WINDWALKER, previously registered
in standard characters on the Principal Register for:

1 Application Serial No. 85862680, filed February 28, 2013, based on Applicants’ allegation
of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b). The
application has the following description: “The mark consists of the stylized word ‘WIND’ in
upper case above the stylized word ‘runner’ in lower case with a border surrounding the
words. A stylized bird’s wing is located on each side of the wording. The bottom of the word
‘WIND’ appears in the color turquoise fading to blue at the top of the word. The bottom of
the word ‘runner’ appears in the color khaki as [sic] fades to white at the top of the word.
The border around both words appears in the color blue and has dark blue shading. The
wings on each side of the wording appear in the color white with gray outlining and have
dark blue outer borders.” The joint Applicants are South Korean corporations.
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“Series of motion pictures featuring mystery, adventure,
fantasy and the occult” in International Class 9, and
“Entertainment services in the nature of ongoing
television programs and specials featuring mystery,
adventure, fantasy and the occult; entertainment services,
namely, motion picture film production; entertainment
services, namely, a multi-media program series featuring
mystery, adventure, fantasy and the occult distributed via
various platforms, across multiple forms of transmission
media; online journals, namely, blogs featuring
information on books, mystery, adventure, fantasy and
the occult; entertainment services, namely, providing an
online computer game” in International Class 412
as to be likely to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicants appealed to
this Board.3 We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence 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. Federated 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.”).

2 Registration No. 3940249, issued April 5, 2011. The registration also identifies printed
goods in International Class 16.
3 Applicants’ appeal brief was single-spaced. All briefs must be double-spaced. Trademark
Rule 2.126(b); see also In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.2 (TTAB 2014).
Serial No. 85862680
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We first address the second du Pont factor, similarity of the goods and services.
It is not necessary that the goods and services be identical or even competitive to
support a finding of likelihood of confusion. Rather, it is sufficient that the goods
and services are related in some manner, or that the circumstances surrounding
their marketing are such that they would be encountered by the same persons in
situations that would give rise, because of the marks, to a mistaken belief that they
originate from the same source or that there is an association or connection between
the sources of the goods and services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635
(TTAB 2009). It is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods or services
within a class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
The most relevant of Applicants’ refused goods and services, along with the most
relevant services identified in the cited registration, are listed below:
Application Cited Registration
Class 9: Recorded computer game programs; computer
game software recorded on optical disks; downloadable
computer game programs; downloadable computer game
software via a global computer network and wireless
devices; . . .

Class 41:
. . . entertainment
services, namely,
providing an online
computer game Class 41: Game services provided on-line from a
computer network, namely, providing on-line computer
games . . .

Each good and service listed above consists of a computer game or computer games.
Both the application and the cited registration identify online computer games. The
application also identifies downloadable and recorded computer game programs and
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software. Therefore, we find that the registered “entertainment services, namely,
providing an online computer game” are identical to Applicants’ refused Class 41
services and highly related to Applicants’ Class 9 goods.4
Because there are no limitations as to channels of trade or classes of purchasers
in the description of services in the cited registration, we presume that the
registrant’s services move in all usual channels of trade for such services and are
available to all potential classes of purchasers, including ordinary purchasers. See
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB
2006). Moreover, because the refused services in the application are identical in
part to the services in the cited registration, we must presume that the channels of
trade and classes of purchasers are the same, considerations under the third and
fourth du Pont factors, respectively. See American Lebanese Syrian Assoc. Charities
Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board
entitled to rely on this legal presumption in determining likelihood of confusion).
In our likelihood of confusion analysis, these findings under the second and, with
respect to the Class 41 services, the third and fourth du Pont factors strongly
support a conclusion that confusion is likely.
We turn next to the first du Pont factor, “‘the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial

4 Applicants did not dispute the similarity of the goods and services. See Appeal Brief at 1, 4
TTABVUE at 2.
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impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). We begin by noting that “[t]he 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). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. Joel
Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751.
Serial No. 85862680
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Registrant is entitled to protection of its mark WINDWALKER in any font style,
case, size, or color, including a stylization that uses the font style and colors
employed by Applicants, and therefore we must consider its mark as though it were
depicted in such font style. Citigroup Inc., 98 USPQ2d at 1258-59. We also are
mindful that when, as here, marks would appear in association with goods and
services that are identical in part, “the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The cited mark is WINDWALKER. We find that, although the cited mark is
presented without a space, consumers are likely to view and verbalize it as WIND
WALKER, based on normal English pronunciation. See, e.g., In re ING Direct
Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (finding “Person2Person Payment”
generic despite deletion of spaces); Giersch v. Scripps Networks Inc., 90 USPQ2d
1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a
distinct commercial impression from DESIGNED2SELL).
Applicants’ mark is . The cited mark and the literal portion
of Applicants’ mark share the identical first term, WIND. This increases the
similarity between the two marks because consumers encountering Applicants’
mark are likely to first notice this identical lead term. Century 21 Real Estate Corp.,
23 USPQ2d 15 at 1700; see also, e.g., Palm Bay Imports, 73 USPQ2d at 1692
(stating that “veuve” is the most prominent part of the mark VEUVE CLICQUOT
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because “veuve” is the first word in the mark and the first word to appear on the
label); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(noting 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”).
In each mark, the term WIND is followed by a noun referencing one locomoting
by foot: WALKER vs. RUNNER. Consumers familiar with either mark may, on
encountering the other mark, simply view it as a derivation of the first. Thus,
although there are differences in how the marks sound when spoken, their
meanings are similar.
The design portions of Applicants’ mark distinguish it visually from the cited
mark. For marks consisting of words and a design, however, the words are normally
given greater weight because they would be used by consumers to request the goods
or services. See, e.g., Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011); M.C.I. Foods, Inc. v. Brady
Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). Moreover, the design portion of
Applicants’ mark serves to reinforce the meaning of the initial word “WIND,” which
as noted is common to both marks.
Considering the marks as a whole, we find that they make similar overall
commercial impressions. The first du Pont factor thus weighs in favor of a likelihood
of confusion.
Finally, Applicants argue that the registered mark is entitled only to a limited
scope of protection “due to the extensive third-party use of both ‘WIND-formative’
Serial No. 85862680
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and ‘WALKER-formative’ marks used in connection with games.”5 This argument
pertains to the sixth du Pont factor, the number and nature of similar marks in use
in connection with similar goods and services.
Applicants introduced into evidence copies of two registrations, as follows:
• for goods and services including computer game
programs and software and providing on-line computer games;6 and
• for goods including video game consoles for use
with televisions.7
It is well-established that third-party registrations are not evidence that the marks
therein have been used at all, let alone used so extensively that consumers are
sufficiently conditioned by their use that they can distinguish between such marks
on the basis of minor differences. The probative value of third-party trademarks
depends entirely on their use. Palm Bay Imports, Inc., 73 USPQ2d at 1693. Where
the record includes no evidence about the extent of third-party uses, the probative
value of this evidence is minimal. Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d
1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001). Applicants also made of record two
pending applications for WIND-formative marks for computer game goods and
services,8 but pending applications are evidence only of the fact that they were filed.
In re 1st USA Realty Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007).

5 Appeal Brief at 4, 4 TTABVUE at 5.
6 December 5, 2013 Response to Office Action at 15-16, Registration No. 3794290.
7 Id. at 17-18, Registration No. 3759858. We note that this registration was not issued
based on use in U.S. commerce but pursuant to Section 44(e) of the Trademark Act.
8 Id. at 13-14.
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In addition, Applicants submitted a TESS search result printout listing 19 third-
party registrations comprising WALKER.9 The submission of a mere list of
registrations does not make the listed registrations of record. In re Jump Designs
LLC, 80 USPQ2d at 1372. However, the Examining Attorney’s failure to advise
Applicants during examination that the list was insufficient to make the listed
registrations of record constituted a waiver of any objection to consideration of the
summaries. In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012), aff’d, 731
F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013), cert. denied, 134 S. Ct. 1325 (2014);
TBMP §§ 1207.03, 1208.02 (2014). Therefore, we will consider the information in
the printout “for whatever limited probative value such evidence may have.” In re
Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
The evidentiary value of the printout is severely limited by the fact that the
goods and services for which the marks are registered are not shown. The search
query was for live marks comprising Classes 9, 41, or 42 with the word “game” in
the identification, not necessarily in those three classes. This does not establish that
the listed registrations identify “computer games” rather than other types of games.
Last, Applicants made of record 27 pages of Internet printouts referring to
computer games, which Applicants characterize as “various third-party common law
uses of Registrant’s ‘WINDWALKER’ mark for use in connection with games.”10
However, we were able to specifically identify in this evidence references to only one
game named “Windwalker,” a game from Origin Systems, Inc. dating to 1989.

9 Id. at 46-47. The list also includes five pending applications and the cited registration.
10 Id. at 19-45; Appeal Brief at 6, 4 TTABVUE at 7.
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(There are also two references to a Nintendo Wii game called “The Legend of Zelda:
The Wind Waker,” one with the latter word misspelled as “Walker.”)
Considering this evidence of third-party use as a whole, one use-based
registration for the mark and online references to one
WINDWALKER game are insufficient to establish that the cited registration is
diluted by a crowded field of coexisting marks. We deem this factor neutral.
We have considered all evidence properly of record and all arguments pertaining
to the du Pont likelihood of confusion factors. In view of our findings that the marks
are similar and that the identified services are identical in part and travel through
the same channels of trade to the same classes of customers, and that Applicants’
identified goods are highly related to the registered services, we find that
Applicants’ mark is likely to cause confusion with the mark in cited Registration
No. 3940249 when used in association with Applicants’ refused goods and services.
Decision: The refusal to register Applicants’ mark as to all goods identified in
Class 9 and “Game services provided on-line from a computer network, namely,
providing on-line computer games” in Class 41 is affirmed. The application will
proceed to publication for opposition in due course as to all of the services in Class
42 and the remaining services identified in Class 41, i.e., “providing of game
centers, namely, amusement arcades.”