Zynga, Inc.

Trademark Trial and Appeal Board

Jul 16, 2012

No. 77894876 (T.T.A.B. Jul. 16, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: July 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zynga, Inc.
________

Serial No. 77894876
_______

John M. Kim and Joshua J. Richman of IP Legal Advisors PC
for Zynga, Inc.

Anne Gustason, Trademark Examining Attorney, Law Office 117
(J. Brett Golden, Managing Attorney).
_______

Before Bucher, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Zynga, Inc., filed an application to
register on the Principal Register the mark CASINO WORLD
(in standard characters) for the following goods:
downloadable computer software for use on
wireless devices and computers for transmission
of information in the field of social networking,
computer game software, video game software, and
game related computer software applications for
social networking; interactive video game
programs; downloadable electronic game software
and game related computer software applications
for transmission of data and information in the
field of social networking that may be accessed
via the internet, computers and wireless devices;
Ser. No. 77894876
2

computer software to enable uploading, posting,
showing, displaying, tagging, blogging, sharing
or otherwise providing electronic media or
information to third parties in the fields of
virtual communities, electronic gaming,
entertainment, and general interest via the
internet or other communications networks

in International Class 9.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used on or in
connection with its goods, so resemble the mark CASINO
WORLD, previously registered on the Principal Register in
typed or standard characters for “dockside casino services”
in International Class 41,2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.3

1 Application Serial No. 77894876 was filed on December 16, 2009,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. CASINO is disclaimed. The application
originally recited services in International Class 41; however,
applicant subsequently deleted those services.
2 Registration No. 2253856 issued on June 15, 1999. CASINO is
disclaimed. Section 8 affidavit accepted; Section 15 affidavit
acknowledged. First renewal.
3 The exhibit submitted for the first time with applicant’s reply
brief is manifestly untimely and will be given no consideration.
See Trademark Rule 2.142(d); and In re U.S. Cargo Inc., 49 USPQ2d
1702, 1703 n.2 (TTAB 1998).
Ser. No. 77894876
3
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976).
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). In this case, applicant’s mark,
CASINO WORLD in standard characters, is identical to the
mark in the cited registration, also in typed or standard
characters, in every respect. Use of identical marks is a
Ser. No. 77894876
4
fact which “weighs heavily against applicant.” See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ
1289 (Fed. Cir. 1984); and In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Accordingly, this du Pont factor heavily favors a
finding of likelihood of confusion.
The Goods and Services
We turn then to a consideration of whether applicant’s
goods are related to registrant’s services, bearing in mind
that “even when goods or services are not competitive or
intrinsically related, the use of identical marks can lead
to an assumption that there is a common source.” In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993). See also Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981) (When both parties are
using or intend to use the identical designation, “the
relationship between the goods [and/or services] on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar”). See also In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). If the marks are the same,
as in this case, it is only necessary that there be a
viable relationship between the goods and services in order
to support a finding of likelihood of confusion. See In re
Ser. No. 77894876
5
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Applicant’s goods are computer software that may
succinctly be described as providing “online computer games
playable on social networking websites, such as Facebook®.”4
Registrant’s services are “dockside casino services.”
Because applicant seeks registration for computer game
software without limitation as to genre, e.g., sports,
puzzles, action/adventure, or role playing, its software
must be presumed to provide games encompassing any genre,
including games of chance and gambling games that one could
play at a casino. See, e.g., In re Thor Tech, Inc., 90
USPQ2d 1634, 1637-8 (TTAB 2009). As a result, applicant’s
goods are related on the face of their identification to
registrant’s services inasmuch as both provide games of
chance and gambling games.
In addition, the examining attorney has made of record
printouts from third-party internet websites offering
online social games that include gambling games. The
following examples are illustrative:
Symphony games is a boutique social and casino
game software company. We specialize in
multiplayer online games such as Poker, Mahjong
and card games.

4 Applicant’s brief, unnumbered page 2.

Ser. No. 77894876
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We offer software licenses for online Poker,
Backgammon, Mahjong, Chess, Checkers, Spades,
Solitaire and many more.
Play at casinos online, but before you do read
some player casino reviews and you may find that
the best US online casinos are the ones that
accept payment and payout quickly and with no
hassles;
Symphonygames.com

Social Games
When you think about social games, what comes to
mind? Bingo can be considered a social game
where people gather to enjoy the game and
initiate new friendships. Online slot playing is
also a social game wherein online casinos afford
players the opportunity to chat while playing. …
But, online casinos are venues where social games
are played. The only difference is that social
gaming, in its purest form, may not include
transactions. … ;
Sunshine-Slots.com

The World’s Mobile Playground
Casino Games
Blackjack
Blackjack is one of the most popular casino card
games in the world, and our mobile version will
keep you playing for hours. Stand, hit, double
down or split to get the highest bankroll. Do
you have the skill to take the house’s money;
Cellufun.com

Casino City
Our United States directory of gaming properties
includes over 1500 casinos, horse tracks, dog
tracks, resorts and cruise ships. Below is a
list of states which have gaming with the number
of gaming properties in parenthesis. …
For information on over 2000 online gaming sites
including online casinos, online poker rooms, and
online bingo halls, click here to visit Casino
City’s Online Gambling Directory. You can sort
the directory by online popularity, bonus offers
Ser. No. 77894876
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or name. Enjoy slots, video poker, Texas hold
'em, roulette, blackjack, baccarat, craps, and
bingo, all online.
Casinocity.com

When Online Gaming Community Meets Social Network
– The FREE Social Network for the Online Gambling
Community
Over 1,700 new members are joining this Social
Gaming Network Community every month because they
want to be a part of the internet’s first and
largest online gambling community meets social
network.
With forums, blogs, strategy guides, exclusive
free poker tournaments with cash prizes, and a
whole lot more, it is easy to see why so many
people choose this FREE Social Gaming Network;
Onlinegamingpro.com

Aladdin’s Gold Casino
With Aladdin’s Gold Casino, you do get many of
the slot games that make up the majority of
casino games available at other virtual casinos;
but their focus is more upon the classic card and
table games than anything else, which is an
interesting change! …
Although I would have liked to see the Arabian
theme spill over a little more to the homepage,
the subpages on the website are what you’d expect
to see at a place called Aladdin’s Gold Casino.
And, with some of the best virtual casino games
available all in one place, you know you’re going
to get a quality online casino experience when
visiting Aladdin’s Gold Casino!
Reviewed-casinos.com.

This evidence suggests that gambling games of the type
normally played in a “brick and mortar” casino are also
available for online play over the internet on various
websites, including websites geared toward social
interaction among the players and observers as well as the
Ser. No. 77894876
8
games themselves. As a result, we find that a viable
relationship exists between applicant’s online computer
games playable over social network websites and
registrant’s dockside casino services.
As a result, this du Pont factor also favors a finding
of likelihood of confusion.
Channels of Trade and Classes of Consumers
We are not persuaded by applicant’s arguments that its
goods travel in channels of trade that are separate and
distinct from those in which registrant’s services may be
encountered. Specifically, applicant argues that
Gamblers and computer gamers are two very
different types of consumers. Gamblers play
games for the purpose of making money. They
wager bets based on odds. They play cards and
dice and slot machines. Consumers of casino
services are found only in places where gaming is
legal, namely, Las Vegas, Atlantic City and
Native American Reservations. By contrast,
consumers of online games on social networking
platforms play games only for fun and to stay in
touch with friends. They use the games to
network with one another. The games are played
on computers and mobile phones everywhere in this
country where users can access the internet.5

However, applicant provides no evidence for its
conclusory statement that enthusiasts of casino services
are separate and distinct from online gaming enthusiasts.
Nor does applicant provide any evidence to support its

5 Id. at 5-6.
Ser. No. 77894876
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position that consumers of casino services are motivated
solely by the desire to win money whereas online gamers
play solely for fun and friendship. Simply put, there is
no evidence that consumers of registrant’s dockside casino
services may not also be consumers of applicant’s computer
programs for online social gaming. Moreover, the above-
excerpted evidence suggests that players of both real and
virtual games, including gambling games, are interested in
both the social aspects of such games and the prospect of
making a profit. Thus, the foregoing evidence suggests
that applicant’s goods may be marketed to the consumers of
registrant’s services, and that some of the consumers may
indeed be the same.
Based upon the foregoing, this du Pont factor also
favors a finding of likelihood of confusion.
Conclusion
In light of the foregoing, particularly given that
applicant’s mark is identical to the mark in the cited
registration, and that a viable relationship exists between
the goods and services, we find that a likelihood of
confusion exists between the applied-for mark and the mark
in the cited registration. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and In re Hyper Shoppes (Ohio), Inc., 837 F.2d
Ser. No. 77894876
10
463, 6 USPQ2d 1025 (Fed. Cir. 1988). Furthermore, to the
extent we have any doubt on the issue of likelihood of
confusion, we have resolved our doubt, as we must, against
applicant. See Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992); Ava Enterprises Inc. v. Audio Boss USA Inc., 77
USPQ2d 1783 (TTAB 2006); Baseball America Inc. v. Powerplay
Sports Ltd., 71 USPQ2d 1844 (TTAB 2004). It is well
established that one who adopts a mark similar to the mark
of another for the same or closely related goods or
services does so at his own peril. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); and W.R. Grace &
Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308
(TTAB 1976).
Decision: The refusal of registration is affirmed.