CBS Inc. v. Morrow

Decision Date06 June 1983
Docket NumberNo. 83-597,83-597
PartiesCBS INC., Appellant, v. George Clifford MORROW, Appellee. Appeal
CourtU.S. Court of Appeals — Federal Circuit

Arthur H. Seidel, Philadelphia, Pa., for appellant. Ronald L. Panitch, Roberta L. Jacobs and Jay K. Meadway, Philadelphia, Pa., were on the brief for appellant, of counsel.

Francis H. Lewis, Alameda, Cal., for appellee. With him on the brief was J. Thomas McCarthy, San Francisco, Cal., of counsel.

Before RICH, MILLER, and SMITH, Circuit Judges.

JACK R. MILLER, Circuit Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board ("board") of the Patent and Trademark Office dismissing appellant's opposition 1 to application serial No. 145,054 for registration of the mark "THINKER TOYS and Design," shown below, for "[a]pparatus for electronic computers and data processing systems." We reverse.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
BACKGROUND

Applicant-appellee's business is currently limited to the design, manufacture, and sale of peripheral products for microcomputers and small computers and/or data processing systems. Applicant's products are sold through two main channels of trade: approximately 85% of his products are sold wholesale to microcomputer stores and systems houses; the remaining 15% are mail order sales, of which approximately one-third are made to individual consumers. Applicant's goods bearing the mark "THINKER TOYS" currently include "electronic components and circuit boards," but do not include "electronic terminals, keyboards, screens, printers, computers or programs or software for games or toys." Registration has been opposed by appellant on the ground of likelihood of confusion between applicant's mark, as applied to the goods described in its application, and opposer's mark based on opposer's prior use and registration (in 1914) of the mark "TINKERTOY" on the principal register for "games, toys, and children's building-blocks," 2 renewed for the third time for twenty years from April 7, 1974.

The board found that the goods of the applicant are not so closely related to the goods of opposer that the purchasing public would identify them with a single source; also, that the channels of trade in which the respective goods move are different. The board further found that the commercial impression of applicant's mark differed significantly from that of the "TINKERTOY" mark, relying primarily on the presence of the light bulb in applicant's mark. Accordingly, the board, with one member dissenting, held that there was no likelihood of confusion from concurrent use of the respective marks.

ANALYSIS

Where likelihood of confusion is asserted by an opposer with respect to a trademark for which an application for registration has been filed, the issue must be resolved on the basis of not only a comparison of the involved marks, but also on consideration of the goods named in the application and in opposer's registration and, in the absence of specific limitations in the application and registration, on consideration of the normal and usual channels of trade and methods of distribution. Squirtco v. Tomy Corp., 697 F.2d 1038, 1042-43, 216 USPQ 937, 940 (Fed.Cir.1983). The description of the goods in an application for registration is critical because any registration that issues will carry that description. Moreover, although a registrant's current business practices may be quite narrow, they may change at any time from, for example, industrial sales to individual consumer sales. San Fernando Electric Manufacturing Co. v. JFD Electronics Components Corp., 565 F.2d 683, 685, 196 USPQ 1, 2 (CCPA 1977).

Applicant's goods are not limited to any particular channels of trade or methods of distribution, nor to any particular end products. They are identified so broadly that they could include electronic components and circuit boards for computer games or video games. 3 We are not persuaded that applicant would always refrain from offering circuit boards for computer games or video games through the same channels of trade employed by opposer for its "TINKERTOY" products. 4

Applicant argues that confusion from use of the marks is not likely because its customers are by and large sophisticated, well-educated, technically oriented persons, in contrast to the generally juvenile buyers of the wooden stick toys that opposer manufactures. However, there is no restriction on the nature of the "games" identified in opposer's registration. Moreover, even within applicant's exhibit, "1978 Profile of Computer Store Customers," the percentage of personal computer purchasers who identified "games" as a reason for the purchase ranged from 43% to 73% among different occupational groups. We conclude that, in view of the popularity of computer and video games, applicant's electronic components and circuit boards, offered to the public under...

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