In re Warhorse Studios s.r.o., 79264503

• Decision Date: 20 July 2020
• Docket Number: 79264515 [1],79264503
• Parties: In re Warhorse Studios s.r.o.
• Court: Trademark Trial and Appeal Board

In re Warhorse Studios s.r.o.

Nos. 79264503, 79264515 ^[1]

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 20, 2020

This Opinion is Not a Precedent of the TTAB

John Alumit of Alumit IP, for Warhorse Studios s.r.o.

D Travis Bice, Trademark Examining Attorney, Law Office 128 Travis Wheatley, Managing Attorney.

Before Wellington, Lykos and Hudis, Administrative Trademark Judges.

OPINION

Hudis Administrative Trademark Judge

Warhorse Studios s.r.o. ("Applicant") seeks registration on the Principal Register of the mark KINGDOM COME DELIVERANCE (Stylized) in the following form:

(Image Omitted) ^[2]

and the mark KINGDOM COME DELIVERANCE (in standard characters), ^[3] both for:

Downloadable and recorded video game software; Downloadable and recorded computer game software; downloadable computer game programs; recorded computer game programs; Downloadable and recorded virtual reality game software; Downloadable and recorded interactive multimedia computer game programs; Downloadable and recorded electronic game software for handheld electronic devices; computer game software downloadable from a global computer network in International Class 9.

The Trademark Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant's marks, as applied to the goods identified in the applications, so resemble the registered mark THY KINGDOM COME & Design in the following form: for a "board game," in International Class 28, ^[4] and also so resemble the registered mark DELIVERANCE (Stylized) in the following form:

(Image Omitted)

for "board games," in International Class 28, ^[5] both on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive.

(Image Omitted)

After the Trademark Examining Attorney made the refusals final, Applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. We affirm the refusals to register.

I. Consolidation

As noted above, Applicant has filed ex parte appeals with the Board in two co-pending applications that present common questions of law and fact, and the records are substantially similar.^[6] The Board therefore granted the Examining Attorney's motion to consolidate these cases, ^[7] so that we now decide them in this single opinion.^[8] In re Mr. Recipe, LLC, 118 U.S.P.Q.2d 1084, 1085 (TTAB 2016) (Board consolidated appeals in two applications upon Examining Attorney's motion).

II. Likelihood of Confusion - Applicable Law

We base our determination of likelihood of confusion under Trademark Act Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (CCPA 1973) ("DuPont"), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 U.S.P.Q.2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 U.S.P.Q.2d 1160, 1162-63 (Fed. Cir. 2019). However, "each case must be decided on its own facts and the differences are often subtle ones." Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 U.S.P.Q. 386, 387 (CCPA 1973).

In applying the DuPont factors, we bear in mind the fundamental purposes underlying Trademark Act Section 2(d), which are to prevent confusion as to source and to protect registrants from damage caused by registration of confusingly similar marks. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 U.S.P.Q. 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 U.S.P.Q.2d 1161, 1163 (1995); DuPont, 177 U.S.P.Q. at 566.

Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 U.S.P.Q.2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 U.S.P.Q.2d 1687, 1688 (Fed. Cir. 1993) ("the various evidentiary factors may play more or less weighty roles in any particular determination"). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002) ("The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but 'may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.'")).

III. Analysis

We now consider the arguments of Applicant and the Examining Attorney in view of applicable law and the evidence of record. The likelihood of confusion factors Applicant focused on in these appeals are the similarity or dissimilarity of the marks, and the relatedness of the goods associated with each mark. The Examining Attorney, too, focused on these factors as well as the channels of trade and classes of purchasers therefor.

A. The Similarity or Dissimilarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant's and the Registrants' marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 U.S.P.Q. at 567; In re Detroit Athletic Co., 903 F.3d 1297, 128 U.S.P.Q.2d 1047, 1048 (Fed. Cir. 2018). "Similarity in any one of these elements may be sufficient to find the marks confusingly similar." In re Inn at St. John's, LLC, 126 U.S.P.Q.2d 1742, 1746 (TTAB 2018), aff'd, Slip Op. No. 18-2236 (Fed. Cir. Sept. 13, 2019) (mem) (quoting In re Davia, 110 U.S.P.Q.2d 1810, 1812 (TTAB 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." In re i.am.symbolic, llc, 123 U.S.P.Q.2d at 1748. The parties' marks "'must be considered … in light of the fallibility of memory ….'" In re St. Helena Hosp., 774 F.3d 747, 113 U.S.P.Q.2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 U.S.P.Q. 1 (CCPA 1977)). Therefore, "[t]he focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks." In re Assoc. of the U.S. Army, 85 U.S.P.Q.2d 1264, 1268 (TTAB 2007).

Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, we agree with Applicant's principal argument^[9] that 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 U.S.P.Q. 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 U.S.P.Q. 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, different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 U.S.P.Q. 266, 268 (CCPA 1955). Therefore, "in articulating reasons for reaching a conclusion on the issue 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 consideration of the marks in their entireties" In re Nat'l Data, 224 U.S.P.Q. at 751.

1. Comparison of Applicant's Marks to the THY KINGDOM COME & Design Mark of Registration No. 4822263

We find that KINGDOM COME is the dominant portion in Applicant's marks KINGDOM COME DELIVERANCE (Stylized) and KINGDOM COME DELIVERANCE (in standard characters). That is because consumers generally are more inclined to focus on the first word or words in any trademark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 U.S.P.Q.2d 1689, 1692 (Fed. Cir. 2005) ("Veuve" is the most prominent part of the mark VEUVE CLICQUOT because "veuve" is the first word in the mark and the first word to appear on the label); see also Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 U.S.P.Q.2d 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"). We further find that KINGDOM COME is visually emphasized in Applicant's KINGDOM COME DELIVERANCE (Stylized) mark because it appears in larger font than, and is situated above, the DELIVERANCE portion of the mark. See In re Aquitaine Wine USA, LLC, 126 U.S.P.Q.2d 1181, 1185 (TTAB 2018) ("[B]ecause of the position, size and bolding of the term LAROQUE, this single term dominates the commercial impression of Applicant's mark.").

The Examining Attorney made of record the definition of "THY" in the cited THY KINGDOM COME mark as meaning "the possessive form of "THOU."^[10] The same definition of "THY" made of record by Applicant further explains that the term is "used as an attributive adjective before a noun beginning with a consonant sound."^[11]A different definition of "THY" Applicant provided states that the term is "archaic belonging to or associated in some way with you (thou)."^[12] For further context, Applicant submitted the definition of "THOU" as also being "archaic … dialect refer[ing] to the person...