Thursday, January 28, 2010

Affirming 2(d) Refusal of "COMMANDER-IN- CHIEF," TTAB Finds Board Games and Playing Cards Related

In this Section 2(d) Board game, the TTAB found the mark COMMANDER-IN-CHIEF for "equipment sold as a unit for playing board games" likely to cause confusion with the nearly identical mark COMMANDER IN CHIEF for playing cards. Applicant's arguments that Registrant sells its goods to tourists in Washington, DC and other touristy areas and that Registrant may no longer be using its mark were simply irrelevant to the Board's determination. In re Paul D. Miller, Serial No. 77332676 (January 27, 2010) [not precedential].

Not surprisingly, the Board found the involved marks to be "substantially identical," a fact that weighed heavily against Applicant. Moreover, when marks are substantially identical, a lesser degree of closeness between the goods is necessary to support a finding of likely confusion.

Applicant's references to how Registrant uses its mark and whether it has abandoned its mark for playing cards were trumped by black letter law: the issue of likelihood of confusion must be determined in light of the goods as identified in the involved application and registration, not on the basis of what the extrinsic evidence shows.

Applicant argued that Examining Attorney Jennifer Vasquez had misinterpreted the term "playing cards" because, when the term stands alone, it means a "standard pack of fifty-two playing cards." But the Examining Attorney demonstrated that "traditional board games come with a variety of types of game cards, many of which are referred to as 'playing cards.'" And in some board games, a traditional fifty-two card deck is a critical component. Moreover, some manufacturers and merchants sell standard decks in close proximity to board games. The Board therefore concluded that the goods are related for Section 2(d) purposes.

Since there are no limitations as to channels of trade in the application or registration, the Board presumed that they travel in the normal channels for such goods. Finally, the goods are not particularly expensive, and so potential buyers will not be "especially thoughtful" in purchasing them.

Balancing the du Pont factors, the Board found confusion likely and it affirmed the refusal.

TTABlog comment: Since Registrant has purportedly stopped using the mark for playing cards, perhaps Applicant should have considered Section 18 of the Trademark Act, which permits partial cancellation or restriction of a registration. Sometimes a letter to the Registrant bringing up the subject of partial cancellation or restriction may yield a consent to register, and both parties can go on their merry way, thereby avoiding the TTAB poker game.

Text Copyright John L. Welch 2010.


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