WYHA? TTAB Affirms 2(d) Refusal of "GAME GENIE & Design" for VIdeo Game Cheat Software

The Board affirmed a Section 2(d) refusal to register the mark GAME GENIE & Design, shown below, for "cheat device, namely software downloaded from an online database to all a user to manipulate selectable game play features associated with game software for video games to be played on personal computers and video game consoles" [GAME disclaimed], finding the mark likely to cause confusion with the registered mark GAME GENIE for "hand held units for playing electronic games and stand alone video game machines." Third-party registrations and webpages showed that downloadable software and game devices may emanate from the same source under single mark. Would you have appealed? In re Hyperkin Inc., Serial No. 85472382 (October 16, 2013) [not precedential].

The marks: The fanciful representation of a genie in applicant's mark merely reinforces the word portion of the mark. Consumers are more likely to use the words "GAME GENIE" when purchasing the goods, than they are to refer to the design. In short, the words GAME GENIE constitute the dominant portion of applicant's mark.

Applicant feebly argued that because its goods are available only via download, consumers will use the genie image to locate applicant's goods, rather than using "genie" as a search term. The Board found the argument "speculative, at best," since searching for an image would likely be more complicated than searching for a word. Moreover, the cited mark is registered in standard character form and it could be used with a similar genie design.

And so the Board found that the design feature of applicant's mark does not distinguish it from the cited mark.

The goods: Examining Attorney Laurie R. Kaufman submitted pages from Nintendo's website advertising a device that accepts game cartridges and includes built-in software for downloading additional games, browsing the Internet, etc. Software may be downloaded directly from Nintendo's website. Other third-party websites showed that a single company may sell a hand held game unit as well as game cartridges and downloadable software, all under a single mark. Moreover, applicant's own website (here) sold a game card that allows users to download codes from the website.

Applicant contended that the websites did not offer game manipulation software, but only the games themselves. The Board was not moved:

Because the games and gaming units are sold together, prospective purchasers are likely to believe that game manipulation software bearing applicant’s mark would not only be playable on hand held units bearing the same or similar mark, but would emanate from the same manufacturer.

Eight third-party registrations corroborated the finding of likely confusion. They showed companies have registered, under the same mark, both downloadable software for accessing computer games and the equipment to play the games. Consumers familiar with registrant's GAME GENIE hand held gaming units and stand alone video games will likely believe, when encountering applicant's software, that registrant has extended its line of goods to game manipulation software.

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the refusal to register.

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TTABlog note: Well, would you have appealed?

Text Copyright John L. Welch 2013.