Friday, March 03, 2006

"SPYRO" (the Dragon) Blocked by Broad "Computer Software" Registration in TTAB 2(d) Affirmance

The Board refused to read limitations into a cited registration for the mark SPYRO for "computer software," and it therefore affirmed the PTO's Section 2(d) refusal to register SPYRO for Applicant Universal Interactive's computer game software. Universal's argument that the registered mark is actually used only in the field of "producing ethylene ... in the engineering and petrochemical industries" was of no avail. In re Universal Interactive, Inc., Serial No. 78377319 (February 15, 2006) [not citable].

Examining Attorney Patty Evanko relied on a registration for the SPYRO mark for "computer software, namely, programs recorded on magnetic media, and user manuals sold therewith." The Board's du Pont analysis was straightforward: the marks are identical and the goods of the cited registration encompass Universal's computer game software.

The Board based its ruling on its prior decision in In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992), involving the same issue: "the likelihood of confusion between broadly defined computer goods in a registration and the same goods that are limited by subject matter in an application."

Of course, the Board gave its standard response to Universal's argument that registrant's goods are limited to the field of ethylene production: the Board will not read limitations into the identification of goods of a cited registration. "Quite simply, an applicant cannot produce the registrant's literature and thereby limit the scope of [registrant's] identification of goods."

The Examining Attorney noted that the cited registration issued in 1986, prior to the Linkvest case. "Therefore, the fact that examining attorneys today would require a more specific identification of goods does not effect (sic) the identification of goods that was approved twenty years ago."

The Board again pointed out that an applicant faced with a broad cited registration is not without remedies:

"Applicant may, of course, seek a consent from the owner of the cited registration, or applicant may seek a restriction under Section 18 of the Trademark Act, 15 U.S.C. Sec. 1068. This remedy is available for those who believe that a restriction in the cited registration(s) may serve to avoid a likelihood of confusion. See Eurostar Inc. v. 'Eurostar' Reitmoden GmbH Co. KG, 34 USPQ2d 1266 (TTAB 1994)." [quoting In re N.A.D., Inc., 57 USPQ2d 1872 (TTAB 2000).]

Universal trotted out two more useless arguments: first, it asserted that there has been no likelihood of confusion even though "both marks have been used in the marketplace for years." The Board, however, pointed out that likelihood of confusion is the test, not actual confusion, and it further observed that in this ex parte case, the views of the registrant on this issue are not available. Second, Universal claimed that it was entitled to the benefit of the doubt on the Section 2(d) issue, but the Board pointed out that the case law dictates just the opposite.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.


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