Tuesday, August 19, 2008

TTAB Rules that Registration and Use of "GOGAMERS.COM" as a Domain Name Does Not Establish Priority

Two video game websites went to battle before the TTAB and, when the virtual dust had settled, Applicant Game-Xpert, Inc. grabbed the victory. Game-Xpert sought registration of its GOGAMER.COM logo shown immediately below, for "computerized on-line retail store and distributorship services featuring computer game software." Opposer Gamers, Inc. alleged likelihood of confusion with its previously used marks GAMERS and GOGAMERS.COM for video game sales. Applicant responded by maintaining that "Gamers" is at least merely descriptive of Opposer's services, that Opposer had not proven acquired distinctiveness, and that Opposer had not used the terms as trademarks. Gamers, Inc. v. Game-Xpert, Inc., Opposition No. 91164969 (August 6, 2008) [not precedential].

Of course, to succeed on a likelihood of confusion claim, one must first prove priority. Applicant Game-Xpert established through testimony and evidence a first use date of December 18, 2001 for its logo mark. That date was earlier than the date alleged in its application, but Game-Xpert provided the requisite clear and convincing evidence to establish the earlier date. Game-Xpert registered its domain name <gogamer.com> in 1999, and its website was operational as of December 18, 2001, displaying the logo mark in the upper left hand corner of its home page.

Opposer registered its domain name <gogamers.com> on July 17, 1998, but initially the top of the web page displayed the mark GAMERS. The term "gogamers.com" appeared as the web address in the lower left corner of the page. Eventually, Opposer displayed the GOGAMERS.COM mark at the top of the page, but the earliest documentary evidence of that usage was dated 2005.

The Board noted "while a domain name may attain trademark status, its use as an address does not support trademark use." Although trade name usage is sufficient to establish priority in an inter partes dispute (even though not sufficient to support an application to register), priority based on trade name use is grounded in Section 2(d) of the Trademark Act: "... or a mark or trade name previously used in the United States...."

"There is no equivalent provision for domain name registration or use; nor is a domain name, per se, similar to a trade name; it is more in the nature of a street address. Therefore, domain registration and use as a web address in and of themselves do not serve to establish priority. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999)."

Opposer also sought to establish priority through its use of the ID "gogamers.com" on eBay. The Board, without deciding whether priority may be based on an eBay user ID, concluded that Opposer's testimony was ambiguous and its documentary evidence failed to show use earlier than 2005.

The Board ruled that Applicant has priority vis-a-vis Opposer's GOGAMERS.COM mark. And so Opposer's 2(d) claim based on that mark was blown away.

Turning to Opposer's assertion of rights in the mark GAMERS, the Board first denied Applicant's claim that GAMERS is generic for on-line retail sale of computer and video games. However, it found that GAMERS is merely descriptive. Therefore, Opposer would have to establish acquired distinctiveness before Applicant's priority date in order to prevail under Section 2(d).

Opposer claimed first use in 1993 at its store in Omaha, Nebraska, and use on-line in 1998. Its current annual revenues are about $8 million and its sells in all fifty states. However, in light of the highly descriptive nature of the mark, the Board found this evidence insufficient to prove secondary meaning. Opposer did not establish the level of annual sales prior to 2001, nor did it provide evidence of extensive advertising or of the number of visitors to its website.

In any case, GAMERS is entitled to "very little scope of protection" in the video game field. As a result, the differences between GAMERS and Applicant's GOGAMER.COM logo mark are sufficient to distinguish the marks, despite their use for identical services.

The Board therefore dismissed the opposition.

TTABlog note: The Board focused on the webpage printouts for the two sites, and did not mention the appearance of the domain address in the browser bar or in the title bar displayed at the very top of the screen page, above the browser bar. Presumably appearance of the term in the browser bar would be deemed merely use as a web address, but what about the title bar? For this blog, the title bar reads "The TTABlog®." Is that a trademark use?

Text Copyright John L. Welch 2008.


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