Tuesday, March 27, 2018

TTAB Test: Is NONSTOP KNIGHT Confusable With NONSTOP GAMES for Computer Game Software?

The USPTO refused registration of the mark NONSTOP KNIGHT for computer game software, finding it likely to cause confusion with the registered mark NONSTOP GAMES for the same goods. On appeal, applicant pointed to more than 20 iPhone apps having the word NONSTOP, in various spellings, in their names - including NONSTOP NINJA, NONSTOP HERO, and NONSTOP MILLIONAIRE - and it argued that NONSTOP is a weak formative in this field. How do you think this came out? In re Kopla Games Ltd., Serial No. 87004917 (March 14, 2018) [not precedential] (Opinion by Judge Albert Zervas).

As we know, when the marks at issue appear on identical goods or services, a lesser degree of similarity is necessary between the marks to support a finding of likely confusion.

Generally the first part of a mark is the part most likely to be impressed upon the consumers mind and be remembered. Moreover, here the word GAMES in the cited mark is generic and therefore less likely to be accorded source-identifying significance than the word NONSTOP. Applicant noted the alliteration in its mark, asserting that the mark would be considered as a whole rather that with an emphasis on NONSTOP, but the Board was not impressed.

Applicant contended that NONSTOP has a different connotation in each mark in that the "combination of these words strongly suggests that the [cited] mark is being used as a company name that perhaps is working 'nonstop' to create and develop new games, as opposed to the name of a specific game featuring a ‘nonstop’ moving knight character." The Board, however, found the marks similar in connotation: "NONSTOP in both marks connotes continuousness."

Moreover, the Board observed, "consumers familiar with registrant’s NONSTOP GAMES games, upon encountering Applicant’s games, will mistakenly believe that Applicant’s games are another of registrant’s games."

Finally, applicant maintained that NONSTOP is a weak formative for video games in light of more than 20 iPhone apps the include the word NONSTOP, in various forms, in their titles. The Board observed, however, that "[b]ecause the pages from the App Store do not indicate the source(s) of the games, and in particular whether the source(s) of the games is/are the same entity as the 'Seller,' Applicant’s evidence has limited probative value." [What difference does it make whether the apps all came from the same source? - ed].

While we find NONSTOP in registrant’s mark to be suggestive of a feature of registrant’s goods and services, on this record, it is not so weak as to permit the registration of a similar mark for essentially the same goods and services.

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is this a WYHA?

Text Copyright John L. Welch 2018.


At 11:26 AM, Anonymous Anonymous said...

This is a poor decision. The Board states over-and-over again that marks should be viewed as a whole, but completely ignores this well established principle in this decision.

Nonstop Knight seems to mean an invisible soldier, a person who cannot be defeated. It refers to a specific character and creates a mental impression of a person in a suit-of-amour equipped perhaps with a sword and shield. In complete contrast, Nonstop Games seems to refer to the game itself. The game has no ending and a player can continuously play without fear of finishing. The respective marks create entirely different commercial impressions and entirely different mental images.

Instead, the Board seems to focus on the descriptor "nonstop" and finds confusion because they share the same word all the while ignoring the fact that the descriptor is used to describe two entirely different things.

At 1:01 PM, Blogger Eddie said...

Give me a break. Nonstop is basically descriptive and 20 other apps use Nonstop.

At 8:13 AM, Anonymous RET said...

I agree with Anon's post. As someone who used to play (and now plays 5 minutes a month since I have kids) video games, it it not the first term of the title that leaves an impression on me. For example, I don't refer to "Grand Theft Auto" as "Grand" or "Grand Theft", "Mortal Kombat" as "Mortal", etc. Rhetorically; is "Mortal Kombat" confusingly similar to "Mortal Games"?

At 4:56 PM, Anonymous Dayle.D said...

The primary issue regarding NONSTOP KNIGHT's § 2(d) refusal is its likelihood of confusion with NONSTOP GAMES. All things considered, I think the TTAB got it right here.

As applied to the marks at issue, the majority of the key Du Pont factors weigh in favor of similarity of the marks. Those factors, listed in decreasing similarity, are the marks' individual commercial impression, look, and sound. The marks are similar in commercial impression because, as the applicant concedes, they are both online gaming applications, they share the word NONSTOP in the same positioning, and they share the same consumers. The marks are similar in appearance because both contain two words, and they share the same first word, NONSTOP. The marks are similar in sound-but less so than the preceding factors-because they share NONSTOP. Although, a valid argument exists that the marks sound quite different as a whole because of the phonetic alliteration of each word in NONSTOP KNIGHT versus the contrasting phonetic consonants of each word in NONSTOP GAMES. But on balance, the phonetic differences are not likely to minimize the similarity existing in the words' shared first word, NONSTOP.

The marks only differ in meaning. NONSTOP means "continuing without stopping or pausing." GAMES means "a form of play or sport, especially a competitive one played according to rules and decided by skill, strength, or luck." Taken together, the words mean ongoing play. NONSTOP is as defined above and KNIGHT means "a man who served his sovereign or lord as a mounted soldier in armor." Taken together the words mean an ongoing mounted, armored soldier. Ongoing play and an ongoing mounted, armored soldier have little in common except that the adjective that describes each subject-the Games and the Knight-infers that the two subjects are in the same state of being. In this instance. For example, the two marks when taken as a whole are about as similar as a wet sponge and a wet dog. Per the second key factor under Du Pont, the two marks have nearly identical goods and services as described in their application and registration. On the other hand, since the Du Pont factors examine each mark in the context of the relevant consumer, NONSTOP KNIGHT could reasonably mean the knight chess piece in continual motion. To the relevant consumer, NONSTOP NIGHT could reasonably mean either, with the latter treading much closer to the meaning of NONSTOP GAMES.

As applied to the marks at issue, the majority of the secondary Du Pont factors weigh in favor of similarity of the marks. The established, likely-to-continue trade channels of both marks are digital app purchasing platforms; this means the first factor weighs in favor of similarity of the marks. The manner of sale is likewise virtually the same, with sophistication of casual online game purchasers likewise ranking as low; buying an app is usually done on impulse. The final relevant factor under Du Pont is the number of similar marks in use on similar goods. The applicant cites to 20 marks using NONSTOP that currently exist in The App Store. As such, this factor is the only one that weighs substantially in favor of the applicant. NONSTOP is a weak identifier of source given the number of similar apps containing the word. But regardless, this factor taken together with the arguable meaning of each mark, is not enough to overcome the other factors that weigh in favor of likelihood of confusion between NONSTOP GAMES and NONSTOP KNIGHT.

Practically, any gaming app in The App Store containing NONSTOP has the potential to violate NONSTOP GAMES's trademark. I cannot help but wonder how NONSTOP GAMES was distinctive enough to trademark in the first place. It seems The App Store is no exception to the rule, the early bird gets the worm… or the trademark in this case.


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