For a Section 2(d) refusal based on another's prior trademark registration, “[t]he weaker [the registrant's] mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339, 115 USPQ 1671, 1676 (Fed. Cir. 2015) (internal citations omitted); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”).

Additionally, if there is evidence a mark, or an element of a mark, is commonly adopted by many different registrants, that may indicate the common element has some non-source identifying significance that undermines its conceptual and commercial strength as an indicator of a single source. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense in which a mark is used in ordinary parlance,' … that is, some segment that is common to both parties' marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak'” (quoting Juice Generation, 115 USPQ2d at 1674)).

PLAYBOOK “highly suggestive” for sports-related products

A trademark application for PLAYBOOK for “Collectible trading cards; Sports trading cards” was refused on the ground of likely confusion with the identical mark registered for “Magazines featuring sports information.”

On appeal, the TTAB reversed the refusal because the marks were “highly suggestive” and there was insufficient evidence to show that consumers were likely to encounter the goods in the same channels of trade. In re Panini America, Inc., Serial No. 88960212 (TTAB July 12, 2023).

Definition of “Playbook”

The evidence of record included a definition of “playbook” as “one or more plays in book form; a notebook containing diagrammed football plays; a stock of useful tactics or methods.” The TTAB concluded that PLAYBOOK is “highly suggestive of the subject matter of the magazines featuring sports information identified in the cited registration, particularly with regard to football.” Although highly suggestive, the registered mark was nonetheless distinctive, as applied to the identified goods. See Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (“A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”); see also 15 U.S.C. 1057(b).

Other Evidence of Record

The record also included screenshots from seven websites using the mark PLAYBOOK and formatives for goods and services in the field of sports. While this evidence of seven third-party uses was more modest than that found to be determinative in other cases (such as Juice Generation and Wolfskin), the TTAB found that they nonetheless were relevant to show the relative weakness of Registrant's PLAYBOOK mark.

Viewing the record as a whole, we find that the registered PLAYBOOK mark is entitled to a narrower than usual scope of protection to which highly suggestive but nonetheless distinctive marks are entitled, primarily due to the definition of PLAYBOOK and evidence of third-party use and registration of PLAYBOOK formatives for related goods and services.

The record also contained webpages demonstrating as many as five third parties offered magazines and trading cards under the same trademark. Other website evidence also showed “collaborations between magazines and trading card companies, including Applicant, to provide magazines featuring trading cards.” The TTAB found that “such collaborations are co-branded and indicate the separate sources of the goods, not a single source.” The other websites “appear to offer sports magazines and sports or collectible trading cards under different trademarks, house marks and brand names.”

The record also included six live, use-based, third-party registrations for marks identifying trading cards and sports magazines. Even without proof of actual use, these registrations still had some probative value on the relatedness of the goods.

          In this case, the totality of the website and third-party registration evidence falls rather short of demonstrating that consumers would expect sports trading cards and magazines featuring sports information could emanate from the same source.

With regard to the similarity of the trade channels in which the goods are encountered, the TTAB found that the above website evidence demonstrates that five third parties provide sports trading cards and magazines featuring sports information on their websites under the same trademarks; and six third parties have registered marks identifying both goods.

          As discussed above, the evidence of record falls short of demonstrating that both Applicant's goods and the registrant's goods may be encountered by the same classes of consumers under the same marks in common trade channels. The evidence of record shows a mere five third-party websites of entities providing trading cards and sports magazines under the same mark, and six third-party registrations for marks identifying, inter alia, trading cards and sports magazines. Collectively, this is insufficient to show consumers are likely to encounter these goods in the same channels of trade.

With respect to the sophistication of consumers, the TTAB concluded that this factor was neutral on this record.

Ultimately, the TTAB concluded that consumers familiar with goods identified in the cited registration offered under its mark would be unlikely to believe, upon encountering Applicant's mark, that the goods originated with or are associated with or sponsored by the same entity. “While the marks are identical, the relative weakness of the cited mark and insufficient evidence that the goods are related or will be offered in common trade channels mitigate against a finding of likely confusion.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.