ARGUMENT

The Office Action refuses registration based on an alleged likelihood of confusion with
U.S. Registration No. 2,298,928. For the reasons set forth below, we respectfully request that the
Examining Attorney withdraw the refusal.

I. Identification

The originally submitted identification of goods was:

“Board game and promotional materials related to the board game”

With this Office Action response, the identification has been amended to more
specifically designate Applicant’s goods:

” Alcohol-drinking-themed, adult party Bboard game, played with dice, and promotional
materials related to the board game”

II. 2(d) Rejection

The July 14 Office Action rejects Applicant’s “DOUBLE VISION” mark over a
“DOUBLE VISION” mark owned by Mattel for “toy vehicles and accessories therefor” (the
“Mattel Mark”).

As an initial point, the mark “DOUBLE VISION” is inherently weak, as there are many
such marks. Aside from Applicant’s mark and Mattel’s Mark, there are a total of 38 marks
incorporating “DOUBLE VISION” in TESS (see Exhibit 1), of which 12 are live marks (see
Exhibit 2). These include automotive gauges, hats, clothing, perfumes, voltmeters, marketing
applications, vision health services and entertainment services. An Internet search reveals other
products being sold under the term “DOUBLE VISION,” including puzzles, kites, and magic
tricks, which are items–like toy trucks–that are frequently marketed to children. See Exhibits 3-
5. Such extensive use of “DOUBLE VISION” renders it a weak mark, entitled to a narrow scope
of protection. See Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1339-40 (Fed.
Cir. 2015) (third party registrations can show that the mark “has a normally understood and well-
recognized descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak”).

A. Dissimilarity of the Marks

Applicant concedes that the marks are superficially the same. However, in the context of
the recited products, the marks have substantially different connotations. The Mattel “DOUBLE
VISION” vehicles are part of Mattel’s popular HOT WHEEL line. The original “DOUBLE
VISION” cars were double-sided, with both sides having symmetrical features. More recent
“DOUBLE VISION” cars are double-sided in the sense of a catamaran, with different features on
both wings. In essence, one wing shows the exterior of the car, while the other wing illustrates
the engine or some other interior feature of the car. See Exhibits 6-7. Thus, the Mattel Mark

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uses “DOUBLE VISION” in the sense of double-sided, or featuring both an exterior and interior
view simultaneously.

The connotations of Applicant’s “DOUBLE VISION” are entirely different, as reflected
in the revised identification. A feature of Applicant’s game is the use of dice, in which throwing
“doubles” (a pair of dice both showing the same number), has special game consequences. In
addition, a major theme of the game relates to a player’s avatar “drinking” alcoholic beverages.
Accordingly, if the avatar consumes too much, players may refer to him or her as having
“DOUBLE VISION,” a well-known effect of such drinking. Neither of these meanings has any
application to toy vehicles.

Accordingly, in the context of the recited products, the term “DOUBLE VISION” has
entirely different meanings, which is a factor strongly supporting a lack of consumer confusion.
See, e.g., Swatch AG v. Beehive Wholesale, LLC, Opposition No. 91169312, at 22-23 (TTAB
Feb. 23, 2011), aff’d, 888 F. Supp. 2d 738, 750 (E.D. Va. 2012), aff’d, 739 F.3d 150, 159 (4th Cir.
2014) (“Most importantly, the marks are distinctly different in meaning.” ); In re Sears, Roebuck
and Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (different connotations give marks legally
identical in sound and appearance different commercial impressions); In British Bulldog, Ltd.,
224 USPQ 854, 856 (TTAB 1984) (different connotations between PLAYERS for men’s
underwear and for shoes); In re Sydel Lingerie Co., Inc., 197 USPQ 629, 630 (TTAB 1977)
(connotation for BOTTOMS UP for men’s suits, coats and trousers likely to relate to drinking
and to be distinguished from that applicable to ladies’ and children’s underwear).

B. Dissimilarity of the Goods

As a threshold matter, Applicant submits that board games and toy vehicles are very
different products. The Examiner’s contention is that they can nonetheless be considered related,
because they often emanate from the same sources, with hasbro.com, target.com and fisher-
price.com cited as examples where both can be obtained.1

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The allegation is unsupported as to Fisher-Price, as the webpage in question does not seem to
contain any examples of board games. While the Office Action also relies on some third party
registrations to support the supposed relatedness of toy vehicles and board games, most of those
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This is primarily an argument that both toy vehicles and board games are items sold to
children, and that a number of companies specialize in child-oriented products. While that may
be true as to some child-oriented products, it has no application to Applicant’s board game,
which, as reflected in the revised identification, is marketed to adults and relates to drinking, an
activity from which children are excluded by law. Accordingly, there is no overlap in the
consumers for the products and no likelihood of confusion. See Checkpoint Systems, Inc. v.
Check Point Software Technologies, Inc., 269 F.3d 270, 289-90 (3d Cir. 2001) (difference in
product users reduces likelihood of confusion); Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d
252, 262 (5th Cir. 1980) (confusion unlikely when predominant purchasers of one pizza product
are young, single, males and predominant purchasers of second product are middle-aged
housewives); Blazon, Inc. v. Blazon Mobile Homes Corp., 416 F.2d 598 (7th Cir. 1969)
(children’s sports equipment and toys vs. trailers and campers). While an adult might purchase a
product as a gift for a child, adults would certainly not purchase drinking-themed board games
for their children to play.

The evidence on which the Office Action is based also does not reflect the realities of the
marketplace. Because toy trucks and board games are fundamentally different products,
consumers do not expect them to be sold as part of the same line of products. Even in the
context of child-oriented products (which context does not apply to Applicant’s goods), a
consumer may expect that a house brand may be the same between toy vehicles and games, but
would not expect a product brand that is registered for “toy vehicles” to also encompass “board
games.” The Mattel Mark is a good example of this reality. There are three marks featured on
the product: MATTEL, HOT
WHEELS and DOUBLE VISION
(plus a derivative mark, MATTEL
WHEELS). Of these, consumers
know that MATTEL is the house
brand and only MATTEL would be
considered to be a potential source
of board games. HOT WHEELS
relates only to vehicles, and
DOUBLE VISION relates to a
subset of those vehicles and is
displayed least prominently. See
Exhibit 7. Consumers would not
expect a mark registered solely for
“toy vehicles” to encompass
products as unrelated as “board
games,” let alone products as unrelated as “Alcohol-drinking-themed, adult party board game,
played with dice, and promotional materials related to the board game.”

registrations are recent filings by Asian companies, and thus cast little light on the expectations
of American consumers. See 4700685 (Taiwan), 4733926 (Hong Kong), 4738060 (China),
4734594 (China), 4738788 (China), 4763988 (Hong Kong), 4733557 (Hong Kong).

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C. Conclusion

For the foregoing reasons, consumers would not be likely to confuse Applicant’s Mark
with the Mattel Mark and Applicant’s application should be approved.

EXHIBITS

1. TESS Record of Marks Incorporating “DOUBLE VISION”

2. Certificates of Registration and TSDR Status Reports of Live Marks Incorporating
“DOUBLE VISION”

3. http://www.amazon.com/English-Double-Vision-Starry-
Jigsaw/dp/B00AJ0ZHE0/ref=sr_1_29?s=toys-and-games&ie=UTF8&qid=1442521841&sr=1-
29&keywords=%22double+vision%22 (last visited September 18, 2015)

4. http://www.amazon.com/New-Tech-Kites-Double-
Vision/dp/B000BL393I/ref=sr_1_24?s=toys-and-games&ie=UTF8&qid=1442520689&sr=1-
24&keywords=%22double+vision%22 (last visited September 18, 2015)

5. http://www.amazon.com/Double-Vision-Larry-Becker-
Earle/dp/B00NV8ACFG/ref=sr_1_11?s=toys-and-games&ie=UTF8&qid=1442520689&sr=1-
11&keywords=%22double+vision%22 (last visited September 18, 2015)

6. http://www.ebay.com/itm/Vintage-Hot-Wheels-Redline-Double-Vision-1969-Rare-
metallic-green-/321220595267 (last visited September 18, 2015)

7. http://www.jhotwheels.com/2014/07/double-vision.html (last visited September 18,
2015)

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