Lowtech Studios LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: June 21, 2019
U NITED STATES P ATENT A ND T RADEMARK O FFICE
Trademark Trial and Appeal Board
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In re Lowtech Studios LLC
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Serial Nos. 87196814 and 87196855

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Steven D. Lustig, Craig A. Phillips and Edward P. Perdue
of Dickinson Wright PLLC for Lowtech Studios LLC.

Leslee Friedman, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Taylor, Adlin and English, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Applicant Lowtech Studios LLC seeks registration of the standard character

marks SLITHER and SLITHER.IO, both for “Sculptural toys, including soft

sculptural plush toys, namely, plush snakes designed to resemble characters in a

video game, sculptural plastic and rubber toys, namely, rubber and plastic snakes

designed to resemble characters in a video game; puzzles, namely, puzzles designed

to resemble characters and screenshots of a video game.”1 The Examining Attorney

1 Application Serial Nos. 87196814 (the “’814 Application”) and 87196855 (the “’855
Application”), respectively, each filed October 7, 2016 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged intent to use each mark in commerce.
Serial Nos. 87196814 and 87196855

refused registration of both marks under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d), on the ground that Applicant’s marks so resemble the registered mark

SLITHER SLIDE, in standard characters, for “toy vehicles and accessories therefor,

toy vehicle track sets and accessories therefor”2 as to be likely to cause confusion.

After the refusals became final, Applicant appealed and Applicant and the Examining

Attorney filed briefs.

I. Appeals Consolidated

These appeals involve common questions of law and fact and the records are

similar. Accordingly, we consolidate and decide both appeals in this single decision.

See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2018).3

II. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont

de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth

factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65

USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key

considerations are the similarities between the marks and the similarities between

the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the

cumulative effect of differences in the essential characteristics of the goods and

differences in the marks.”).

2 Registration No. 4606970, issued September 16, 2014.
3 Citations are to the record in the ’814 Application, unless otherwise indicated.

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A. The Marks

The marks are similar “in their entireties as to appearance, sound, connotation

and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin

Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)

(quoting du Pont, 177 USPQ at 567). Indeed, Registrant’s mark includes and begins

with the entirety of the mark in Applicant’s ’814 Application, and the dominant part

of the mark in Applicant’s ’855 Application.

In fact, SLITHER is the sole or dominant portion of all three marks. It is the

dominant portion of Registrant’s mark and the mark in the ’855 Application because

it comes first in both of them. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d

1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words is

particularly significant because consumers typically notice those words first.”); Presto

Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often

the first part of a mark which is most likely to be impressed upon the mind of a

purchaser and remembered”).

It is also the dominant part of the mark in the ’855 Application because the

Examining Attorney has introduced evidence that “.IO” is “[t]he Internet country code

top-level domain (ccTLD) … assigned to the British Indian Ocean Territory,” and that

.IO is treated and viewed as a generic top-level domain. August 2, 2017 Office Action

in ’855 Application TSDR 6 (printout from “wikipedia.org”). The top-level domain has

“gained popularity among start-ups and online entertainment in the form of .IO

games,” including Applicant’s “Slither.io” video game. Id. Top-level domains such as

“.IO” do not have source-identifying significance. In re 1800Mattress.com IP LLC, 586

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Serial Nos. 87196814 and 87196855

F.3d 1359, 92 USPQ2d 1682, 1683-84 (Fed. Cir. 2009) (MATTRESS.COM generic for

“online retail store services in the field of mattresses, beds, and bedding”); In re

Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1537 (Fed. Cir. 2009)

(HOTELS.COM generic for “providing information for others about temporary

lodging; travel agency services, namely, making reservations and bookings for

temporary lodging for others by means of telephone and the global computer

network”); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1381 (Fed.

Cir. 2007) (LAWYERS.COM generic for “providing access to an online interactive

database featuring information exchange in the fields of law, lawyers, legal news, and

legal services”). Cf., Booking.com B.V. v USPTO, 915 F.3d 171 (4th Cir. 2019) (“.com

does not itself have source-identifying significance when added to an SLD like

booking”). Therefore, “.IO” is entitled to less weight in our analysis. Cunningham v.

Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding

descriptive terms, this court has noted that the ‘descriptive component of a mark may

be given little weight in reaching a conclusion on the likelihood of confusion.’”)

(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).

Similarly, the term SLIDE in Registrant’s mark is not particularly distinctive

because it suggests how Registrant’s toy vehicles move and the tracks on which they

move. As Applicant explains, “the term SLIDE in the Registrant’s mark serves to

draw specific attention to the fact that Registrant’s goods contain toy vehicle slides,”

and “conveys information about the Registrant’s goods that include toy vehicle

slides.” 12 TTABVUE 7, 8 (Applicant’s Appeal Brief at 6, 7).

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Serial Nos. 87196814 and 87196855

Because the dominant portion of Registrant’s mark is identical to the dominant

(or only) element of Applicant’s marks, Registrant’s mark and Applicant’s marks look

and sound similar and convey similar meanings. Neither the term SLIDE in

Registrant’s mark nor the top-level domain .IO in the mark in the ’855 Application

sufficiently distinguish the marks, given their descriptive or suggestive connotations

and relationship to the goods for which they are used.

We cannot and have not ignored the differences between the marks. We recognize

that the term SLIDE in Registrant’s mark makes it look and sound somewhat

different than Applicant’s marks. We find, however, that these differences are

outweighed by the similarities. In fact, the alliteration in Registrant’s mark

SLITHER SLIDE, and the suggestive, complementary meanings of the individual

components SLITHER and SLIDE in the context of Registrant’s (and for that matter

Applicant’s) toys, could suggest that the toys offered under Applicant’s and

Registrant’s marks come from a common source. Indeed, the term SLIDE in

Registrant’s mark highlights the shared term SLITHER. See SquirtCo v. Tomy Corp.,

697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“Not only does appellee’s mark

SQUIRT SQUAD incorporate the whole of appellant’s mark SQUIRT, but also, in

SQUIRT SQUAD, SQUIRT retains its identity. Because of the alliteration with

SQUIRT, SQUAD is an apt choice to combine with SQUIRT to suggest a line or group

of toys from the same source as SQUIRT balloons.”).

Moreover, we must keep in mind that “[t]he proper test is not a side-by-side

comparison of the marks, but instead ‘whether the marks are sufficiently similar in

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Serial Nos. 87196814 and 87196855

terms of their commercial impression’ such that persons who encounter the marks

would be likely to assume a connection between the parties.” Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)

(quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901,

1905 (TTAB 2007)). We must also focus on the recollection of the average purchaser,

who normally retains a general rather than a specific impression of trademarks. In

re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper

Co., 190 USPQ 106 (TTAB 1975)); see also Geigy Chem. Corp. v. Atlas Chem. Indus.,

Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971) (finding a likelihood of confusion

due in part to “the fallibility of memory over a period of time”). Here, the differences

between the marks are not distinctive or significant enough to prevent consumer

confusion.

Applicant’s reliance on prior Board decisions is misplaced because we must decide

each case on its own merits and record. In re Int’l. Flavors & Fragrances Inc., 183

F.3d 1361, 51 USPQ2d 1513, 1518 (Fed. Cir. 1999) (“Each application for trademark

registration must be considered on its own merits.”); In re Nett Designs, Inc., 236 F.3d

1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on

its own merit …. Even if some prior registrations had some characteristics similar to

Nett Designs’ application, the PTO’s allowance of such prior registrations does not

bind the Board or this court.”); In re Wilson, 57 USPQ2d 1863, 1870-71 (TTAB 2001).

In any event, the cases upon which Applicant relies are easily distinguishable. In

Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d

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Serial Nos. 87196814 and 87196855

1459 (Fed. Cir. 1998), unlike this case, the marks shared similar but not identical

terms (CRISTAL vs. CRYSTAL CREEK) and the marks conveyed much different

meanings (“the clarity of wine within the bottle” vs. “a very clear (and hence probably

remote from civilization) creek or stream”). Here, by contrast, Registrant’s mark and

Applicant’s mark share an identical term, which conveys the same meaning in each

mark ? toys that “slither.”

In In re Mathes, Serial No. 85892299, the refusal to register

based on a registration of SOUTH BEACH WINE & FOOD FESTIVAL, both for

related clothing goods, was reversed for several reasons, including: (1) SOUTH

BEACH “is inherently a weak source indicator because it is geographically

descriptive …. Customers would therefore readily entertain the possibility that the

term SOUTH BEACH might be adopted by any merchant located in the South Beach

neighborhood;” (2) “WINE & FOOD FESTIVAL plays a more important function in

identifying the source of Registrant’s goods than does the word SWIMWEAR in

Applicant’s mark;” (3) “Applicant’s mark would be perceived as a brand of swimwear

… Registrant’s mark would be perceived as identifying apparel that is offered in

association with a festival, focusing on wine and food …;” (4) consumers would not

expect swimwear to be offered at a wine and food festival; and (5) “in the context of

swimwear the words WINE & FOOD are arbitrary and incongruous.” Here, by

contrast, even if we assume that the shared term SLITHER is suggestive, there is no

evidence that it is descriptive; Applicant and Registrant offer toys, as opposed to toys

associated with a particular event named in their marks; and as indicated the

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Serial Nos. 87196814 and 87196855

additional terms in the cited registration and ’855 Application, .IO and SLIDE, are

descriptive and weak.

In E.L. Bruce Co. v. Am. Termicide Co., 285 F.2d 462, 128 USPQ 341 (CCPA 1960),

discussed in Applicant’s Reply Brief, the Court affirmed a finding that TERMICIDE

and TERMINIX were not likely to be confused for identical goods. In that case,

however, unlike this one, the evidence established that the shared portion of the

marks ? TERMI ? was conceptually and commercially weak, and the appellant even

conceded that “appellee has the right to incorporate ‘Termi’ in a mark to be used in

the termite control business.” Id. at 342. Here, of course, the marks in question share

an identical word, as opposed to merely a portion of a term, and there is no evidence

that the shared term is nearly as weak as TERMI, much less a concession by

Registrant that Applicant is entitled to use SLITHER.

In short, because the marks all share and begin with the identical term SLITHER,

which dominates over the additional terms in Registrant’s mark and the mark in the

’855 Application, the marks are confusingly similar. In fact, consumers familiar with

Registrant’s SLITHER SLIDE toy vehicles could perceive Applicant’s SLITHER and

SLITHER.IO sculptural toys and puzzles as an extension of Registrant’s SLITHER

brand, or vice versa. This factor weighs in favor of finding a likelihood of confusion.

B. The Goods, Channels of Trade and Classes of Consumers

The Examining Attorney relies on both third-party registrations and third-party

uses which show that plush toys and toy vehicles are offered under the same marks,

in the same channels of trade to the same classes of consumers. The evidence is

quantitatively and qualitatively impressive.

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Serial Nos. 87196814 and 87196855

Beginning with third-party uses, the evidence reveals that plush toys on the one

hand and toy vehicles on the other are sold under the same brands. The following

examples are illustrative:

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Serial Nos. 87196814 and 87196855

December 28, 2017 Denial of Request for Reconsideration TSDR 16, 18, 43, 47

(printouts from “toysrus.com” and “amazon.com”); January 17, 2017 Office Action

TSDR 18, 21 (printouts from “disneystore.com”). The Examining Attorney has even

introduced evidence that video game-related plush toys are sold under the same

marks as video game-related toy vehicles:

December 28, 2017 Denial of Request for Reconsideration TSDR 3, 5 (printouts from

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Serial Nos. 87196814 and 87196855

“gamestop.com” and “target.com”).4

The Examining Attorney also relies on a number of use-based third-party

registrations showing that the same marks are registered in connection with

Registrant’s goods (or similar goods) on the one hand and Applicant’s goods (or similar

goods) on the other. The following are typical:

(Reg. No. 4932936) is registered for “stuffed and
plush toys” and “play mats for use with toy vehicles.”

(Reg. No. 5248413) is registered for “multipacks
containing an assortment of modeled plastic toys figurines
and toy figures,” “toy vehicles” and “toy vehicle track sets
and roadways and accessories therefor.”

I’M A CHOCOLATE CHIP COOKIE in standard
characters (Reg. No. 5219105) is registered for “stuffed
toy animals” and “toy vehicles.”

BLUE WHALE in standard characters (Reg. No. 5130512)
is registered for “plush toys,” “toy figures” and “motorized
toy vehicles.”

DREAMWORKS DRAGONS in standard characters (Reg.
No. 5144971) is registered for “die cast miniature toy
vehicles,” “jigsaw puzzles” and “plush toys.”

(Reg. No. 5141835) is registered for “plush toys”
and “toy vehicles.”5

4The evidence establishes that there are a great number of STAR WARS-branded video
games, so the STAR WARS evidence depicted above also tends to support a finding that video
game-related plush toys are sold under the same brand as video game-related vehicles.
December 28, 2017 Denial of Request for Reconsideration TSDR 28-40 (printout from
“Wikipedia.org”).
5 The record reveals that Nintendo is a video game company.

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Serial Nos. 87196814 and 87196855

(Reg. No. 5226522) is registered for “toys,
namely, plush toys, dolls … toy vehicles ….”

PLAY RIGHT in standard characters (Reg. No. 5204053)
is registered for “plush toys” and “toy cars and trucks.”

(Reg. No. 5231678) is registered for “toy
cars, “toy vehicles” and “plush toys.”

(Registration No. 5206502) is registered
for “plush toys” and “toy vehicles and accessories
therefor.”

August 2, 2017 Office Action TSDR 5-37. “Third-party registrations which cover a

number of differing goods and/or services, and which are based on use in commerce,

although not evidence that the marks shown therein are in use on a commercial scale

or that the public is familiar with them, may nevertheless have some probative value

to the extent that they may serve to suggest that such goods or services are of a type

which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6

USPQ2d 1467, 1470 n.6 (TTAB 1998).

These third-party uses and registrations are more than sufficient to establish a

relationship between plush toys and toy vehicles. It is not particularly relevant that

Applicant’s plush toys resemble video game characters, because Registrant identifies

toy vehicles without any limitations, meaning its toy vehicles could also resemble

video game characters. Moreover, as discussed above, the evidence reveals that some

plush toys and toy vehicles are sold under video game trademarks, and resemble

video game characters such as Super Mario and Star Wars characters. We need not

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go beyond this finding, because it is sufficient for a finding of likelihood of confusion

if relatedness is established for any item encompassed by the identification of goods

in a particular class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335,

209 USPQ 986 (CCPA 1981). This factor therefore also weighs in favor of finding a

likelihood of confusion.

The same evidence also establishes that the channels of trade and classes of

consumers for these goods overlap. In fact, plush toys, including plush toys which

resemble video game characters, are sold on the same websites, and the same sections

of websites, as toy vehicles. Other examples of the overlapping channels of trade for

these types of products include the following:

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Serial Nos. 87196814 and 87196855

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Serial Nos. 87196814 and 87196855

August 2, 2017 Office Action TSDR 50, 56, 60, 66, 70-72, 76. These factors also weigh

in favor of finding a likelihood of confusion.6

III. Conclusion

Because the marks are more similar than dissimilar, the goods related and the

channels of trade and classes of consumers overlap, confusion is likely.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

6 To the extent Applicant maintains its argument that the relevant consumers are
sophisticated or careful, there is no evidence to support it. In fact, the argument is belied by
the record, which reveals that plush toys and toy vehicles may be inexpensive.

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