IP Law Daily, TRADEMARK—TTAB: GAMEGUARDIAN for online game forums not confusable with GUARDIAN GAMES for video game stores, (May 1, 2023)

By Cheryl Beise, J.D.

The marks created different commercial impressions, in the Board’s view.

A Trademark Examining Attorney’s refusal to register the applied-for mark GAMEGUARDIAN for a website forum relating to video games on the ground of likelihood of confusion with the registered mark GUARDIAN GAMES for retail stores services featuring video games has been reversed by the Trademark Trial and Appeal Board. While the parties’ services were related, the marks were sufficiently dissimilar to dispel consumer confusion. The applicant’s mark connotes a person or thing that “guards, watches over, or protects” a game, whereas the cited mark connotes a brand of retail stores selling multiple games, or the “family” name of the games (In re: Laxamentum Technologies, LLC, April 25, 2023, Larkin, C.).

Laxamentum Technologies, LLC applied to register the standard-character mark GAMEGUARDIAN for “Downloadable computer application software for mobile phones and tablets to educate and inform users how to edit memory values while videogame is running” in International Class 9, and “Providing website featuring a forum on video game cheats, video game information, news, game play strategies, frequently asked questions about video games, journals, previews, reviews and commentary on video games” in Class 38.

The Trademark Examining Attorney refused registration of the applicant’s mark in Class 38 under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the standard-character mark GUARDIAN GAMES (GAMES disclaimed), registered on the Principal Register for, among other services, “Retail games stores; Retail store services featuring games” in Class 35. The applicant appealed the refusal.

The Board considered the two DuPont key likelihood of confusion factors: the similarity of marks and the relatedness of services. In analyzing the similarity of the marks, the Board noted that the proper test is whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties. In this case, the average consumers include members of the general public often colloquially referred to as “gamers.”

Similarity of the marks. The Examining Attorney argued that the applicant’s GAMEGUARDIAN mark “is merely the transposition of the registrant’s mark” and that “[c]onfusion is likely between two marks consisting of reverse combinations of the same elements if they convey the same meaning or create substantially similar commercial impressions. According to the Examining Attorney, both marks connote “protector of games or game protector” because the term “‘game(s)’ is generic and ‘guardian’ merely means ‘one that guards, watches over, or protects.’”

The Board disagreed, finding that in this case, the transposed marks conveyed dissimilar overall commercial impressions when considered in their entireties and in the context of the services for which they are used. According to the Board, the applicant’s compound mark GAMEGUARDIAN for a website services “featuring a forum on video game cheats, video game information, news, game play strategies, frequently asked questions about video games, journals, previews, reviews and commentary on video games” connotes a person or thing that “guards, watches over, or protects” a game, whereas the cited mark GUARDIAN GAMES for “Retail games stores; Retail store services featuring games” connotes a brand of retail stores selling multiple games, or the “family” name of the games.

Similarity of services. To show relatedness of services, the Examining Attorney offered evidence of several third-party websites and registrations covering some form of retail store services in Class 35 and some form of online forum services in Class 38. In construing this evidence, the Board considered the full scope of identified services. The Board found this evidence supported a finding of likelihood of confusion.

In weighing the two DuPont factors, the Board concluded that the dissimilarity of the marks outweighed the similarity of the related, but not identical, services. The Board found that “a consumer with a general rather than specific impression of the cited GUARDIAN GAMES mark for retail stores services featuring video games, who separately encounters Applicant’s GAMEGUARDIAN mark for a website forum relating to video games” is not likely to believe mistakenly that the services have a common source or sponsorship.

The Case is Serial No. 90441532.

Attorneys: Wendy B. Mills (WB Mills, PLLC) for Laxamentum Technologies, LLC. William Verhosek for the USPTO.

Companies: Laxamentum Technologies, LLC

Cases: Trademark USPTO