INTERNATIONAL CLASS 28

(Games and playthings)

 

GENERAL SCOPE OF CLASS 28:            Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

 

RELATED INTERNATIONAL CLASSES

9

Computer and computer programs; sports helmets

12

Sailboats, canoes, bicycles

16

Educational materials

18

Luggage

25

Sports clothing

41

Educational and sports/entertainment services

35,

(former42)

Retail store and distributorship services for related goods

 

 IDENTIFICATION/CLASSIFICATION OF GOODS GUIDELINES

 

INDEFINITE TERMINOLOGY

Games

Sporting goods

Toys

Playthings

Video games – could include “video game programs” (Class 9); “video game machines for use with televisions (Class 9) or “hand-held video games” (Class 28).

Equipment – must specify type of equipment, i.e., “golf equipment, namely, balls, clubs.

Christmas decorations – unacceptable, but “Christmas tree decorations” is acceptable.  Note: “Christmas tree lights” are in (Class 11).

Exercise Mats – “exercise mats for personal use” are in (Class 28), but “gymnasium exercise mats” are in (Class 27).

 

CLASSIFICATION

 

“Playing cards” are in (Class 28) – (prior to 1/1/02, they were in Class 16).

 

GLOVES:  Most sport gloves are in (Class 28) (must specify sport), but “ski gloves” and “snowboard gloves” are in (Class 25).  “Diving gloves” are in (Class 9).

 

All HELMETS are in (Class 9), including helmets for sports.

 

 

 

 

Name or Representations of Dolls

 

Representations of dolls or similar objects may be descriptive, but not incapable of functioning as trademarks for the goods they represent.  In re DC Comics, Inc., 215 USPQ 394 (CCPA 1982).  Relatedly, a word mark applied to a doll or similar goods which identifies a recognizable actual historical character which the doll represents, such as, Martha Washington, is merely descriptive, but capable of acquiring secondary meaning.  E.g. In re Carlson Dolls Co. 31 USPQ2d 1319 (TTAB 1994).

 

Names of Games

 

If the applicant has coined a term to identify a game and uses the term as a mark on the goods, the fact that the term may also serve as the name of the game does not present a problem.  The “Trademark Clarification Act of 1984” (commonly referred to as the Monopoly Amendment) pertaining to Section 14(c) of the Act clearly establishes this principle (PL 98-620, 98 Stat 3335 (1984)).  Of course the names of games, such as poker or lotto, are descriptive or generic when used on games that embody the commonly recognized game.  Similarly, the name of a sport, such as football or golf, would be descriptive when used on a board game, video game or card game about that sport.  In rare circumstances, a coined term may be refused as being descriptive when it is used on a game invented by the applicant.  This situation arises when the specimens show that the mark is the only way to identify the type of game.  See In re Wallyball, 222 87 (TTAB 1984).

 

Functionality

 

Special attention should be given to functionality issues as they relate to fishing and golf equipment.  Applicants often attempt to register configurations of all or part of these goods.  It is often difficult to determine based on the record whether these features are de jure functional.

 

SECTION 2(d)

 

General Sporting Goods

 

“EXECUTIVE” for “tennis rackets and squash rackets” held confusingly similar to “EXECUTIVE” for “golf clubs and golf balls.”  The Board held that even though “executive” was a “weak” (laudatory) mark, and the goods were currently being sold in differently stores (pro shops v. retail sporting goods stores) the manufacturers overlapped.  Both golf clubs and tennis rackets were manufactured by Spalding and a number of its competitors.  A.G. Spalding & Bros. Inc. v. Bancroft Racket Company, 149 USPQ 391 (TTAB 1966).

 

“AERFLYTE” and design for “ice skates and roller skates” held confusingly similar to “AIRFLYTE” for sports rackets, golf clubs and basketballs, volleyballs, etc.  Although the goods are different, they move through the same channels of trade to the same class of purchasers.  In addition, the opposer sold a complete line of sporting goods.  A.G. Spalding & Bros. Inc. v. Roller Derby Skate Corp., 149 USPQ 391 (TTAB 1960).

 

Hunting v. Fishing

 

“RAZORBACK 5” for “arrow heads” held confusingly similar to “RAZORBACK” for “fishing lures” and “RAZORHEADS” for “arrows and arrowheads”.  The Board held that even though the marks are highly suggestive and purchasers are sophisticated, fishing and hunting are closely related sports and confusion is likely.  In re New Archery Products Corp., 218 USPQ 670, 671 (TTAB 1983).

 

“TRAILMASTER” for “training scents for dogs” held confusingly similar to “TRAILMASTER” for fishing rods.  In re Buck Stop Lure CO., Inc., 226 USPQ 190 (TTAB 1985).

 

Golf v. Fishing: Not Related

 

“T-LINE” for “golf clubs” held not confusingly similar to “T-LINE” for “fishing line”.  Court found the fishing and golf industries to be different commercial fields for purposes of trademark law, citing Victor Comptometer Corp. v. Shakespeare Co., 184 USPQ 634 (TTAB 1974).  Mason Tackle Co. v. Vicker United, Inc., 216 USPQ 197 (C.D. California 1982).

 

Registered Marks

FRISBEE (Reg. No. 0679186) – use “toy flying disc”

PING-PONG (Reg. No. 0283767) – use “table tennis”

BOOGIE (Reg. No. 2496140) – often seen as “boogie boards.”  Use “bodyboards”

ROLLERBLADE (Reg. No. 1326171) – use “inline skates”

HULA HOOP (Reg. No. 0739307) – use “toy hoops”

MYLAR (Reg. No. 0625875) – often seen as “mylar balloons.”  Use “foil balloons”

TRANSFORMERS (Reg. No. 2455261) – use “toy figures convertible to other forms”