Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA123403
`ESTTA Tracking number:
`02/05/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168789
`Plaintiff
`Take-Two Interactive Software, Inc.
`Take-Two Interactive Software, Inc.
`Take-Two Interactive Software, Inc.
`622 Broadway
`New York, NY 10012
`UNITED STATES
`Fred H. Perkins
`Morrison Cohen LLP
`909 Third Ave.
`New York, NY 10022
`UNITED STATES
`fhperkins@morrisoncohen.com
`Reply in Support of Motion
`Fred H. Perkins
`Fhperkins@morrisoncohen.com, eholtz@morrisoncohen.com,
`lbrienza@morrisoncohen.com
`/Fred H. Perkins/
`02/05/2007
`T2 v. Weiner - reply memo.pdf ( 16 pages )(539090 bytes )
`T2 v. Weiner - FP reply aff.pdf ( 8 pages )(215399 bytes )
`T2 v. Weiner - FP reply aff exhibits.pdf ( 68 pages )(4830656 bytes )
`T2 v. Weiner - BR reply aff.pdf ( 6 pages )(135795 bytes )
`T2 v. Weiner - BR reply aff exhibits 15-18.pdf ( 26 pages )(2354878 bytes )
`T2 v. Weiner - BR reply aff exhibits 19-20.pdf ( 16 pages )(5396144 bytes )
`T2 v. Weiner - BR reply aff exhibits 21-24.pdf ( 13 pages )(4707760 bytes )
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Take—Two Interactive Software, Inc.
`
`vs.
`
`Russell G. Weiner,
`
`Opposer,
`
`Applicant.
`
`‘¥\_/ix./\./\_/\./\_/\_/\_/xy
`
`Opposition No. 91168789
`
`REPLY MEMORANDUM OF LAW OF OPPOSER TAKE-TWO INTERACTIVE
`
`SOFTWARE, INC. IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
`AND TO PRECLUDE CERTAIN EVIDENCE
`
`
`
`Attorneys for Opposer
`Tal:e—Two Interactive Software, Inc.
`
`909 Third Avenue, NewY0rk, NY 10022-4731 0 p:2l2.735.850O - f:2l2.735.8708
`
`

`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ......................................................................................................... .. ii
`
`PRELHVHNARY STATEMENT ................................................................................................... .. 1
`
`ARGUMENT ................................................................................................ .
`
`.l............................. .. 2
`
`I.
`
`There Is A Likelihood of Confusion ...................................................................... .. 2
`
`A. The Marks Are Similar .................................................................................. .. 2
`
`B. The Commercial Impression of the Marks Are Similar ............................... .. 4
`
`C.
`
`The Parties’ Goods Are Related .................................................................. .. 5
`
`D.
`
`The Marks Have Similar Channels of Distribution ..................................... .. 6
`
`E.
`
`Effect of Trade Dress ..........................
`
`..... . .-. .............................................. .. 7
`
`F.
`
`The Relevant Consumers are Unsophisticated and Overlapping ................ .. 7
`
`G Expansion is Likely ..................................................................................... .. 7
`
`H.
`
`The Rockstar Marks Are Famous ................................................................ .. 8
`
`I.
`
`Actual Confusion.........................
`
`.............................................................. .. 9
`
`H.
`
`An Order of Preclusion Should Be Granted........................................................... .. 9
`
`CONCLUSION ............................................................................................................................ .. 10
`
`659352v4/17468f026
`
`i
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Bose Corp. V. QSC Audio Products, 293 F.3d 1367 (Fed. Cir. 2002) ........................................................ .. 9
`
`Brinkrnann Com. V. Optronics, Inc., 1981 TTAB LEXIS 16 (TTAB 1981) .............................................. .. 8
`
`
`
`Centaur CornJ:nc’11s Ltd. V. AIS/M Commons Inc., 830 F.2d 1217 (2d Cir. 1987) ................................... .. 8
`
`Choice Hotels Int’l Inc. V. Sutelan, 2002 TTAB LEXIS 279 (TTAB May 10, 2002) ............................... .. 9
`
`Country Floors, Inc. V. Gepner, 16 U.S.P.Q.2d 1941, 1990 U.S. Dist. LEXIS 6049 (E.D. Pa. 1990) ....... .. 7
`
`Cunningham V. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000) .......................................................... .. 2, 4
`
`Dent Doctor V. Bates, 2003 TTAB LEXIS 84 (TTAB Feb. 26, 2003) ....................................................... .. 6
`
`
`Grow Co. Inc. V. Biotest Labs. LLC, 2004 TTAB LEXIS 25 (TTAB 2004) ......................................... .. 10
`
`Linville V. Rivard, 41 U.S.P.Q. 2d 1731 (TTAB 1996) ............................................................................ .. 10
`
`Mana Prods, Inc. V. Black Onyg, Inc., 2001 TTAB LEXIS 623 (TTAB 2001) ...................................... .. 10
`
`Mele V. Davidson & Associate, 79 U.S.P.Q. 2d 1518, 2006 U.S. Dist. LEXIS 39054
`(W.D.N.Y. June 13,2006) ............................................................................................................. .. 6
`
`NASA V. Buliy Hill Vineyards, 3 U.S.P.Q. 2d 1671 (TTAB 1987) ........................................
`
`............... .. 10
`
`In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985) ...............
`
`....................................................... .. 4
`
`Octocom Sys. Inc. V. Houston Cogrjrvice Inc.-, 918 F.2d 937 (Fed. Cir. 1990) ................................... .. 6
`
`
`Panelfold Inc. V. ChernRex Inc., 2002 TTAB LEXIS 452 (TTAB July 12, 2002), T, 67 Fed. Appx.
`614 (Fed. Cir. 2003) ..................................................................................................................... .. 10
`
`Scarves by Vera, Inc., V. Todo Imports Ltd., 544 F.2d 1167 (2d Cir. 1976) .............................................. .. 8
`
`Super Valu Stores, Inc. V. Exxon Co;p., 11 U.S.P.Q. 2d 1539 (TTAB 1989) .......................................... .. 10
`
`Time Warner Entm’t. Co. L.P. V. Jones, 65 U.S.P.Q. 2d 1650 (TTAB July 17, 2002) ............................. .. 10
`
`Towle Mfg. Co. V. Godinger Silver Art Co., 1999 TTAB LEXIS 194 (TTAB (1999) ............................ .. 10
`
`
`Truescents LLC V. Ride Skin Care L.L.C., 2006 TTAB LEXIS 477 (TTAB NOV. 14, 2006) .................. .. 7
`
`Universal City Studios, Inc. V. Nintendo Co., 746 F.2d 112 (2d Cir. 1984) ............................................... .. 6
`
`Weiner King, Inc. V. Wiener King CoQ., 615 F.2d 512, 204 U.S.P.Q. 820 (CCPA 1980) .................. .. 9, 10
`
`

`
`
`
`FEDERAL STATUTES AND RULES
`
`Fed R. Civ. P. 56 ......................................................................................................................................... .. 1
`
`37 C.F.R. § 2.116(a) ................................................................................................................................... .. 1
`
`TTAB Rule 527.01 ................................................................................... _.-. ........................................... .. 1, 9
`
`iii
`
`

`
`
`
`Opposer Take—Two Interactive Software, Inc. (“T2”) respectfully submits this Reply Memorandum of
`
`Law in support of its motion: (1) pursuant to Fed R. Civ. P. 56 and 37 C.F.R. § 2.1 16(a), to enter judgment in its
`
`favor sustaining this opposition and dismissing the affniznative defenses of Applicant Russell G. Weiner
`
`(“Weiner”); and (2) for an order pursuant to TTAB Rules 52"/.0l(b) and 527.01(e) precluding Weiner from
`
`using or relying in opposition to this motion, or in the alternative at trial, any evidence which he refused to
`
`provide in response to T2’s various discovery requests (the “Motion”). The relevant, undisputed facts are set
`
`forth in the moving Affidavits and accompanying exhibits of Barry Rutcofsky, sworn to December 13, 2006
`
`(“BR Aff.”), and Fred H. Perkins, dated December 13, 2006 (“FP Afff’), and the Reply Affidavits and
`
`accompanying exhibits of Barry Rutcofsky, sworn to February 5, 2007 (“BR Reply Aff.”), and Fred H. Perkins,
`
`sworn to February 5, 2007 (“FP Reply Aff.”), all of which are incorporated herein by reference.
`
`PRELIMINARY STATEMENT
`
`This is a straightforward case in which the Application should be denied based on clearly established
`
`prior use by another party. Weiner seeks to obfuscate the issues before the Board, however, by distorting or
`
`simply ignoring the undisputed facts contrary to his position. Moreover, he improperly attempts to bootstrap the
`
`very evidence that T2 seeks to preclude.
`
`Weiner’s opposition to the Motion depends on three meaningless, misguided or unfounded contentions:
`
`(1) "123 products and the T2 Rockstar Marksl are “infamous,” not famous; (2) other than T2’s videogarne,
`
`“Rockstar Games Presents Table Tennis,” T2 has not used the T2 Rockstar Marks in connection with sports and
`
`is not likely to expand into such usage; and (3) Weinefs energy drink product bearing marks other than simply
`
`“Rockstar” —— for which Weiner has refused to provide meaningful discovery and repeatedly disclaimed their
`
`relevance to this proceeding —— somehow warrant denial of T2’s motion. Weinefs opposition distorts or ignores
`
`the following undisputed facts:
`
`-
`
`0
`
`T2’s trademark registrations for the T2 Rockstar Marks are incontestable and have not been
`challenged in this proceeding. T2 uses such marks in connection with a broad range of
`entertainment products and services, including various sports events.
`(BR Aff. ‘I[ 13; BR Reply
`Aff. ‘j[‘{[ 315).
`
`including “Table
`T2 has used the T2 Rockstar Marks on many sports—related video games,
`Tennis” (table tennis), the “Midnight Club Series” (auto racing), and “Thrasher” (skateboarding).
`(BR Aff. ‘][ 25; BR Reply Aff. ‘][‘][ 3-6).
`
`1
`
`Refers to T2’s “Rat and design,” “Rockstar Games,” marks. (BR Aff. Exs. l & 2).
`
`

`
`
`
`0
`
`0
`
`0
`
`T2 has used the T2 Rockstar Marks in connection with sponsoring andfor organizing various
`sports events, including bodyboarding, snowboarding, and dirt bike racing. (BR Reply Aff. ‘M 7-
`16).
`
`The vast majority of T2’s uses of the T2 Rockstar Marks for sportsvrelated video games and
`sporting events predate Weiner’s Application.
`(Compare BR Reply Aff. <l[‘][ 3-16 with FP Aff.
`Ex. A).
`
`Weiner has never used the “Rockstar” mark in the Application in the sports entertainment field;
`at best, his licensee has used “Rockstar Energy Drink” and other marks in connection with
`sponsoring certain sporting events. Any such use, however, occured after T2’s use of the T2
`Rockstar Marks in connection with sports?
`
`Accordingly, Weiner’ s opposition must fail and T2’ s Motion should be granted.
`
`ARGUMENT
`
`I.
`
`There Is A Likelihood Of Confusion
`
`The relevant dLPLt factors tip heavily in favor of likelihood of confusion; T2’s Motion should
`
`therefore be granted.3
`
`A. The Marks Are Similar
`
`It is undeniable that the T2 Rockstar Marks and the Application are similar — the mark applied for by
`
`Weiner is the same as the distinctive portion of the T2 Rockstar Marks. Yet, Weiner opposes this argument in
`
`two contradictory and unpersuasive ways.
`
`First, Weiner argues that the T2 Rockstar Marks are not similar to the Application because T2 does not
`
`use the T2 Rockstar Marks in connection with any sports or sports—related games.
`
`(Weiner Opp. 11). Not only
`
`does this contention fail to address the clear similarity between the Application and the T2 Rockstar Marks, it is
`
`plainly false: T2 has used the T2 Rockstar marks on three sports related video games and in connection with
`
`numerous sporting events.
`
`Besides “Rockstar Games Presents Table Tennis,” the T2 Rockstar Marks have been used on a series of
`
`best—selling street auto racing video games entitled, “Midnight Club Street Racing,” the first of which was
`
`published in 2000 and the fourth of which will be published later this year.
`
`(BR Reply Aff. ‘][ 5). “Midnight
`
`Weiner’s opposition papers attempt to blur the distinction between himself and Rockstar Inc., which distributes
`2
`“Rockstar Energy Drink,“ by falsely implying that “Rockstar” is the actual applicant for the disputed trademark. Gig,
`Weiner Opp. at 5, 8, 18). Weiner has refused to produce any proof of even a license agreement between Rockstar Inc. and
`himself, however, despite a specific request to do so.
`(FP Aff. Ex. D, No. 20). (“Weiner Opp.” refers to the “Opposition to
`Opposer’s Motion For Summary Judgrnent” dated January 16, 2007').
`
`Weiner claims that the du Pont factors T2 did not address in its moving papers somehow constitutes a “tacit
`3
`admission” that thus those factors weigh in Weiner’s favor.
`(Weiner Opp). T2 admitted nothing, tacitly or otherwise,
`because the factors not addressed by T2 have no relevance to an intent to use application. As noted in a case cited by
`Weiner, Cunningham v. Laser Golf Corp. 222 F.3d 943, 946 (Fed. Cir. 2000), “the obligation to consider a [du Pont] factor
`does not arise in a vacuum and only arises if there is evidence of record relating to that factor.”
`
`2
`
`

`
`
`
`Club,” which sold in the U.S. in excess of 7 million units and generated approximately $190 million in revenues,
`
`indisputably involves the sport of auto racing.
`
`(L1.
`
`‘ll 5 & Ex. 15; BR Aff. ‘][ 25 & EX. 6). The T2 Rockstar
`
`Marks have been used on a popular skateboarding game entitled “Thrasher: Skate & Destroy,” which was first
`
`published in 1999.
`
`(BR Reply Aff. H[ 6). T2 has sold in the U.S. over 223,000 units of “Thrasher,” generating
`
`approximately $5.2 million in revenues. @.).
`
`T2 has also used the T2 Rockstar Marks extensively in relation to sporting events. Since 2002, T2 has
`
`organized and/or sponsored various bodyboarding competitions (a popular form of surf boarding using a smaller
`
`board) using the T2 Rockstar Marks.
`
`(BR Reply Aff. ‘][‘I[ 8»10 & Exs. 18-21). Likewise, since 2001, T2 has
`
`sponsored and promoted BMX bike racers and riding competitions (Bl\/Di bikes are non-motorized dirt bikes).
`
`(E. *][‘][ 11-12 & Exs. 22-23). T2 has also sponsored various snowboarding events and a pro Table Tennis
`
`athlete.“ (lg ‘]fi[ 13-14 & Ex. 24). Thus, T2 has clearly used the T2 Rockstar Marks in connection with sports
`
`video games and organized sports long before Weiner ever filed the September 2004 Application.
`
`Second, Weiner states that his proposed “Rockstar” mark in the Application is “not at all similar” to
`
`T2’s “Rik and design” mark.
`
`(Weiner Opp. 11). This contention is as unconvincing as it is unsupported. The
`
`Clear meaning of the “Rik and design” mark is the word “rockstar” — “R” is short for and symbolizes “rock” and
`
`the star symbol obviously denotes a “star.” This meaning is evident from the constant association of “Rik and
`
`design” mark with the “Rockstar Games” name and word mark on virtually all of T2’s Rockstar products and
`
`marketing materials.
`
`(fig, BR Aff. Exs. 4-7).
`
`Indeed, this argument is clearly disingenuous given Weiner‘s
`
`own use of a similar logo consisting of 2 “R’s” (one normal and one backward) inside of a star as the prevalent
`
`design symbol for “Rockstar Energy Drink” (Weiner Dec. Ex. B).
`
`T2’s “R11: and design” mark
`
`Weiner’s “Rik and design” mark
`
`
`
`In denying the clear similarity between “Rockstar” in the Application and “Rockstar Games,” Weiner
`
`distorts the case law T2 cites in support of its motion. Weiner suggests that T2 has asked the Board to
`
`This type of “sponsorship” activity is the very same type of evidence that Weiner offers in support of his
`4
`opposition to the Motion based on Rockstar Energy Drink’s “presence” in sports. E Declaration of Russell G. Weiner in
`Support of Applicant’s Opposition to Opposer’s Motion for Summary Judgment, dated January 16, 2007 (“Weiner Dec.”).
`
`3
`
`

`
`
`
`“disregard” the “games” portion of its “Rockstar Games” mark.
`
`(Weiner Opp. 11-12). Weiner’s tortured
`
`reading of In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985) and the other cases cited by T2 cannot
`
`withstand scrutiny. National Data clearly provides that “precedential decisions which have stated that a
`
`descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion
`
`reflect the reality of the marketplace.” 75 3 F.2d at 1060. It cannot seriously be disputed that a descriptive term
`
`like “games” — while considered as part of the overall mark — is of less trademark significance than the dominant
`
`and unique term, “Rockstar.” 5 The dominance of “Rockstar” in “Rockstar Games” coupled with its constant
`
`association with the “R31: and design” mark denoting “Rockstar” clearly demonstrates that Weiner’s “Rockstar”
`
`mark is very similar in appearance, sound and connotation to the T2 Rockstar Marks.6
`
`B. The Commercial In11:_nression of the Marks Are Similar
`
`It is equally undeniable that the commercial impression of the marks are similar. Yet, Weiner once again
`
`distorts the facts in an attempt to manufacture some plausible deniability. Weiner argues that the marks cannot
`
`be similar because T2’s Rockstar Marks are only used on one product —— video games.
`
`(Weiner Opp. 15). This
`
`statement is demonstrably false. The undisputed facts show that the T2 Rockstar Marks appear on a wide range
`
`of products, including music cds, clothing, accessories.
`
`(BR Aff. ‘i[ 13). Moreover, the T2 Rockstar Marks
`
`appear in connection with a wide range of entertainment services, including music events, dance parties, and the
`
`organization and/or sponsorship of sports activities, such as bodyboarding, snowboarding and BMX dirt bike
`
`competitions. (BR Aff. 13; BR Reply Aff ‘M 7-15). Thus, consumers encounter T2’s marks on various different
`
`products and services, and in a variety of settings, in and out of the world of entertainment, sports and video
`
`games.
`
`In fact, consumers are likely to encounter the T2 Rockstar Marks in the same venues that are likely to
`
`televise sporting events covered by Weiner’s Application, as T2 advertises extensively on ESPN.
`
`(BR Aff. Ex.
`
`14).
`
`Cases cited by Weiner confirm this fact. E Cunningham, 222 F.3d at 947 (“the Board was justified in examining
`5
`each component of the mark...and the effect of that component on the issue of likelihood of confusion” in finding that
`LASERWING and LASER were confusing), citing, In re National Data Corp.,753 F.2d at 1058.
`
`Weiner incorrectly suggests that the law cited by T2 -- which holds that a finding of a likelihood of confusion is
`5
`appropriate where the two marks contain identical dominant terms -- should not apply because Weiner’s products and T2’s
`products are not in “similar markets.” T2’s products and services bearing the T2 Rockstar Marks and Weiner’s proposed
`products/services in the Application are in fact both in the entertainment market.
`(FP Aff. Ex. A; BR Aff. ‘][‘][ 24, 26, 28,
`29, 30). T2 published and distributed video game entertainment,
`including sports games, music entertainment and
`organized and sponsored various sporting events all using the T2 Rockstar Marks. (BR Aff. ‘if 25; BR Reply Aff. ‘]{‘1[ 3-15).
`Thus, the markets are closely overiapping and the cases cited by T2 are persuasive.
`
`4
`
`

`
`
`
`Weiner also advances the bizarre argument that consumers could not be confused by the applied-for
`
`mark because certain of T2’s products have received negative media attention for depicting violence and illegal
`
`acts, and violence and illegality have nothing to do with sports.
`
`(Weiner Opp. 15-16). Even if this were not a
`
`bare contention, it is a sad truth that violence and illegality are often connected to players of professional sports,
`
`such as football, basketball, baseball and hockey. (FP Reply Aff. ‘][ 2, EX. 0).
`
`Moreover, despite the fact that Weiner’s Application is for “Rockstar,” not “Rockstar Energy Drink,”
`
`Weiner nonetheless repeatedly invokes the “Rockstar Energy Drink” mark to suggest that Weiner’s “Rockstar”
`
`Mark has a. different commercial impression than the T2 Rockstar Marks. In that regard, it is significant to note
`
`that Weiner has used “Rockstar Energy Drink” (not the applied—for “Rockstar” Mark) to promote “drift racing.”
`
`(Weiner Dec. ‘H 6 Ex. B, R000”/'—10). Weiner describes “drift racing” A a type of street auto racing in which the
`
`car appears to “drift” around turns — as an “auto—racing” sport? Although Weiner denies that the street auto
`
`racing depicted in “Midnight Club” is a sport, this argument is directly contradicted by his own assertion
`
`concerning the sport of drift racing. The simple fact is that T2 produces andlor sponsors sports games and
`
`sporting events and is renowned for these “entertainment” products and services. Thus,
`
`the commercial
`
`impressions between T2’ s goods bearing the T2 Rockstar Marks and those in the Application are similar.
`
`C. The Parties’ Goods Are Related
`
`Weiner ignores the range of T2’s products and services bearing the T2 Rockstar Marks in his attempt to
`
`prove that the parties’ goods are not related. Weiner asserts there is no overlap between the parties’ goods
`
`because “Rockstar Games Presents Table Tennis” does not have priority over the Application and consumers do
`
`not believe that 2K products and RG8 products come from the same source.
`
`(Weiner Opp. 13). Weiner’s
`
`assertions both fundamentally misstate the undisputed facts and T2’s argument. Whether or not “Rockstar
`
`Games Presents Table Tennis” has priority over the Application is a non—issue: T2 is not relying on just that one
`
`game to show relatedness of its goods to those in the Application. Rather, T2 relies on its registered T2
`
`Rockstar Marks — which indisputably have priority over the Application — and their usage on video games and in
`
`connection with a video variety of entertainment and sporting events. As described above, T2 has published and
`
`“Midnight Club” is an urban “street racing” game involving customized and “tricked out" cars. (E BR Reply
`7
`Aff. Ex. 15). “Drift Racing" is a form of street racing popularized by a Japanese street racer.
`(FP Reply Aff. Ex. P). The
`web pages provided by Weiner to show “Rockstar Energy Drink’s” sponsorship of drift racing, promotes a movie, “The
`Fast and Furious: Tokyo Drift,” whose plot involved illegal street “drift” racing. (Weiner Dec. Ex. Q).
`
`8
`
`Refers to Rockstar Games, Inc., T2’s wholly~owned subsidiary and publishing label.
`
`5
`
`

`
`
`
`distributed sports—related entertainment products bearing the T2 Rockstar Marks since 1999:
`
`the skate boarding
`
`game, “Thrasher,” was released in 1999; three auto racing “Midnight Club” games have been released since
`
`2000 (and a fourth product will be released this year); and most recently, the table tennis game “Rockstar
`
`Games Presents Table Tennis” was released in 2006.
`
`(BR Aff. ‘]I 25 & EXs.8, 12; BR Reply Aff. ‘][§[ 3-6 & Exs.
`
`15-17). T2 has also used the T2 Rockstar Marks to sponsor and organize BMX bike riding events since 2001,
`
`bodyboarding competitions since 2002, and snowboarding in 2002.
`
`(BR Reply Aff. ‘M 8-13). All of these
`
`goods and services undisputedly demonstrate the relatedness of T2’s goods/services bearing the T2 Rockstar
`
`Marks with the goods/services described in the Application.
`
`Weiner’s argument as to T2’s different “imprints” (as Weiner calls them) on publishing labels is equally
`
`flawed. T2’s name and trademark appear on all of its RG and 2K products.
`
`(BR Aff. fll 25 & Exs. 12 & 13).
`
`RG products and 2K products appear side—by—side on T2’s website.
`
`(BR Aff. EX. 7). More fundamentally, the
`
`purpose of submitting evidence of use of the 2K mark on T2’s video games —— including baseball, basketball,
`
`football, hockey and other sports —— is obviously not to show use of the T2 Rockstar Marks, as Weiner absurdly
`
`suggests. Rather, it is to demonstrate, as shown below, the likelihood that T2 could likely expand its usage of
`
`T2 Rockstar Marks from auto racing, skateboarding, bodyboarding, BMX dirt bike riding, snowboarding and
`
`table tennis i.nto the sports covered under by the Application.9
`
`D. The Marks Have Similar Channels of Distribution
`
`Simply ignoring overwhelming legal precedent, Weiner argues that the products have different channels
`
`of distribution because his products would never be sold “side—by—side” with T2’s.
`
`(Weiner Opp. 16).
`
`However, Weiner does not state in the Application where his intended products will be sold. When the
`
`applicant’s recitation of services are unrestricted, the Board presumes that the parties’ gbods and services travel
`
`in all the normal channels of trade and to the usual customers for those services. Dent Doctor v. Bates, 2003
`
`TTAB LEXIS 84, at *9 (TTAB Feb. 26, 2003). Thus, T2 is afforded a favorable inference on the similarity of
`
`Weiner erroneously relies on two cases to invent the proposition that there is per se no likelihood of confusion
`9
`between videogame manufacturers and others in the entertainment market. (Weiner Opp. 14). The court in Universal City
`Studios, Inc. v. Nintendo Co., 746 F.2d 112, 117 (2d Cir. 1984), found no likelihood of confusion between the video game
`“Donkey Kong” and the movie “King Kong” not because one product involved a video game and one involved a movie,
`but because the distinguishing characteristics of both the marks (the gorillas) and the stories were so dissimilar that no one
`could be confused as to their origin and at best could only think the game a parody. Likewise, in Mele v. Davidson &
`Assoc, 79 U.S.P.Q.2d 1518, 02—CV-0-450E, 2006 U.S. Dist. LEXIS 39054 (W.D.N.Y. June 13, 2006), the court made no
`finding as to likelihood of confusion between video games and music, but rather found no likelihood of confusion because
`the plaintiff failed to establish use that entitled it to priority. E. at *l5-16. It is undisputed that the marks involved here are
`similar, the uses are similar, and that T2 is the senior user. Thus, these cases are inapposite.
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`6
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`distribution channels. E Octocom Sys. Inc. v. Houston Comp. Serv. Inc., 918 F.2d 937 (Fed. Cir. 1990).
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`E. Effect of Trade Dress
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`Weiner attempts to make an issue regarding differences in trade dress.
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`(Weiner Opp. 17'). Since the
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`Application is an intent-to~use and Weiner’s proposed products obviously have no trade dress, there is no
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`relevant trade dress to compare. Therefore, this factor is largely irrelevant to a du Pont determination.”
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`F. The Relevant Consumers are Unsophisticated and Overlapping
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`In an intent—to-use application, the consumers are presumed to include all normal classes of purchasers
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`for such goods. Truescents LLC v. Ride Skin Care L.L.C., 2006 TTAB LEXIS 477, at *16 (TTAB Nov. 14,
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`2006). Weiner does not deny that the target demographic for video game customers and sports entertainment
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`are largely the same. Nor does Weiner deny that video games and sporting events are merely different forms of
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`entertainment that compete directly for consumers’ limited entertainment dollars. Yet, Weiner argues —— without
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`support —— that video game consumers are sophisticated and will not be confused by his use of the “Rockstar”
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`mark.
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`(Weiner Opp. 18). Weiner cites to the expense of game platforms in the hundreds of dollars to support
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`his contention. Yet, T2 is not a distributor of video game platforms and the disputed mark will not be used on
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`any such products. The fact that consumers expend significant sums of money to purchase a game platform,
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`DVD player or stereo, does not make such consumers necessarily sophisticated when it comes to displays of
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`similar marks on related goods or services, such as sports sponsorship and events. Moreover, even if Weiner’s
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`argument was credible, there is no reason to believe that these same consumers will be sophisticated when faced
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`with the much less expensive purchases of products played on such equipment, such as, DVDs, music cds, or
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`T2’s video games products.
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`Indeed, T2’s years of experience in the video game industry establishes the
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`contrary V video game consumers are relatively unsophisticated, impulsive purchasers. (Rutcofsky Aff. ‘I[ 17).“
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`G. Expansion is Likely
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`While Weiner has proffered absolutely no explanation whatsoever as to what
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`type of sports
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`products/services he intends to offer under the Application, he again dismissively argues that any expansion by
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`While usage of Weir1er’s “Rockstar Energy Drink” is not relevant to this proceeding, to the extent the Board
`1°
`considers it, a comparison of the photos depicting Rockstar Energy Drink’s sponsorship of sporting events with those of
`T2’s sporting events demonstrates the similarity in emphasis of the “star“ and “R” trade dress and design on various
`promotional materials. (Compare Weiner Dec. Ex. B with BR Reply Aff. Ex.l9).
`ll
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`Weiner‘s reliance on Counmg Floors, Inc. v. Gepner, 16 U.S.P.Q.2d 1941, 1990 U.S. Dist. LEXIS 6049, *18 (E.D.
`Pa. 1990) is misplaced. That case involved floor tiles, where the relevant customers were professional architects, interior
`decorators and designers who were not likely to be confused because of their professional expertise.
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`7
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`T2 into sports is unlikely because it primarily offers video games.
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`(Weiner Opp. 18). Weiner is incorrect. T2
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`has since as early as 2001/2002 organized and/or sponsored sporting events for bodyboarding, snowboarding
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`and BMX bike riding.
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`(BR Reply Aff. ‘]l‘][ 8-13 & Exs. 18-23). Weiner further ignores that T2 has already
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`distributed video games under the T2 Rockstar Marks for table tennis, auto racing and skateboarding and, under
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`the 2K Mark, for football, baseball, basketball and hockey. (BR Aff. ‘H 25; BR Reply Aff. fll 3). Considering this
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`evidence, T2’s expansion of use of the T2 Rockstar Marks into organized sports entertainment covered by the
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`Application is likely. Indeed, Electronic Arts, one of T2’s main rivals, sponsors the “Madden Bowl” every year
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`at the NFL’s Super Bowl, involving current NFL players challenging each other in EA’s video game, and just
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`aired its second season of ESPN’s “Madden Nation” television show, which features “gamers” playing each
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`other on television for $100,000.
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`(FP Reply Aff. Ex. R). Since T2 is without question the senior user here, its
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`right to expand into additional areas of sports entertainment should be protected. E Scarves by Vera, Inc., v.
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`Todo Imports Ltd., 544 F.2d 1167, 1172 (2d Cir. 1976) (“The trademark laws protect. . .the senior user's interest
`
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`in being able to enter a related field at some future time”); see also Centaur Cornmc’ns Ltd. v. A/S/M
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`C_omrnc’ns h1c., 830 F.2d 1217, 1227 (2d Cir. 1987); Brinkmann Corp. v. Optronics, Inc., 1981 TTAB LEXIS
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`16, at *30 (TTAB 1981).
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`H. The Rockstar Marks Are Famous
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`Despite overwhelming evidence to the contrary, Weiner claims that the T2 Rockstar Marks are not
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`famous. Although Weiner contends that video game consumers are sophisticated consumers (Weiner Opp. 19-
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`21), he makes the unsupported argument that readers of novels do not often kriow who publishes them and
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`music lovers often do not know which record label produces the songs they love, and therefore these purportedly
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`sophisticated video game players do not know the publishers of the game.
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`(Weiner Opp. 19). This argument
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`fails because unlike the book or music industries, in the video game industry, the “author” or “band” associated
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`with the product is the game publisher itself — i.e., RG. Indeed, evidence of the fame of T2 Rockstar Marks and
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`their association with products bearing those marks includes the fact that there are over 100,000 unique visitors
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`to RG’s website on a daily basis.
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`(BR Aff Ԥ[ 20). Clearly, if consumers who have spent over $2.16 billion on
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`products bearing the T2 Rockstar Marks (BR Aff. ‘l[ 21) did not know that RG was the source of such products,
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`then there would be little reason for such voluminous daily web traffic on RG’s website.”
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`The fact that one article to which Weiner cites (Weiner Opp. 19, n. 11) refers in the title to the “makers of Grand
`12
`Theft Auto” is of no consequence considering RG’s sales, advertising, unsolicited media coverage, etc. (BR Aff. ‘I[‘f[[ 18-24).
`8
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`Weiner also argues that fame should not be inferred because T2 has not submitted a survey establishing
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`the fame of the T2 Rockstar Marks. Weiner misreads the law upon which he relies.
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`In Bose Cogp. v. QSC
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`Audio Prods., 293 F.3d 1367, 1374 (Fed. Cir. 2002), cited by Weiner (‘Weiner Opp. 20), the court recognized
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`that “direct evidence, such as surveys,
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`is not
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`‘required to in order to determine whether a mark is
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`famous’. . .[and] the absence of such evidence, cannot. . .establish lack of fame.” (emphasis added).
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`I. Actual Confusion
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`Weiner again ignores applicable law by claiming that his mark should proceed to publication because
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`there is no proof of actual confusion. (Weiner Opp. 21-22). Weiner has submitted an intent—to—use Application.
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`Since there are no products or services covered by the Application in the market place, there cannot be any proof
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`of actual con