In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) affirmed a refusal to register GAME FACE for sports masks after finding that the trademark is likely to be confused with the registered GAME FACE marks used with paintball masks.

Figure 1: Applicant’s Sports Mask

Markwort Sporting Goods Company (the “Applicant”) filed an application to register the trademark GAME FACE for use on sports face masks for baseball, softball, soccer, flag football, lacrosse and field hockey.

Initially the Trademark Office refused registration on the ground that the mark was confusingly similar to a trademark that had already been registered (the “Registrant”).

The Registrant used the GAME FACE trademark in connection with “paintball sporting articles, namely protective masks”.  However, the Applicant’s application did not list paintball as one of the sports and specifically noted that its facemask is “incapable of protecting the eyes from liquid contaminates as in paintball activities”.

Figure 2: Registrant's Paintball Mask

Figure 2: Registrant’s Paintball Mask

The Trademark Office used webpages from three major sporting goods stores as evidence that the marks are likely to cause confusion:

“A purchaser who encounters the Applicant’s GAME FACE protective mask would also encounter the Registrant’s GAME FACE protective mask in the same store, leading him to be confused into believe the two products emanate from the same source.” The Trademark Office asserted “the goods are similar because they are used in the same way and have the same purpose”. The Board agreed and focused on the fact that both the Applicant and the Registrant’s goods have the same purpose of protecting the face by preventing balls from causing injury.

Applicant argued that its sports masks are different because the masks do not prevent liquids or paintballs from striking the face. Applicant also refuted the use of the web pages as evidence of related trade channels.

The Trademark Trial and Appeal Board held that the Trademark Office had not established that the trade channels were related, and that the webpages were not persuasive evidence. The Board reasoned that there is no evidence that “such goods are ever located in the same section of the store or near one another” and that “the mere fact goods can be found in the same stores of a large retailer does not mean the goods are related”.

Although the Board rejected the webpages as evidence, it found that “a consumer who has a lacrosse mask and then is considering a paintball mask would likely consider the goods as emanating from the same source even if they are offered for sale in different sections of the same store or on different web pages”.

For the Board, the only necessary determination was whether a “viable relationship” existed between the applicant’s sports mask and the registrant’s paintball mask. “Where at least one of the cited marks is identical to the applicant’s mark, in order to find the goods related, there need only be a viable relationship between the respective goods”. In this case, the Board concluded the viable relationship requirement was satisfied.

It’s worth noting that the TTAB also disagreed that GAME FACE is a weak mark when applied to the goods involved. The Board also disagreed that consumers would take heightened care in purchasing the masks, stating the face masks were not expensive enough to justify heightened care.

Due to the “identical function” of the applicant’s sports mask and the registrant’s paintball mask, the TTAB affirmed the refusal to register applicant’s mark GAME FACE for sports mask. You can read more about this decision and the opinion here.

David Lilenfeld