Binge Responsibly, LLCv.Power Hour LLC

Trademark Trial and Appeal Board

Dec 31, 2012

No. 91195461 (T.T.A.B. Dec. 31, 2012)

Mailed:
December 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Binge Responsibly, LLC
v.
Power Hour LLC
________

Opposition No. 91195461
against Serial No. 77805395
filed August 14, 2009
_______

William F. Lang, IV, of Lang Patent Law LLC, for Binge
Responsibly, LLC

Power Hour LLC, pro se.
_______

Before Rogers, Chief Administrative Trademark Judge, and
Grendel and Holtzman, Administrative Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Power Hour LLC seeks registration on the Principal
Register of the mark POWER HOUR (in standard character
format) for “Digital media, namely, CDs, DVDs, software
featuring a timed drinking game where players take a shot
of beer every minute for an hour” in International Class 9,
Application Serial No. 77805395. Applicant filed the use-
based application on August 14, 2009, claiming January 1,
2000 as its first use date. At the request of the
This Opinion is Not
A Precedent of the TTAB
Opposition No. 91195461
2

trademark examining attorney, applicant submitted a
disclaimer that no claim is made to the exclusive right to
use the word “HOUR” apart from the mark as shown.
Binge Responsibly LLC opposes this application on the
ground that the applied-for mark is generic or merely
descriptive under Section 2(e)(1) of the Act, 15 U.S.C.
§1052(e)(1), and has not acquired distinctiveness.
Applicant, in its answer, denied the genericness and
descriptiveness of its mark, and made numerous assertions
characterized as “Affirmative Defenses,” including priority
of use by applicant, that consumers recognize the mark as a
reference to its product, and that applicant’s activities
in “10 years of marketing and product creation” have
rendered the term “well known.”
THE RECORD
The record includes the pleadings,1 as well as the file
of the opposed application, Serial No. 77805395. See
Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). Opposer
also introduced into evidence through its notice of
reliance [TTABVue Entry #27] a variety of documents,
including applicant’s answer to the notice of opposition,

1 The exhibits attached to applicant's answer do not form part of
the evidentiary record and will not be considered except to the
extent that they have been properly identified and introduced
into evidence. See Trademark Rule 2.122(c).
Opposition No. 91195461
3

responses to opposer’s interrogatories and requests for
documents, newspaper articles, website printouts, and a
book excerpt. See Trademark Rule 2.120(j)(3), 37 C.F.R. §
2/120(j)(3). The printed publications and Internet website
printouts provided in opposer’s notice of reliance are
admissible pursuant to Trademark Rule 2.122(e), 37 C.F.R.
§2.122(e) and Safer Inc. v. OMS Investments Inc., 94
U.S.P.Q.2d 1031, 1039 (TTAB 2010), as the website printouts
identify the date of publication or date that they were
accessed and printed, and the source (e.g., the URL).
Applicant’s responses to opposer’s interrogatories also are
admissible under notice of reliance, but documents produced
by applicant in response to a request for production of
documents are not. Compare authorities discussed in TBMP
Sections 704.10 and 704.11 (3d ed. June 2012).2
Nonetheless, many of applicant’s interrogatory responses
refer to documents provided by applicant to opposer and we
have considered the produced documents to the extent they
were referenced in the interrogatory responses.
Additionally, opposer introduced into evidence the
trial testimony taken on August 17, 2011, of Alicia

2 Opposer should not have submitted a copy of applicant’s answer
to the notice of opposition, as the answer was already of record.
Opposition No. 91195461
4

Spagnola, owner of Binge Responsibly LLC, along with
Exhibit Nos. 1-5 [TTABVue Entry #28].
During the discovery period, applicant filed with the
Board copies of its responses to opposer’s interrogatories
and requests for documents.3 Discovery requests and
responses are not to be filed with the Board except as
needed in conjunction with the filing of a related motion
or appropriate evidentiary submission filed during trial.
See discussion in TBMP Section 409. Accordingly, the April
21 and 22, 2011 filings made by applicant, shown as TTABVue
entries #16 through #26, have not been considered. At
trial, applicant introduced no evidence during its assigned
testimony period.
Only opposer filed a brief.
ANALYSIS
Opposer’s Standing
The record establishes opposer’s standing to bring
this opposition proceeding. Section 13 of the Trademark
Act provides in relevant part that "[a]ny person who
believes that he would be damaged by the registration of a
mark upon the principal register, ... may, upon payment of

3 Prior to serving the responses on opposer and filing the copies
with the Board, applicant requested an extension of time to
respond. Opposer did not contest the request, which is therefore
granted as conceded. See Trademark Rule 2.127(a).

Opposition No. 91195461
5

the prescribed fee, file an opposition in the Patent and
Trademark Office, stating the grounds therefor...." To
assess the requisite showing under the statute, a two-part,
judicially created test requires that opposer must have:
(1) a "real interest" in the proceedings and (2) a
"reasonable" basis for his belief of damage. See Ritchie
v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999). Opposer asserts in the notice of opposition
and applicant admits in its answer that opposer markets
products that are similar to those of applicant. (Notice
of Opp., ¶3; Ans., ¶3). Opposer alleges that “[i]f
Applicant’s registration is granted, Opposer will be unable
to describe its products and services by using the commonly
recognized name of the game for which these products and
services are utilized.” (Notice of Opp., ¶5).
We conclude that opposer’s status as a competitor who
has the right to use the term POWER HOUR to describe goods
that are similar to those recited in applicant’s involved
application establishes its standing to oppose applicant’s
mark. See Plyboo America Inc. v. Smith & Fong Co., 51
USPQ2d 1633 (TTAB 1999), aff'd 994 F.2d 1569, 26 USPq2D
1912 (Fed. Cir. 1993); Eastman Kodak Co. v. Bell & Howell
Document Management Products Co., 23 USPQ2d 1878, 1879-80
(TTAB 1992). In addition, opposer introduced an e-mail
Opposition No. 91195461
6

message from applicant’s owner, Steven Roose, that pre-
dated the filing date of the application, in which Mr.
Roose referred to opposer’s products sold as “power hour
mixes of music” (Spagnola Test., p. 5, Exh. 1). This
evidence further establishes opposer's requisite interest
in the proceeding and potential damage from registration.
See Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 202
(CCPA 1979) (presuming the “damage” requirement when the
proposed mark is descriptive and opposer “has a sufficient
interest in using the descriptive term in its business”),
cert. denied, 444 U.S. 833 (1979). Moreover, opposer’s
receipt of a cease-and-desist letter from applicant
(Spagnola Test. p. 13) further buttresses the
reasonableness of opposer’s belief of damage from the
potential registration.
Mere Descriptiveness
Opposer bears the burden of showing, by a
preponderance of the evidence, that the applied-for mark is
merely descriptive. See DuoPross Meditech Corp. v. Inviro
Medical Devices Ltd., __ F.3d __, 103 USPQ2d 1753, 1755-56
(Fed. Cir. 2012); see also Goodyear Tire & Rubber Co. v.
Continental General Tire Inc., 70 USPQ2d 1067, 1070 (TTAB
2003). A mark that “immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods
Opposition No. 91195461
7

or services” must be deemed merely descriptive, and
therefore unregistrable, pursuant to the provisions of
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1). In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007); see also In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) “a mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
or characteristic of the product or service”). To be
“merely descriptive,” a term need only describe a single
significant quality or property of the goods. In re
Gyulay, 820 F.2d 1216, 1218, 3 USPQ2d 1009, 1010 (Fed Cir.
1987). Descriptiveness of a mark must be considered in
relation to the particular goods for which registration is
sought. See In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978). The question is whether
someone who knows what the goods are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
According to the identification of goods, applicant’s
CDs, DVDs, and software facilitate play of “a timed
drinking game where players take a shot of beer every
minute for an hour.” The goods feature timers for the
Opposition No. 91195461
8

game, as well as entertainment content, such as music and
quotations, to accompany the playing of the drinking game.
(E.g., Opposer's Not. of Rel., Exh. 1). Opposer alleges
that ”power hour” refers to a drinking game in which
“players consume one shot of beer each minute, for a period
of one hour,” and that “the game predates Applicant’s
software, and does not require Applicant’s software.”
(Notice of Opp., ¶6).
Opposer presented a strong evidentiary case to support
this common understanding of ”power hour.” As an initial
matter, applicant’s own website acknowledges that “[t]he
idea of Power Hour has existed for centuries. It is quite
simple. Take a shot of beer every minute for an hour…. We
have spiced up this age old drinking game ….” (Opposer's
Not. of Rel., Exh. 1). Although applicant states in its
answer that “there was no existing Power Hour game” prior
to applicant’s, this contention is belied by evidence of
record that pre-dates not only the filing date of this
application, but also applicant’s claimed first use date of
January 1, 2000.
This evidence shows prior use of ”power hour” to refer
to essentially the same drinking game that applicant claims
to have created in 2000. For example, a 1991 newspaper
article addressing youth drinking noted, “Frequently, party
Opposition No. 91195461
9

entertainment includes games such as ‘power hour,’ in which
players drink a shot of beer every minute for an hour.”
(Id., Exh. 2, “Alcohol’s Escape, Thrills Ensnaring Younger
Teens: Heavy Drinking Starts as Early as 9 or 10” by Ellen
Uzelac & Joel McCord, The Sun, August 18, 1991 at 1A).
Similarly, a 1998 book entitled The Ultimate Drinking Games
Book (1998) contains an entry for “Power Hour” describing
it as a challenge where players “swig a gulp of beer, every
minute, for an entire hour.” (Id.,, Exh.3, at p. 128).
Also, according to a 1998 newspaper article, drinking games
played on campuses include “‘power hour,’ which requires
ingesting a shot of beer each minute for 60 minutes.” (Id.,
Exh. 4, “Binge Drinking: On Campus, Why Does One Drink Lead
to Another … and Another?” by Alan Scher Zagier, News and
Observer, December 13, 1998 at 1A).
More recent third-party uses of “power hour” in
connection with goods similar to applicant’s also support
the descriptiveness of the term. For example, such uses
include a promotional webpage for a smart-phone application
that indicates that it will “start you on the way to an
endless power hour,” and that one of its features can
provide “a burnable power hour.” (Id., Exh. 7,
ipowerhour.com). Similarly, a software webpage
(sofotex.com) offers an iPod “Power Hour” application that
Opposition No. 91195461
10

“plays the middle 60 seconds of 60 songs,” which is
“[u]seful for drinking games,” and where the "[u]ser can
now set how long to make the power hour." (Id., Exh. 8).
The hourofmusic.com website provides music to accompany the
“Power Hour Drinking Game,” stating that "Power hour is a
simple game that can have any number of players (hopefully
more than one)" wherein “each player drinks a one [sic]
shot of beer every minute signaled by a song change.” (Id.,
Exh. 23). The powerhourcd.com website offers a music CD
created by someone “frustrated with performing power hour
at college watching the clock,” and recommends keeping an
eye on “people that [sic] are less familiar with the power
hour.” (Id., Exh. 24). None of these uses appear to refer
to applicant or its goods. Indeed, applicant makes no
argument to the contrary. Thus, others in applicant’s
industry use ”power hour” to name the drinking game in
describing their goods.
Furthermore, a significant volume of dictionary and
other evidence shows use of ”power hour” to describe a type
of drinking game, without reference to applicant or its
software. For example, a Wikipedia entry defines “Power
hour” as “a drinking event where every player drinks one
shot of beer every minute.” (Id., Exh. 10, wikipedia.org).
The website for Barmeister, an Online Guide to Drinking,
Opposition No. 91195461
11

reflects an entry for “Drinking Game: Power Hour,”
indicating, “The object is to take a shot of beer every
minute for an entire hour.” (Id., Exh.13). The first four
definitions of “power hour” in the Urban Dictionary
indicate that it involves drinking a shot of beer every
minute for an hour. (Id., Exh. 11). Other examples of
similar descriptive uses include the idrink.com website,
featuring “drinking games & contests,” which contains an
entry for “Power hour,” describing it as a drinking game
where a shot of alcohol is consumed each hour. (Id.,
Exh.14). Also, a website for “Power Hour HQ: Video Power
Hour Directory” includes a music video with 60 songs for
use by those “doing power hours.” (Id., Exh. 19). The
Angelfire.com website shows an entry for “Power Hour” under
the heading “Drinking Games,” and states that “[t]he object
is to take a shot worth of beer every minute for an entire
hour.” (Id., Exh. 22). None of these uses appear to refer
to applicant or its goods. This evidence shows widespread
use of ”power hour” as the name of the same drinking game
also described in the other evidence that pre-dates
applicant’s claimed first use date. Clearly, both before
and after January 2000, consumers have known the term not
as a source indicator, but rather as a long-established
type of drinking game, independent of any use by applicant.
Opposition No. 91195461
12

In assessing the descriptiveness issue, we also take
note of the fact that applicant initially approached
opposer's owner, Ms. Spagnola, about her power-hour-related
products and even entered into a business relationship with
opposer, without asserting exclusive rights in the term
POWER HOUR or objecting to opposer’s use of the term. The
testimony and accompanying exhibits of Ms. Spagnola,
indicate that when applicant’s owner, Mr. Roose, initially
contacted her in December 2008, he raised no objection to
her use of the term ”power hour” in connection with her
goods, and in fact, expressed admiration for her products.
(Spagnola Test., p. 7; Exh.1). Furthermore, when applicant
subsequently proposed that it and opposer enter into a
business relationship under a written contract, applicant’s
owner forwarded a proposed agreement already executed by
applicant that made no explicit claim to trademark rights
in POWER HOUR, despite a section of the contract entitled
“Copyright, Trademark, Patent Use/Rights.” (Id., Exh. 3, p.
3). Given the nature of the communications between
applicant and opposer, and the nature of their business
relationship, we consider applicant’s failure to initially
object to opposer’s use of POWER HOUR, or to explicitly
address rights in and use of the term in the written
contract between them telling. These actions give rise to
Opposition No. 91195461
13

an inference that, at least at that point in time,
applicant likely viewed POWER HOUR as a descriptive term
available for use by others.
Ultimately, the evidence of record points unmistakably
to the conclusion that the proposed mark is highly
descriptive. The third-party use of the term in
conjunction with a drinking game is widespread and
voluminous. Well before applicant’s claimed first use
date, the term appears to have been established as the name
of a drinking game. Because POWER HOUR refers to the game
that applicant’s goods are designed to facilitate or
accompany, we conclude that the proposed mark is merely
descriptive of a significant feature or function of
applicant's goods.
Acquired Distinctiveness
Although applicant’s answer does not explicitly refer
to “acquired distinctiveness” or “Section 2(f)” as
affirmative defenses, applicant alleges in its answer that
POWER HOUR is understood as a reference to its products,
and describes sales and promotion under the mark. Although
applicant submitted no evidence during its testimony
period, thereby waiving the opportunity to provide its own
evidence of acquired distinctiveness, opposer introduced
into evidence documents provided with applicant’s
Opposition No. 91195461
14

interrogatory responses which contain relevant information.
In its brief, opposer also listed acquired distinctiveness
as one of the issues in the case, and argued the
insufficiency of the evidence regarding this issue.
(Opposer’s Brief at pp.7, 19-23; TTABVue Entry #30). Thus,
we will consider whether POWER HOUR has acquired
distinctiveness as a source indicator for applicant, such
that it would no longer be considered merely descriptive.
The burden of proving that a mark has acquired
distinctiveness rests on applicant, as the party asserting
distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki
Co., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
“To establish secondary meaning, a manufacturer must show
that, in the minds of the public, the primary significance
of a product feature or term is to identify the source of
the product rather than the product itself.” Inwood Labs.,
Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.11
(1982) (citation omitted). The amount and character of
evidence required to establish acquired distinctiveness
depends on the facts of each case and particularly on the
nature of the mark sought to be registered. See Roux
Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39
(CCPA 1970); In re Gammon Reel, Inc., 227 USPQ 729, 730
(TTAB 1985). Typically, more evidence is required when a
Opposition No. 91195461
15

mark is so highly descriptive that purchasers seeing the
matter in relation to the named goods or services would be
less likely to believe that it indicates source in any one
party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d
1316, 13 USPQ2d 1727, 1729 n.4 (Fed. Cir. 1990); In re
Seaman & Assocs., Inc., 1 USPQ2d 1657, 1659 (TTAB 1986).
As set forth above, the evidence in this case indicates
that POWER HOUR is highly descriptive.
Applicant’s affirmative defenses in its answer,
contain uncorroborated assertions about the use of social
media accounts, online stores, and ownership of a variety
of domain names,4 some of which include the term POWER HOUR
(¶¶15, 16, 17). Applicant further provides a timeline
asserting use of POWER HOUR since January 2000, and points
to its use of the “TM” symbol to buttress its claim that
the mark is source-indicating (¶¶19, 20). Although
applicant also lays claim to millions of downloads of its
software and tens of thousands of dollars in sales in both
its answer and interrogatory responses, no supporting
documentation or other corroboration of these self-serving

4 We note that the mere registration of a term as a domain
name does not establish trademark rights in the term. See
Brookfield Communications Inc. v. West Coast Entertainment
Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999);
see also TMEP § 1215.02(a) (8th ed. 2011) (noting that a
domain name may be registered as a trademark only if it
functions as a source identifier).
Opposition No. 91195461
16

claims was introduced into the evidentiary record. “A
party's response to an interrogatory is not without
evidentiary value, but generally is viewed as ‘self-
serving.’" ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d
1036, 1043 (TTAB 2012), citing General Electric Co. v.
Graham Magnetics Inc., 197 USPQ 690, 692 n.5 (TTAB 1977);
Grace & Co. v. City of Los Angeles, 278 F.2d 771, 776 (9th
Cir. 1960), and Beecham Inc. v. Helene Curtis Industries,
Inc., 189 USPQ 647 (TTAB 1976). Thus, we accord little
weight to applicant’s claims regarding downloads and sales.
Applicant acknowledges in the affirmative defenses in its
answer that a search on the Facebook social-media site
reveals that applicant’s “Power Hour page has 942 fans
where the association to the game outside my company has
only 750 likes.... ” Thus, even applicant’s own
characterization of the situation reflects substantial
consumer understanding of the term as non-source-
indicating.
Accordingly, we find that applicant failed to meet its
burden to show that POWER HOUR has acquired distinctiveness
as a source indicator for its goods. In making this
finding, we keep in mind that, as discussed in the prior
section, the term is highly descriptive for the goods for
which applicant seeks registration and the record shows
Opposition No. 91195461
17

that applicant’s use has not been substantially exclusive.
See Quaker State Oil Refining Corp. v. Quaker Oil Corp.,
453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972); Nextel
Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1408
(TTAB 2009). We have not hesitated to deny Section 2(f)
claims on much more extensive evidentiary records than
applicant’s. See, e.g., In re Crystal Geyser Water Co., 85
USPQ2d 1374 (TTAB 2007) (holding applicant’s evidence of
acquired distinctiveness, including a claim of use since
1990, sales of more than 7,650,000,000 units of its goods,
and extensive display of its mark CRYSTAL GEYSER ALPINE
SPRING WATER on advertising and delivery trucks and
promotional paraphernalia, insufficient to establish that
the highly descriptive phrase ALPINE SPRING WATER had
acquired distinctiveness for applicant’s bottled spring
water).
Genericness
Turning to the genericness claim, opposer argues that
POWER HOUR should be considered generic because others who
make products for playing the drinking game ‘power hour’
must be able “to describe their goods as what they are.”
(Opposer’s Brief at 14).
Generic terms are terms that the relevant purchasing
public understands primarily as the common or class name
Opposition No. 91195461
18

for the goods or services. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir.
2001); In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d
1832, 1836 (Fed. Cir. 1999). A two-part test is used to
determine whether a designation is generic: (1) What is the
genus of goods or services at issue? and (2) Does the
relevant public understand the designation primarily to
refer to that genus of goods or services? H. Marvin Ginn
Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986).
The identification of goods in this case indicates the
appropriate genus -- CDs, DVDs, software featuring a
drinking game. See Magic Wand, Inc. v. RDB, Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (genericness
analysis focuses on identified services). We do not find
that the evidence of record rises to the level of showing
that the term POWER HOUR refers to a category of CDs, DVDs,
and software. As indicated above, most of the evidence in
this case relates to ”power hour” as the name of a drinking
game involving the consumption of shots of beer, apparently
played without any use of CDs, DVDs, or software. The few
examples of descriptive or arguably generic use with CDs,
DVDs, or software do not meet the requisite standard for
Opposition No. 91195461
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genericness here. See Magic Wand, 19 USPQ2d at 1553
(limited generic use fails to establish genericness).
Although opposer draws an analogy to the hypothetical
proposed mark CHESS, for a computer chess game, an
important distinction differentiates the mark and goods at
issue here. The game of chess may be fully played via
computer using a virtual chessboard and pieces, such that
the computer game is the game of chess. However, the
central focus of the game described by the proposed mark
POWER HOUR rests on drinking shots of beer that obviously
are not provided by the digital media. Thus, applicant’s
CDs, DVDs, or software are an accompaniment to the
traditional POWER HOUR game, but do not provide everything
needed to play the game. Thus, unlike with CHESS as the
name of a genus of computer game that may be played
entirely via chess software, the user cannot play POWER
HOUR on the software. Rather, the player may use the
software, CDs, and DVDs to enhance or accompany the game.
So while POWER HOUR may describe a significant feature of
the CDs, DVDs, and software, the evidence does not show
that the term refers to a category of such goods. Thus,
the term does not rise to the level of genericness in the
context of these goods.
Opposition No. 91195461
20

Decision: The opposition to the registration of POWER
HOUR is hereby sustained under Section 2(e)(1) of the
Trademark Act because the mark is descriptive and lacks
acquired distinctiveness under Section 2(f), but dismissed
on the ground of genericness.