Bonus XP, Inc.

Trademark Trial and Appeal BoardSep 28, 2015

No. 85626197 (T.T.A.B. Sep. 28, 2015)

This Opinion is not a Precedent of the TTAB Mailed: September 28, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bonus XP, Inc. _____ Serial No. 85626197 _____ Robert D. McCutcheon of Munck Wilson Mandala LLP, for Bonus XP, Inc. Midge F. Butler, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Cataldo, Wolfson and Gorowitz, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Bonus XP, Inc. (“Applicant”) seeks registration on the Principal Register of the mark BONUS XP (in standard characters) for Computer and mobile device game software; video game programs; interactive video game programs; downloadable electronic game programs and computer software platforms that may be accessed via the Internet, computers, mobile phones, smart phones and tablet computers; computer software for uploading, posting, showing, displaying, tagging, blogging, sharing or providing electronic media and information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the Internet or other Serial No. 85626197 - 2 - communications networks with third parties in International Class 9; and Entertainment services, namely, providing online computer and mobile device games and electronic games; entertainment services, namely, providing online reviews of computer and mobile device games; entertainment services, namely, providing online information relating to computer and mobile device games; entertainment services, namely, providing an Internet website portal in the field of computer and mobile device games and online gaming; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes in International Class 41.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the proposed mark is deceptively misdescriptive.2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board.3 We affirm the refusal to register. 1 Application Serial No. 85626197 was filed on May 15, 2012, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 We note that the issue of whether Applicant’s proposed mark is deceptive under Trademark Act Section 2(a) is not before us. We further note that the Examining Attorney previously refused registration under Section 2(e)(1) on the ground that the mark merely describes a function, feature or characteristic of the goods and services, but subsequently withdrew that refusal to register. 3 Any of the evidence attached to Applicant’s appeal brief that was not previously submitted is untimely and we give it no consideration. Trademark Rule 2.141(d); 37 C.F.R. §2.141(d). See also TBMP §1203.02(e) (2015) and authorities cited therein. Any of the evidence attached to Applicant’s appeal brief that was previously submitted is duplicative and unnecessary. See In re Sela Products, LLC, 107 USPQ2d 1580, 1584 (TTAB 2013). See also TBMP §1203.01 (2015) and authorities cited therein. Serial No. 85626197 - 3 - Applicable Law The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts. First, we must determine whether the matter sought to be registered misdescribes the goods or services. In order for a term to misdescribe goods or services, “the term must be merely descriptive, rather than suggestive, of a significant aspect of the goods or services which the goods or services plausibly possess but in fact do not.” In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); see also In re Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006). The examining attorney bears the burden of showing that a term is merely descriptive (and thus is potentially deceptively misdescriptive) of the relevant goods or services by a preponderance of the evidence. See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). Second, if the term misdescribes the goods or services, we must ask whether consumers are likely to believe the misrepresentation. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013); In re Phillips-Van Heusen Corp., 63 USPQ2d at 1048; In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). The Board has applied the reasonably prudent consumer test in assessing whether a mark determined to be misdescriptive also would deceive consumers. See R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985) (“On this evidence, we do not believe reasonably prudent purchasers are apt to be deceived.”). Serial No. 85626197 - 4 - A. Whether BONUS XP Misdescribes Applicant’s Goods and Services The Examining Attorney introduced into the record the following dictionary definition (from dictionary.infoplease.com) of “bonus” – “something given or paid over and above what is due” or “something extra or additional given freely.”4 The Examining Attorney also introduced into the record copies of numerous Internet postings explaining the meaning of “XP” in the context of computer and video games. The following examples are illustrative: What does xp mean? EXPERIENCE POINTS;5 Glossary of Online Gaming Acronyms, Abbreviations and Slang XP – experience points;6 Experience point – An experience point (abbreviated XP or EXP) is a unit of measurement for character level advancement. Advancing to the next level requires a fixed amount of experience points which is determined by a formula;7 and An experience point (often abbreviated to Exp or XP) is a unit of measurement used in many role-playing games (RPGs) and role- playing video games to quantify a player character’s progression through the game. Experience points are generally awarded for the 4 September 10, 2012 Office Action at 41. Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Citations to the examination record refer to the Trademark Office’s online Trademark Status and Document Retrieval system (TSDR), by page number. 5 Id. at 5. 6 December 11, 2013 Office Action at 7-14. 7 August 7, 2014 Office Action at 51. Serial No. 85626197 - 5 - completion of quests, overcoming obstacles and opponents, and for successful role playing.8 The Examining Attorney further introduced Internet evidence showing that “bonus XP” is a recognized term in the video gaming industry and community to denote activities related to earning and accumulating bonus experience points. The following examples are illustrative: 8 Id. at 18 (from wikipedia.org). The Board gives guarded consideration to evidence taken from Wikipedia, bearing in mind the limitations inherent in this reference work, so long as the non-offering party has an opportunity to rebut the evidence by submitting other evidence that may call its accuracy into question. See In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007). In the case before us, the Wikipedia evidence was submitted with the Examining Attorney’s initial Office action, and Applicant had an opportunity to rebut it. Serial No. 85626197 - 6 - 9 9 September 10, 2012 Office Action at 25. Serial No. 85626197 - 7 - 10 10 Id. at 38. Serial No. 85626197 - 8 - 11 11 December 11, 2013 Office Action at 72. Serial No. 85626197 - 9 - 12 12 August 7, 2014 Office Action at 9. Serial No. 85626197 - 10 - The evidence made of record by the Examining Attorney demonstrates that the term XP is a shorthand version of “experience point” and that BONUS XP is a recognized term in the computer gaming and video gaming industry denoting activities, including special quests and events sponsored by online games, particularly in the case of role-playing games, that award extra experience points for completing various activities. Applicant’s goods and services include computer, mobile device and video game programs and software, including those that may be accessed over the Internet; software used for electronic gaming and blogging about electronic games, and providing electronic games, reviews, information, website portals and virtual environments therefor. As a result, we find that the Examining Attorney has met her burden of demonstrating that BONUS XP merely describes a significant function, feature or characteristic of such goods and services, namely, that they provide bonus experience points for certain activities related thereto. Based upon the evidence of record, certain of Applicant’s goods and services may plausibly possess this feature. However, Applicant asserted in its October 21, 2013 communication that “[n]either of Applicant’s video games offers bonus experience points. Applicant does not consider bonus experience points to be a significant feature or characteristic of Applicant’s goods or services.”13 Applicant, for its part, argues that “the term ‘xp’ has multiple and substantially different meanings and the word bonus can be applied to all equally – all in the 13 Applicant’s October 21, 2013 communication at 4. Serial No. 85626197 - 11 - context of Applicant’s Goods/Services.”14 However, while Applicant argues that the Examining Attorney’s evidence displays alternative definitions for “xp,” such as “extreme programming,” “extra performance,” or “extreme performance,”15 Applicant fails to show how these alternative meanings apply to its goods and services. It is well-settled that the possible significance of a term in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, the mere fact that BONUS XP may have different non-contextual meanings does not diminish its descriptive significance as applied to Applicant’s goods and services. Applicant further argues that role-playing games do not all award experience points and, in any event, those that do comprise a small percentage of video games.16 However, Applicant cites to no authority for its apparent position that BONUS XP must describe a significant characteristic of all or even a majority of games in order to be merely descriptive in relation to its goods and services. We further note that Applicant’s goods and services are not limited to any type of video game and thus must be presumed to include role-playing games that award experience points. Based on the totality of the evidence of record, including evidence not specifically discussed herein, we find that the Examining Attorney has carried the burden of demonstrating that BONUS XP may plausibly describe a characteristic of 14 4 TTABVUE 13-14. 15 August 7, 2014 Office Action at 66. 16 Applicant’s June 11, 2014 communication at 44. Serial No. 85626197 - 12 - Applicant’s recited goods and services and that Applicant’s goods and services do not include this characteristic. B. Whether Consumers Are Likely to Believe the Misrepresentation Having determined that BONUS XP misdescribes Applicant’s goods and services, we must ask whether consumers are likely to believe the misrepresentation. In this case, we find, based upon the evidence discussed above, that consumers of computer and video games and related services are accustomed to encountering the term BONUS XP as a significant feature or characteristic of computer and video games. Indeed, the evidence shows that hosts of online games offer “bonus experience points” during set times, usually weekends, during which gamers may accrue additional experience points for various activities allowing their characters to “level up” and achieve enhanced abilities and standing. The evidence further shows that such “bonus xp” events are highly anticipated, well-attended, and also are the subject of online blogs, forums, discussions and strategy guides. Applicant argues that “[n]othing in the record suggests that extra experience points would materially affect the decision to purchase Applicant’s Goods/Services.”17 Applicant further argues that the record lacks “evidence that bonus experience points are a desirable or consequential component of video games upon which purchasing decisions are made.”18 However, the evidence discussed above demonstrates that offers of “bonus experience points” in games that award experience points are highly anticipated and attended events. Contrary to 17 4 TTABVUE 17. 18 Id. at 19. Serial No. 85626197 - 13 - Applicant’s apparent position, it is not necessary for extra experience points to be offered in connection with the description of a game at the time of purchase in order for BONUS XP to materially affect a decision to purchase a game. The widespread understanding in the gaming universe of the descriptive significance of “bonus experience points” and the enthusiasm for obtaining such experience points, both of which are demonstrated by the evidence of record, support the Examining Attorney’s contention that reasonably prudent consumers of video games and related services would believe that Applicant’s goods and services confer “bonus experience points” or BONUS XP. Decision: The refusal to register Applicant’s mark BONUS XP under Section 2(e)(1) of the Trademark Act on the ground that the mark is deceptively misdescriptive of the recited goods and services is affirmed.