Cantor G&W, L.P.

Trademark Trial and Appeal Board

Aug 29, 2012

No. 77819424 (T.T.A.B. Aug. 29, 2012)

o

Mailed: 8/29/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cantor G&W, L.P.
________

Serial No. 77819424
_______

Jason M. Vogel and Jill K. Tomlinson of Kilpatrick Townsend &
Stockton for Cantor G&W, L.P.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Zervas and Taylor,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Cantor G&W, L.P. filed, on September 3, 2009, an intent-to-
use application under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), to register the mark IN-RUNNING (in standard
characters) for the following services:
Gaming and gambling machines, mobile and
wireless gaming and gambling machines;
computer hardware; computer software for
mobile and electronic wagering through
wireless devices; computer gaming and
gambling hardware and software; wireless
telecommunications devices; computer
hardware and software for wireless
telecommunications devices; apparatus for
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 77819424

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wireless transmission and reception of data
(in International Class 9); and

Wagering services; casino services; gaming,
gambling and betting services; online
gaming, gambling and betting services;
casino services offered via wireless
telecommunications devices; wagering based
on the outcome of sporting events; sports
betting; providing information in the fields
of sports, betting, wagering, and sports
betting; providing information in the fields
of gambling and gaming; providing
information in the field of sporting events;
providing online casino games via
telecommunication or computer networks (in
International Class 41).

The examining attorney refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that applicant’s mark, when used in connection with
applicant’s goods and services, is merely descriptive thereof.
When the refusal was made final in each class, applicant
appealed. Applicant and the examining attorney filed briefs.
Applicant argues that its proposed mark is inherently
distinctive and, at worst, only suggestive, and that the
examining attorney has failed to meet his burden to show mere
descriptiveness. Applicant claims that it coined the term “IN-
RUNNING” and that it uses the term in a trademark manner to
identify the source of its goods and services; further, the term
has no commonly recognized merely descriptive meaning in this
country. Applicant gives a detailed critique of the examining
attorney’s evidence, asserting that nearly half of the websites
Ser. No. 77819424

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emanate from foreign countries and that, therefore, such
evidence is of minimal probative value. Applicant also points
to the illegality of offshore online gambling in the United
States under the Unlawful Internet Gambling Enforcement Act
(UIGEA) of 2006. In this connection applicant argues:
“Consequently, the meaning that should be ascribed to the mark
for purposes of evaluating its distinctiveness for trademark
registration purposes is the meaning the term has in the legal
gambling marketplace within the United States, not whatever
meaning the term purportedly has in illicit online gambling
operations, or even legitimate overseas gambling sites that are
not authorized to render such services in the United States
marketplace.” (Brief, p. 9). In support of its arguments,
applicant submitted dictionary evidence, excerpts of third-party
websites, the results of a Google search report, and a listing
from Wikipedia.
The examining attorney maintains that the term sought to be
registered is merely descriptive of gambling goods and services
that feature a specific type of wagering, namely betting on a
sporting event during the course of the event as, for example,
placing a bet after the game has started; the betting odds
fluctuate based upon changes during the sporting event.
According to the examining attorney, “in-running” is a popular
form of gambling that is now legally accessible to consumers in
Ser. No. 77819424

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the United States. The examining attorney goes on to argue that
it is irrelevant that online gambling, to which some of his
evidence pertains, is illegal in the United States. In support
of the refusal the examining attorney submitted excerpts of
third-party websites, some of which are of foreign origin. In
response to applicant’s criticisms of this evidence, the
examining attorney asserts that the foreign websites are
accessible to gamblers in the United States.
The examining attorney bears the burden of showing that a
term is merely descriptive of the relevant goods or services.
In re Merrill, Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). A mark is deemed to
be merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007);
and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark need not immediately convey an idea of each
and every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; rather, it is
sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates,
Ser. No. 77819424

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180 USPQ 338 (TTAB 1973). Whether a mark is merely descriptive
is determined not in the abstract, but in relation to the goods
or services for which registration is sought, the context in
which it is being used on or in connection with the goods or
services, and the possible significance that the mark would have
to the average purchaser of the goods or services because of the
manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). It is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods
or services are. Rather, the question is whether someone who
knows what the goods or services are will understand the mark to
convey information about them.” In re Tower Tech Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002).
The term “running” is defined as “the act of a person,
animal, or thing that runs; going or carried on continuously;
sustained: a running commentary.” (Ex. A, 1/3/11)
(www.dictionary.com). None of the definitions of “running” is
associated with gambling, wagering or gaming devices. As shown
by applicant’s “negative” dictionary evidence, there are no
listings for the term “in-running.” (Ex. B, 1/3/11).
The majority of the examining attorney’s evidence in
support of the refusal comprises excerpts of third-party
websites wherein the authors refer to a form of wagering as “in-
running.” Several of the websites introduced by the examining
Ser. No. 77819424

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attorney are of foreign origin, and involve online gambling.
Applicant and the examining attorney argued back and forth over
the relevancy of the fact that online gambling is now illegal in
the United States, and applicant urged that the foreign websites
involving online gambling are of no relevance in deciding this
appeal.1
To state the obvious, the Internet is a resource that has
become universally available to the general public in the United
States. In that connection the Board on occasion has considered
evidence from websites located outside the United States
inasmuch as such evidence may have probative value depending on
the circumstances. See, e.g., International Business Machines
Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006). In the present
case, however, we do not believe that gamblers will reference a
foreign website to learn about a type of wagering that is now
legally available in the United States. That is to say, the
fact that the term “in-running” may refer to a type of gambling
in the United Kingdom is not probative of how relevant
purchasers would perceive the term in this country. Thus, we
have focused our attention on the domestic websites heralding

1 In this connection, the record includes a copy of the Safe Port Act
that, in part, prohibits online gambling in the United States, and an
article about the ramifications of this legislation. However,
inasmuch as wagering on sporting events while they are in progress has
made its way to Las Vegas, where gambling is legal, this evidence and
arguments based thereon are irrelevant.
Ser. No. 77819424

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the arrival of “in running” wagering in the United States,
specifically Las Vegas, Nevada, where gambling is legal.
As described on applicant’s website (a printout of which is
in the record), its goods and services consist of a mobile
wagering platform offered on applicant’s mobile gaming devices.
These devices are available at no less than three Las Vegas
casinos, enabling patrons there to make bets directly on the
device in various locations in and around the casinos, including
restaurants, cocktail lounges and by the pool.
The following articles discuss the emergence of a type of
gambling, referred to as “in-running” wagering, that allows
betting on a sporting event after the event has begun:
In Running Wagering - The new way to bet on
sports.
With sports betting seeming to be more like
the stock market every day its [sic] no
surprise to hear about the latest Las Vegas
creation from Wall Streets [sic] Cantor
Fitzgerald’s subsidiary Cantor Gaming. The
newest innovation to Vegas is called in
running wagering and it allows you to place
multiple sports bets throughout any given
game.
Dr. Robert Hunter who is a renowned gambling
psychologist in the Vegas area thinks that
in running wagering is a nifty idea and a
novelty that may or may not catch on...
(www.cooperspick.com)

“In-running” football betting arrives in Las
Vegas
M Resort...began offering “in-running” bets
last spring during the NCAA basketball
tournament. It then used it in the NBA
Ser. No. 77819424

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playoffs and Triple Crown horse races as
well as the baseball season. But this is
the first time it will be offered for
football, which is, by far, the most popular
sport to bet in Las Vegas. In addition to
NFL games, “in-running” will also be
available for select NCAA football games
this season.

“The addition of ‘in-running’ is certainly
going to enhance our sportbook offering and
be a huge hit with the many sports
aficionados who spend time at our
properties,” said Robert Goldstein....While
The Venetian and Palazzo will be the only
sportsbooks on the Strip to offer “in-
running” this football season, D’Amico said
the popularity of the new concept may help
it to proliferate to other books in the very
near future.
(www.casinocitytimes.com) (Sept. 4, 2009)

We are pleased to offer in-running betting
on selected televised games.
In-Running Betting Odds
Once the game starts, in-running odds will
be posted in the site under “In-Running” and
will be updated whenever there is a time-out
or a stoppage of play during the game,
unless the game becomes extremely one-sided,
in which case in-running betting will be
suspended.
In-running wagers are based on the final
result of the entire game including any
overtimes.
(www.sportsbook.com)

Sports Betting In-Running
Welcome to Sports Betting In-Running, the
number one source of information on In-
Running wagering, online sports book
reviews, and live odds on sports games from
around the world.
In-Running Wagering
Ser. No. 77819424

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In-Running betting, also known as Live
Betting, In-Play Betting, or In-Game
Betting, is the fastest growing form of
sports betting in the world today. While
traditional sports books allow bets to be
placed before a game begins, In-Running
wagers are placed while the game or race is
in progress. Do you think that the QB is
just about to throw an interception, or that
the next batter is going to knock one out of
the park, or the player at the free throw
line is going to toss up a brick? Wanna
bet? Well, now you can. With live, up to
the second odds on every play, on every
sports professional sports game, you’ll
never want to miss a single minute when
you’re Sports Betting In-Running.
In-Running in Vegas
Multiple Las Vegas casinos have just begun
offering In-Running Sports Betting. The
Venetian, Palazzo, M Resort, and Hard Rock
Casino now offer the non-stop action of live
sports betting. Cantor Gaming, a Nevada
based corporation, is offering casinos the
opportunity to incorporate their newest
product, Pocketcasino In-Running, into their
existing sports book. Customers can now
check out one of these iPhone-size devices
from the casino sports book and make live,
In-Running wagers right from the comfort of
their seats. The first casinos began using
this system in late 2009 and new ones are
added to the list every month, so you can
bet that In-Running betting is going to be
the new standard in live sports betting.
(www.sportsbettinginrunning.com)

Another anomaly Cantor has instituted is a
form of sports betting known as in-running.
Typically, in Las Vegas casinos, gamblers
can only bet on a game before it starts and
make a handful of so-called proposition bets
(say, betting on who will be ahead at the
end of the first half). With in-running,
gamblers can bet on the game even during
play, accepting ever-changing point-spreads
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and odds. They can invest money on a Knicks
foul shot going through the hoop or a Dodger
getting to first base--contending with ever
evolving odds.

This form of wagering is new to Las Vegas
but old-hat in other markets. “The idea
evolved over the last 10 years,” says Andrew
Garrood, who helped create the program at M
Resort and serves as executive director of
Las Vegas Sports Consultants, the sports-
handicapping service owned by Cantor. “We
started in-running wagering in 2001. We did
it as a bookmaker [in England] and we were
principal to all the action. We built
models and figured we could bring it to
Nevada.

Because in-running provides opportunities
for gamblers to make more bets per game than
they can with traditional wagering, Cantor
stands to generate more “vigorish,” which is
casino-lingo for the 10% commission that
bookies collect on all losing wagers.

Garrood has a background in financial
derivatives, and he maintains that in-
running is no different.

Critics of in-running maintain that some
people don’t want to bet sports as if
they’re day-trading a stock. Sometimes, the
reasoning goes, you just want to sit back,
drink a beer and enjoy the game.

Kenny White, who runs Cantor’s Las Vegas
Sports Consultants, sees it differently. He
points out that casual gamblers view in-
running as a convenience rather than a
complex puzzle of wagers. “You see momentum
changing and can make a bet.”

[Garrood] makes the in-running operation
sound easy for a company like Cantor, which
he says handles $150 trillion in Treasury
business each year.
(www.dailyfinance.com) (June 30, 2010)
Ser. No. 77819424

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In-running playoff wagering brings out the
crazy uncles.
(Las Vegas Review-Journal, May 27, 2011).

“The in-running gives people an opportunity
to hedge off their bets or try to middle
something,” said Mark Tomita, a Hilton
supervisor who posted the numbers at
timeouts. “The in-running, especially with
the NBA, is really exciting because there
are so many point swings.”
(www.lvri.com)

New Sports Betting Options Unveiled
Is In-Running Wagering the Next Big Thing in
Pro-Sports Wagering?
Las Vegas-based Cantor Gaming is the company
chiefly driving the boom in In-Running,
offering their product dubbed E-deck at the
Venetian, and Palazzo, all is Las Vegas. It
is essentially a mobile device that will
operate anywhere in the casino or a guest’s
room.
(www.suite101.com)

“In-running” football betting arrives in
Las Vegas
...the first NFL game to offer the new “in-
running” wagers.
“In-Running” betting allows players to wager
on live sporting events during the actual
flow of the game.
(www.garytask.casinotimes.com)

Although we concur with applicant’s claim that some of the
articles refer to the applied-for mark in a proprietary manner,2

2 In this connection applicant also introduced a Google search report
summary showing three pages of “hits” for “in-running.” Applicant
contends that the majority of the online uses of the term are
references to applicant’s proprietary goods and services offered under
the mark. A summary of Internet search results has little probative
Ser. No. 77819424

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the evidence includes references, even within the same article,
to the proposed mark as the name of a specific type of wagering.
That is to say, the authors of the articles refer to “in-
running” as the name of a particular form or type of gambling,
separate and apart from as a source indicator for applicant’s
goods and services. Even discounting the foreign websites as we
have done, the remaining evidence shows that the term “in-
running” has made its way to Las Vegas as the name of a type or
form of gambling. Based on the current record, we conclude that
the term “in-running” is merely descriptive for applicant’s
goods and services featuring the placement of wagers on sporting
events while the events are running.
When the applicant is the only source of the goods or
services, use alone does not automatically represent trademark
recognition. See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co.,
280 F.2d 437, 126 USPQ 362, 364 (CCPA 1960). The fact that
applicant may be the first and to date only user of the term
“in-running” in this country does not justify registration if
the only significance conveyed by the term is merely descriptive
as the name of a form of wagering. See In re National Shooting
Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).

value, because such a list does not show the context in which a term
is used on the listed web pages. See In re Bayer Aktiengesellschaft,
82 USPQ2d at 1833; and In re Thomas Nelson Inc., 97 USPQ2d 1712, 1715
(TTAB 2011).
Ser. No. 77819424

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Decision: The refusal to register in each class is
affirmed.