Creative Consortium, Inc.

Trademark Trial and Appeal Board

May 17, 2004

No. 76263114 (T.T.A.B. May. 17, 2004)

Mailed:
17 May 2004
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Creative Consortium, Inc.
________
Serial No. 76263114
_______
Jeffrey A. Pine of Baniak Pine & Gannon for Creative
Consortium, Inc.
Barbara A. Gold, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Hohein, Rogers, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On May 25, 2001,1 Creative Consortium, Inc. (applicant)
applied to register the mark ROCK PAPER SCISSORS, in typed
form, on the Principal Register for goods ultimately
1 In a paper dated June 19, 2001, applicant requested that the
application’s filing date be changed to May 17, 2001. There is
no indication that this paper was ever considered. If there is
further prosecution in this application, this paper should be
addressed.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76263114
2
identified as “gaming equipment, namely, gaming, gambling
or slot machines, with or without video output; multimedia
programs and software recorded on CD-ROM, computer game
programs and software for individual or network users,
interactive multimedia computer game programs and software”
in International Class 9.2
The examining attorney3 ultimately refused to register
applicant’s mark on the ground that the mark was merely
descriptive under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), of applicant’s goods. The examining
attorney has submitted evidence that “Rock Paper Scissors”
is a well-known game and that applicant’s computer game
software “could apply rules similar to those observed in
the traditional game.” Examining Attorney’s Brief at 6.
Applicant argues that “ROCK PAPER SCISSORS does not conjure
up images of gaming equipment, or multimedia or computer
game programs.” Applicant’s Brief at 9.
After the examining attorney made the refusal final,
applicant appealed to this board.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
2 Serial No. 76263114 is based on an allegation of a bona fide
intention to use the mark in commerce.
3 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 76263114
3
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); 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”). We look at the mark in relation to
the goods or services, and not in the abstract, when we
consider whether the mark is descriptive. Abcor, 200 USPQ
at 218.
When we analyze the evidence, we must keep in mind
that the test is not whether prospective purchasers can
guess what applicant’s goods are after seeing applicant’s
mark alone. Abcor Dev., 200 USPQ at 218 (“Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”).
The examining attorney has submitted numerous
printouts from NEXIS and the Internet that show that Rock
Ser. No. 76263114
4
Paper Scissors is the name of a game often played by
children.
The game pits symbols of rock, paper and scissors
against each other: Scissors cut paper, rock smashes
scissors, paper covers rock.
Great Falls Tribune, August 9, 2002.
… young daughter, waiting for the elevator on an upper
floor of the headquarters hotel, were engaged in a
spirited game of rock, paper, scissors. The father
was a happy loser – Joe Namath.
Detroit News, January 28, 2003.
If the NBA really wanted to prove the credibility of
the lottery, it would use a better system to select
the order. Like rock, paper, scissors or a game of
Twister between team execs.
San Diego Union-Tribune, January 12, 2003.
He was with high-school friends in Margarita Mamas, an
Arena District bar. A more sophisticated game of
euchre was dissolving into the child’s game of rock,
paper, scissors.
Columbus Dispatch, January 1, 2003.
Two new games are Arbitration, a party game that
utilizes “Rock, Paper, Scissors” with personal
responses to open-ended questions…
Playthings, January 1, 2003.
Games like rock, paper, scissors, banana tag and
nuclear waste dump soon became part of the fun side of
my brain…
Pensacola News Journal, December 24, 2002.
Remember the old children’s hand game rock, paper,
scissors? According to the rules of the game, paper
covered rock.
Albuquerque Tribune, December 13, 2002.
Yes, it’s the same game you played growing up. The
game determined who got the front seat, or the last
slice. And according to The Official Rules and
Regulations of the WORLD RPS Society” (International
Championship Edition), Rock-Paper-Scissors is a
Ser. No. 76263114
5
“decision–making game of wits, speed, dexterity and
strategy between players who are unable to reach a
decision using other means.”
Boston Globe, December 8, 2002.
One trio did “rock-paper-scissors” to determine who
would take the first turn.
Columbus Ledger-Enquirer, November 24, 2002.
One highlight of camp last summer was when she won a
game of rocks, paper and scissors and got to wear
purple leopard pajamas.
Seattle Post-Intelligencer, November 22, 2002.
According to applicant, in “the game of Rock Paper
Scissors, at least two players and usually more
simultaneously display their hand in a form that is known
to the players as either a rock (fist), a paper (all
fingers together and extended), or a scissors (middle and
index fingers extended). In the game, scissors beats
paper, paper beats rock, and rock beats scissors. Thus, if
two players extend their hands and one shows scissors and
one shows paper, the person showing scissors wins.”
Applicant’s Brief at 9.
Based on this evidence, it is clear that there is a
game that is recognized as “rock paper scissors.” The game
involves a person using his or her hand to make a symbol
for a rock, paper, or scissors. Winners are determined by
comparing the symbols that the participants displayed, for
example, “rock covers paper.” Applicant admits that its
goods would follow, at least in part, rules that are
Ser. No. 76263114
6
similar to the traditional game with the role of the second
participant played by the game device. “It is intended
that if the player enters the ‘bonus round,’ then the
player can choose one of three symbols (rock, paper,
scissors) and the machine would generate another symbol to
see if the player has increased the winnings.” Response
dated December 23, 2002 at 4. In addition, its goods would
display symbols including “a rock, a piece of paper and a
scissors.” Id.
Furthermore, there is evidence in the record that
there are already electronic versions of the traditional
“Rock Paper Scissors” game. See, e.g.,
http://javascript.internet.com/games (“Play Rock Paper
Scissors against your computer. Make your selection and
the computer will randomly choose as well and then the game
will be scored”); and Florida Times Union, November 28,
2001 (“Can’t decide who in the family should go mow the
lawn but too lazy to play ‘rock, paper, scissors’? No
problem! This site provides a virtual rock, paper,
scissors. The Internet amazes again.
www.2street.com/rock-paper-scissors”).
Applicant argues that there is multi-step reasoning
process for potential customers to arrive at the conclusion
that the mark is merely descriptive. We do not agree.
Ser. No. 76263114
7
When we analyze whether a mark is merely descriptive, we
must look at the mark in the context of the goods. Here,
applicant has provided information that indicates that the
mark will display symbols associated with the traditional
game and that it will follow, at least in part, the rules
of the traditional game. In addition, there is evidence of
electronic versions of the game “Rock Paper Scissors.”
Under these circumstances, applicant’s mark ROCK PAPER
SCISSORS merely describes a feature of its gaming machines
and computer game programs and software inasmuch as the
mark would inform prospective customers that applicant’s
goods are based on the traditional game of Rock Paper
Scissors.
We also address two other points of applicant. First,
applicant maintains that the examining attorney argues that
because “the game of Rock Paper Scissors is a game of
chance, and gaming machines are games of chance, [then] the
mark ROCK PAPER SCISSORS describes the goods.” Applicant’s
Brief at 9. We do not view this as a correct summary of
the examining attorney’s argument inasmuch as the examining
attorney based her refusal on the information applicant
provided concerning its specific goods and not simply on
gaming machines in the abstract. Indeed, we view the mark
in the context of the goods as applicant has described
Ser. No. 76263114
8
them. When we view them in this manner, applicant’s mark
is merely descriptive. We also point out that if an
applicant’s mark is descriptive of some of the goods for
which it seeks registration, the mark is merely
descriptive. Accord In re CyberFinancial.Net Inc., 65
USPQ2d 1789, 1791 (TTAB 2002) (“[I]f applicant’s mark
BONDS.COM is generic as to part of the services applicant
offers under its mark, the mark is unregistrable”).
When we view the mark in the context of the identified
goods, the term ROCK PAPER SCISSORS will immediately inform
prospective customers of the fact that applicant’s gaming
machines and computer game programs are based on the
traditional game of Rock Paper Scissors. As such,
applicant’s mark would describe a significant
characteristic of the goods. Therefore, we find that
applicant’s term is merely descriptive of the goods
identified in the application.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.