Future Ads LLC

Trademark Trial and Appeal Board

Jul 27, 2012

No. 85134539 (T.T.A.B. Jul. 27, 2012)

Mailed:
July 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Future Ads LLC
________

Serial No. 85134539
_______

Christopher J. Palermo of Hickman Palermo Truong & Becker
LLP for Future Ads LLC.

Stephanie M. Ali, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Kuhlke and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Future Ads LLC has appealed from the final refusal of
the trademark examining attorney to register ARCADEWEB and
design, as shown below, for “dissemination of advertising
for others via the internet and via downloadable computer
games; promoting the goods and services of others by means
of downloadable computer games and via electronic
transmission of advertisements over the internet; promoting
the goods and services of others by attracting, referring,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 85134539
2
and analyzing consumer traffic to the online promotions and
incentive award programs of others; promoting the goods and
services of others by providing gaming websites to generate
consumer traffic for others; referral services in the field
of online marketing.”

“The mark includes the stylized word ‘arcadeweb’ in
association with a device resembling a video game
controller.” Color is not claimed as a feature of the
mark.1
The examining attorney has made final a requirement
that applicant disclaim the term “ARCADEWEB.”
We reverse.
We must first address some procedural points. In
response to the first Office action, in which the examining
attorney required a disclaimer of ARCADEWEB “because it
identifies a feature of the applicant’s services, namely,
promoting arcade games via the web or Internet,” applicant
submitted a disclaimer of WEB. The examining attorney

1 Application Serial No. 85134539, filed September 21, 2010,
based on Section 1(b) of the Trademark Act (intent-to-use).
Ser No. 85134539
3
found this disclaimer unacceptable “because the wording
‘arcadeweb’ appears together and is unitary,” and therefore
“the mark cannot be dissected to disclaim the term ‘web.’”
Office action mailed August 9, 2011. The examining
attorney repeated and made final the requirement for a
disclaimer of ARCADEWEB. In applicant’s brief applicant
has specifically relied on the examining attorney’s
position that ARCADEWEB cannot be dissected into
independent terms. The examining attorney, in her brief,
has not referred to the disclaimer of WEB. Based on these
circumstances, we deem that applicant has accepted the
examining attorney’s statement that its disclaimer of WEB
was unacceptable, and has withdrawn its disclaimer of WEB.
We have therefore corrected the Office’s records to delete
the disclaimer of WEB.
The examining attorney did not submit any evidence
with her two Office actions showing the term “arcadeweb” or
“arcade web” used or referenced in connection with services
of the type identified in applicant’s application. With
her brief she has requested that we take judicial notice of
dictionary definitions for “arcade” and “web,” and has
attached such definitions to her brief. The definitions of
“arcade” from www.merriam-webster.com are already of record
because applicant submitted them with its response to the
Ser No. 85134539
4
first Office action, and therefore there is no need for us
to take judicial notice of them. As for the definitions of
“arcade” and “web” that she attached from the Your
Dictionary website, because this website states that the
definitions are taken from the print dictionary Webster’s
New World College Dictionary (2010), they are appropriate
subject matter for judicial notice, and we grant the
examining attorney’s request. See In re Osmotica Holdings
Corp., 95 USPQ2d 1666, 1668 (TTAB 2010); TBMP § 1208.04 (3d
ed. rev. 2012). The most relevant of the definitions of
“arcade” are “an amusement center having coin-operated
games,” (merriam-webster.com) and “penny arcade; a place
somewhat like a penny arcade, containing coin-operated
video games” (yourdictionary.com).2 The most relevant
definition of “web” is “A web is something formed by

2 The examining attorney also requested that we take judicial
notice of the definition of “arcade” from Cambridge Dictionaries
Online, http://dictionary.cambridge.org, which states that it is
taken from the Cambridge Academic Content Dictionary. However,
this definition states that it is “British English,” and
therefore we deem it inappropriate for judicial notice, as the
meaning of the term in Britain is not necessarily the meaning of
the term in the United States, and therefore we cannot consider
the British definition as a meaning “generally known within the
jurisdiction.” Fed. R. Evid. 201(b)(1). Nor can we treat a
British dictionary as a “source whose accuracy cannot be
reasonably questioned,” Fed. R. Evid. 201(b)(2), when the issue
is the meaning of a word in the United States. Nevertheless,
even if we were to take judicial notice of the definition, it
would not change the result herein, as the relevant definition of
“arcade” from that source is “an area where there are many
electronic or other coin-operated games for the public, video-
game arcades, a carnival arcade.”
Ser No. 85134539
5
weaving or is short for the World Wide Web. … 2. An
example of the Web is the Internet, a network of computers
that are connected to share information around the world.”
www.yourdictionary.com.3
The only evidence made of record by the examining
attorney during the examination process, and which bears on
the disclaimer requirement, is applicant’s prior
Registration No. 3881836 for ARCADEWEB in standard
characters that was registered on the Supplemental Register
for services identical to those identified in the present
application.4 This registration is of record because the
examining attorney attached a copy of the electronic

3 In her appeal brief the examining attorney has also quoted a
definition of “web” as “world wide web” or “the Internet,” citing
www.merriam-webster.com. We note that the excerpt she attached
to her brief from www.merriam-webster.com does not include that
definition. Although she included a link to that website in the
body of her brief, the Board will not utilize a link or reference
to a website’s internet address to access the site to consider
whatever content may appear therein. In re HSB Solomon
Associates, LLC, 102 USPQ2d 1269, 1274 (TTAB 2012); cf. Fed. R.
Evid. 201(c)(2) (tribunal required to take judicial notice only,
inter alia, if it is “supplied with the necessary information”).
In view thereof, we take judicial notice only of the definitions
that were actually attached to the examining attorney’s brief,
and only the definition from www.yourdictionary.com has probative
value.
4 The Supplemental Registration identification also includes the
phrase “dissemination of advertising via the internet”; we view
this as being the same as “dissemination of advertising for
others via the internet” which phrase appears in the
identifications in both the registration and the application
since, for dissemination of advertising via the internet to be a
service, it must be “for others.” We add that only a copy of the
registration taken from the electronic records of the Office was
submitted; the underlying file of the registration, including any
evidence therein, was not made of record.
Ser No. 85134539
6
version of it to the first Office action, in the context of
asking applicant to claim ownership of this registration if
it was owned by applicant. Applicant did so in its
response. However, it was not until the examining
attorney’s brief, which was obviously after the close of
examination and after the time that applicant could submit
evidence in response to that of the examining attorney,
that the examining attorney first raised the argument that
applicant, by obtaining this registration on the
Supplemental Register, impliedly admitted that this term is
merely descriptive. We acknowledge that the examining
attorney need not limit the arguments in her brief to those
that she raised in the various Office actions in support of
the disclaimer requirement, see TBMP 1203.02(b) (“an
examining attorney need not request remand in order to make
a new argument or change the rationale for a refusal or
requirement, as that is not considered to be a new refusal
or requirement”). However, we regard the use of this
evidence for an argument that is totally different from the
purpose for which the registration was submitted, and not
even hinted at in the Office actions, as unfair. The
examining attorney brought up applicant’s ownership of the
Supplemental Registration separately from the disclaimer
requirement. That is, the disclaimer requirement was made
Ser No. 85134539
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under the heading “Disclaimer,” while the existence of the
Supplemental Registration was raised under the heading
“Claim Ownership of Prior Registration,” with the
instruction that “If applicant is the owner of U.S.
Registration No. 3881836, then applicant must submit a
claim of ownership.” As a result, applicant would have
viewed the examining attorney’s question about its
ownership of the Supplemental Registration either as
reflecting a general Office practice that there must be a
claim of ownership of prior registrations, or as relating
to whether, if applicant were not the owner of the
Supplemental Registration, it would be a bar based on the
ground of likelihood of confusion. Thus, although we do
not say that the examining attorney cannot use the evidence
of the Supplemental Registration in support of her
disclaimer requirement, or that we cannot consider the
argument relying on that registration raised for the first
time in her brief, we view the examining attorney’s actions
as poor examination practice and strongly urge that such a
practice not be followed in the future.
Applicant, too, has not been a paradigm of good
prosecution practice. In its reply brief it raises, for
the first time, an alternative claim that its mark has
acquired distinctiveness, and has attached evidence to its
Ser No. 85134539
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brief in support of such a claim. Trademark Rule 2.142(d)
provides that the record in the application should be
complete prior to the filing of an appeal, and that, after
an appeal is filed, if the applicant or examining attorney
wishes to introduce additional evidence, a request for
remand should be filed. Thus, if applicant had wished to
assert a claim of acquired distinctiveness, it should have
filed a request for remand, since any claim of acquired
distinctiveness would have to be considered by the
examining attorney, not the Board. See TBMP § 1203.01
(“The brief should not include a proposed amendment …
within the body of the brief. Such requests should be
filed by separately captioned papers”.) In any event, in
view of our finding herein, there is no need to remand the
application to the examining attorney to consider such a
claim.
We also note that in its appeal brief applicant has
made reference for the first time to the marks and goods of
two third-party registrations. These registrations, which
are not of record, and the arguments relating thereto, have
been given no consideration.
This brings us to the substantive issue before us,
namely, whether ARCADEWEB is merely descriptive of
applicant’s services and must be disclaimed. Section 6(a)
Ser No. 85134539
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of the Trademark Act, 15 U.S.C. § 1056(a), provides that
the Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.
Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1),
prohibits the registration of a mark which is merely
descriptive of the applicant’s goods. A term is deemed to
be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(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 Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). On the other hand, a term that is suggestive is not
prohibited from registration by Section 2(e)(1). “Whether
a given mark is suggestive or merely descriptive depends on
whether the mark ‘immediately conveys ... knowledge of the
ingredients, qualities, or characteristics of the goods [or
services] ... with which it is used,’ or whether
‘imagination, thought, or perception is required to reach a
conclusion on the nature of the goods [or services]’.” In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
On the spectrum of distinctiveness, the dividing line
between merely descriptive and suggestive is a fine one.
Ser No. 85134539
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Id., see also In re Recovery, Inc., 196 USPQ 830 (TTAB
1977).
The examining attorney’s position is essentially that
the terms “arcade” and “web” merely describe a feature of
the applicant’s services because:
applicant promotes the goods and services of
others by operating an online arcade web site.
The applicant provides its advertising and
promotional services through an arcade on the
web, such that it disseminates advertising and
promotes goods and services of others by means of
arcade games on the web.

Brief, unnumbered p. 5.
As discussed previously, in her brief the examining
attorney raised for the first time the argument that,
because applicant had previously obtained a registration
for ARCADEWEB on the Supplemental Register for services
identical to those at issue herein, this is an admission
that the term was merely descriptive at the time it sought
that registration. Registration on the Supplemental
Register is prima facie evidence that, at least at the time
of registration, the registered mark was merely
descriptive. In re Central Soya Co., Inc., 220 USPQ 914,
917 (TTAB 1984). However, prima facie evidence can be
rebutted.
We have an odd situation here in that during
examination the examining attorney never raised the
Ser No. 85134539
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argument that applicant’s application for registration of
the mark ARCADEWEB on the Supplemental Register was an
admission that the term is merely descriptive and therefore
should be disclaimed in the present mark. Nor did the
examining attorney submit any evidence during examination
to show that ARCADEWEB is merely descriptive of the
applied-for services. Although the definitions of “web”
establish the descriptiveness of that term, the definitions
of “arcade” that the examining attorney relies on show that
an arcade is “an amusement center having coin-operated
games.” There is no evidence that applicant is providing
or intends to provide such an amusement center in
connection with the rendering of its services. Nor has the
examining attorney submitted any evidence that the mark,
used in conjunction with the identified services,
immediately and directly conveys to consumers that the
services involve arcade games.
Although it is well-settled as a legal matter that a
mark owner’s acceptance of registration on the Supplemental
Register constitutes an admission that the mark is
descriptive at the time of registration, see, e.g., In re
Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978); In
re Consolidated Foods Corp., 200 USPQ 477, 478 n.2 (TTAB
1978( (“Registration of the same mark on the Supplemental
Ser No. 85134539
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Register ... is an admission of descriptiveness”), it is
troubling that the examining attorney never put applicant
on notice that the examining attorney was treating the
Supplemental Registration as evidence in support of her
position, or that applicant had options to address the
prima facie evidence of the Supplemental Registration
(i.e., to file evidence of acquired distinctiveness under
Section 2(f) or submit rebuttal evidence). Nevertheless,
applicant did submit evidence, in the form of a dictionary
definition, that “arcade” is not merely descriptive of
applicant’s services.
We acknowledge that this evidence is quite limited for
rebutting the prima facie evidence of mere descriptiveness
of a Supplemental Register registration. However, we must
also recognize that the circumstances in this case are very
unusual, and that the cause for this limited evidence was
the examining attorney’s raising the argument of mere
descriptiveness based on that registration at a point where
prosecution and examination had long closed. Because of
this and because the examining attorney has not submitted
any evidence going directly to the mere descriptiveness of
ARCADEWEB, in this case these points outweigh any prima
facie evidence of mere descriptiveness from the
Supplemental Register registration. Accordingly, we find
Ser No. 85134539
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that the Office has not met its burden of showing that
ARCADEWEB is merely descriptive and must be disclaimed.
Decision: The refusal of registration is reversed.