International Data Group, Inc.

Trademark Trial and Appeal Board

Apr 27, 1999

No. 74707130 (T.T.A.B. Apr. 27, 1999)

Paper No. 14
RFC
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT OF THE TTAB APRIL 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Data Group, Inc.
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Serial No. 74/707,130
_______
George W. Lewis of Spencer & Frank for International Data
Group, Inc.
Jennifer M. B. Krisp, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 20, 1995, applicant filed an application to
register the mark “GAMEMAKERS ONLINE”1 on the Principal
Register for “providing an online service for persons
interested in careers in the video game industry,” in Class

1 Except in its heading, applicant’s brief consistently refers to
the proposed mark as “GAMESMAKER ONLINE” and consistently refers
to the first word in the mark as “GAMESMAKER.” This is at odds
with the application’s drawing, as well as with the rest of the
prosecution history of this application, however. The mark
Ser No. 74/707,130
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sought to be registered is clearly “GAMEMAKERS ONLINE,” and we
have not considered it to be as argued in applicant’s brief.
Ser No. 74/707,130
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42. The basis for filing the application was applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce in connection with the stated
services.
The Examining Attorney refused registration under
Section 2(e)(1) of the Act on the ground that applicant’s
mark, if used in connection with the specified services,
would be merely descriptive of them. In support of the
refusal, she attached to the Office Action copies of
excerpts of published articles retrieved from the Nexis
automated database. These excerpts show the words
“gamemaker” and “gamemakers” used in reference to
manufacturers of video games. In addition to refusing to
register the mark, the Examining Attorney also required
amendment to the recitation of services because, she
asserted, “the precise nature of the service intended to be
rendered remains unclear.”
Applicant responded to the refusal and requirement by
amending the application to disclaim the word “ONLINE”
apart from the mark as shown, and by amending the
recitation of services to read as follows: “providing a
database of information online via global computer
information networks for persons interested in careers in
the video game industry.” Applicant argued that the mark
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sought to be registered is not merely descriptive of this
service because the mark “does not, with any certainty,
forthwith convey an immediate idea of the subject audience
of applicant’s service…”
The Examining Attorney was not persuaded by
applicant’s response, and made the refusal to register
final with the second Office Action. Attached to that
action were copies of additional excerpts retrieved from
the Nexis database. Typical examples are as follows:
“…the seventh-largest gamemaker, Interplay.”; “The joint
venture, Navio Communications Inc., involves Netscape
working with IBM, Sony, NEC and Oracle, as well as
gamemakers Sega Enterprises and Nintendo.”; “Gamemakers
have been successful in producing games for nearly every
other sport--from auto racing to football to basketball.”;
and “As a result of stiff competition from other
gamemakers, Atari Corp. has decided to merge with San Jose,
Calif.-based JTS corp., a privately held maker…”
Applicant timely filed a Notice of Appeal and a
request for reconsideration. The Board instituted the
appeal, but suspended action on it and remanded the
application to the Examining Attorney for reconsideration.
She was not persuaded, however, so the application was
returned to the Board and action on the appeal was resumed.
Ser No. 74/707,130
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Both applicant and the Examining Attorney filed briefs, but
applicant did not request an oral hearing before the Board.
Accordingly, we have resolved this appeal based on the
written record and arguments. Our conclusion is that the
refusal is appropriate. The words “GAMEMAKERS ONLINE,” if
used in connection with the service specified in the
application, as amended, would immediately convey the fact
that the service provides online information about careers
as gamemakers or working for the makers of games.
The test for descriptiveness is well settled. A mark
is merely descriptive within the meaning of Section 2(e)(1)
of the Lanham Act if, when considered in conjunction with
the service with which it is intended to be used, it
immediately and forthwith conveys information about the
nature of the service, or about a feature, characteristic,
purpose or function of the service. In re MetPath Inc.,
223 USPQ 88, (TTAB 1984); In re Bright-Crest, Ltd., 204
USPQ 591(TTAB 1979). This test is not applied in the
abstract. The question is not whether someone presented
with only the mark could guess what the services are.
Instead, it is whether someone who knows what the services
are will understand the mark to convey information about
them. In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990).
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Applicant’s argument is essentially that the term is
suggestive of the service applicant intends to render under
the proposed mark, rather than merely descriptive of it,
because the term is an online service directed to people
who aspire to have careers with the makers of video games,
whereas the proposed mark refers to the gamemakers
themselves.
As the Examining Attorney points out, the distinction
drawn by applicant does not make a difference in the
resolution of this issue. The record plainly establishes
that the manufacturers of video games are referred to as
“gamemakers.” The descriptive nature of the word “ONLINE”
has been conceded by applicant’s disclaiming the exclusive
right to use it in connection with the specified service.
The recitation of services, as amended, involves providing
information online to “persons interested in careers in the
video game industry.” This group would include more than
people outside the industry who seek to enter the field by
finding out about employment opportunities with the makers
of such games. It would also necessarily include people
who already have jobs within the industry who are
nonetheless interested in maintaining or advancing their
careers, and therefore are interested in the career-
oriented information applicant will provide under the mark.
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Both the people who are employed making the games and the
businesses for which they work can be characterized as
“gamemakers.”
In any event, whether the mark is understood to refer
to the manufacturers, to their current employees, or to
potential employees, to a prospective purchaser of
applicant’s service, who would already understand that the
service involved providing online information about careers
in the video game industry, the mark would immediately and
forthwith convey information about applicant’s proposed
service, namely that this is a service for gamemakers.
Thus, the test for mere descriptiveness within the meaning
of Section 2(e)(1) of the Act is satisfied. Accordingly,
the refusal to register is affirmed.
R. F. Cissel
` B. A. Chapman
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board
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