John T. Brenden

Trademark Trial and Appeal BoardApr 14, 2014

No. 85556803 (T.T.A.B. Apr. 14, 2014)

THIS OPINION IS A NOT PRECEDENT OF THE TTAB Mailed: April 14, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re John T. Brenden _____ Serial Nos. 85556803; 85556811; 85556821; 855568261 _____ Lauri S. Thompson of Greenberg Traurig LLP for John T. Brenden. Allison P. Schrody, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _____ Before Kuhlke, Wellington and Hightower, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: On February 29, 2012, applicant, John T. Brenden, filed intent-to-use applications under Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b), to register on the Principal Register the mark CINEMA GAMERS in standard characters for goods and services identified as: computer application software for mobile phones, portable media players, and handheld computers, namely software for interfacing video games with an external display screen; computer software for playing video games and computer games with others via a global computer or communication network and for accessing and browsing 1 These appeals have been consolidated upon request by the examining attorney. Board Order, App. Ser. No. 85556811 (November 21, 2013); and Board Order, App. Ser. No. 85556803 (January 22, 2014). References to the record and briefs are from App. Ser. No. 85556803 unless otherwise noted. Serial Nos. 85556803, et al. 2 global computer and communication networks; downloadable electronic game programs; cinematographic apparatus, in International Class 9;2 video game consoles for use with an external display screen or monitor, in International Class 28;3 movie theaters; providing temporary use of theatrical movie screens for playing video games; entertainment services, namely, providing on-line computer games; providing information on-line relating to computer games and computer enhancements for games, in International Class 41;4 and computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking; hosting an online community website related to video game play, in International Class 42.5 Registration has been refused on the ground that CINEMA GAMERS is merely descriptive of applicant’s goods and services under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USOQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted). “A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of’ the goods or services related to the 2 Application Serial No. 85556803. 3 Application Serial No. 85556811. 4 Application Serial No. 85556821. 5 Application Serial No. 85556826. Serial Nos. 85556803, et al. 3 mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought. Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant ingredient, quality, characteristic, function, feature, purpose or use of the goods or services. Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Where a mark consists of multiple words, the mere combination of descriptive words does not necessarily create a nondescriptive word or phrase. In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at 1371. However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983). Serial Nos. 85556803, et al. 4 In addition, a mark that describes an intended user or group of users of a product or service is merely descriptive. In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas). The examining attorney sets forth her position as follows: Applicant’s mark in this case is a combination of two descriptive terms that clearly identify the intended group of users of applicant’s goods and services. The evidence of record shows the wording “cinema game” or “cinema gaming” has a very particular meaning in the entertainment and gaming industries, referring to interactive crowd gaming in movie theatres, or using cinema-type home theater equipment to play computer games at home … consumers would immediately understand that applicant’s goods and services are intended to be used by “cinema gamers,” or individuals who play video games in cinema theaters or who use cinema-type gaming equipment to play computer games at home.6 The dictionary definition for CINEMA is “1. A movie; a movie theater; the movie industry. The term refers to movies shot for theater audiences in contrast to videos shot with camcorders, still cameras or camera phones”7 and the definition for GAMER is “someone who plays games, especially computer games or games in which you pretend to be a character.”8 Based on the dictionary definitions alone, CINEMA GAMERS immediately describes the intended users and the intended use for applicant’s goods and services. 6 Ex. Att. Br. p. 5. 7 TheFreeDictionary (http://encyclopedia2.thefreedictionary.com), First Office Action (June 17, 2012). 8 Macmillan Dictionary (www.macmillandictionary.com), First Office Action (June 17, 2012). Serial Nos. 85556803, et al. 5 Moreover, the record shows use of the phrases “cinema game” and “cinema gaming” in a descriptive manner in connection with video games played on movie theater (or cinema) screens. A few examples are set forth below (emphasis added): A link to a Youtube video with the following description “Human Joysticks [NewsBreaker Live – interactive cinema game] … msnbc.com presents the worldwide premiere of interactive crowd gaming in movie theaters.” www.youtube.com (uploaded May 10, 2007), First Office Action (June 17, 2012);9 A screenshot of Premiere Cinema’s website advertising theater cinema gaming services : “Premiere Cinema presents Cinema Gaming Play your favorite Xbox games on the BIG SCREEN … For more information and details, simply download our Cinema Gaming flier.” http://www.premierecinemas.net/holliter_gaming.php), Final Office Action (January 7, 2013); and A blog discussing the “Shigeru Cinema Gaming Platform” stating “the idea was to make an easy to use platform to build games on. Cinema gaming, in this context means games which are played at the cinema [on] the big screen with hundreds of clients using their mobile phones to control their avatars.” http://johannesvuorinen.com/porfolio- item, Final Office Action (January 7, 2013). The record also includes examples of “cinema gaming” referring to using cinema-type equipment to play computer games at home as shown below: An online article titled “Paradigm Cinema Gaming Speaker Systems Target Double-Duty Living Rooms” discussing Paradigm company’s introduction of pre-packaged speaker bundles with its “Cinema Gaming systems.” Stating “gaming consoles play in [sic] increasing role in [home theater] setups” http://www.engadget.com, First Office Action (June 17, 2012); and 9 This event is described in the blog ghacks.net as follows, “The title of the video is Human Joysticks (NewsBreaker Live interactive cinema game) which describes exactly what this is all about. Take some motion sensing cameras, a breakout video game, a big screen and an enthusiastic crowd and you are about to witness the funniest breakout game of all times.” www.ghacks.net, First Office Action (June 17, 2012). Serial Nos. 85556803, et al. 6 A home theater LCD projector offered for sale online and described as a “Cinema Gaming Type for [use with] PS2 PS3 Xbox Wii DVD.” http://astheaterprojectors.info, Final Office Action (January 7, 2013). Applicant’s argument that this evidence is “of questionable relevancy” because it shows use of the phrases “cinema game” or “cinema gaming” not “cinema gamers,”10 is not persuasive. Evidence of use of the specific applied-for phrase is not necessary for a refusal based on mere descriptiveness. In re Nat’l Shooting Sports Found., Inc., 219 USPQ2d 1018 (TTAB 1983) (fact that applicant may be the first and only user of a merely descriptive term does not justify registration if the only significance conveyed by the term is merely descriptive). The evidence showing use of the phrases “cinema game” and “cinema gaming” corroborates the dictionary definition evidence by confirming the existence of this type of gaming (interactive crowd gaming in movie theaters or using cinema equipment to play computer games at home) and consumer exposure to and use of the phrase “cinema gaming” to describe this type of gaming. As established by the dictionary definition, players of computer games are called “gamers.” This definition is equally applicable to players of cinema games, a type of video or computer game. Thus, “cinema gamers,” at a minimum, describes the intended end users of the identified goods and services. Applicant made of record several third-party registrations that include the terms “CINEMA” or “GAMERS” as part of the marks and argues that the fact that these terms have been found to have trademark significance when used for computer services similar or related to those of [applicant’s] … tends toward the 10 App. Br. p. 5. Serial Nos. 85556803, et al. 7 conclusion that these terms are not merely descriptive, but rather are suggestive of [applicant’s] services.”11 Applicant acknowledges that the question of whether a mark is merely descriptive must be determined based on the evidence of record at the time the registration is sought and the allowance of prior registrations “does not bind the Board.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Certainly consistency is important, and to the extent a sustained clear practice would be revealed by USPTO records, that could provide some context for a term in a particular industry. This record, however, does not provide such context. None of the third-party registrations include both terms. Moreover, in several examples the marks are unitary and would not require a disclaimer. See, e.g., Reg. No. 3882166 for the mark UFACINEMA; Reg. No. 3298225 for the mark J’AIME LE CINEMA; Reg. No. 4330125 for the mark GAMER NEXT DOOR; and Reg. No. 3522737 for the mark IT’S A GAMERS LIFE FOR ME. In addition, many are for different goods or services. See, e.g., Reg. No. 3351591 for the mark CINEMA OF FEAR for toys, dolls and action figures; Reg. No. 3658952 for the mark BOSS GAMER for exercise machines; and Reg. No. 4189540 for the mark CARICATURE CINEMA for drawing and painting portraits for others. Applicant also asserts that “these terms could be used to identify a multitude of goods, not just”12 applicant’s goods and services. However, the fact that a term 11 App. Br. p. 5. Applicant also included several “approved” applications; however, third party applications have no probative value other than that the applications were filed. In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009). Nonetheless even if we consider them for the limited purpose of determining USPTO practice, they do not change the result. Serial Nos. 85556803, et al. 8 may have meanings in other contexts does not obviate its mere descriptiveness in connection with the identified goods and services. In re RiseSmart Inc., 104 UPSPQ2d 1931, 1933 (TTAB 2012). We further note that there is nothing incongruous about the combination of these terms in applicant’s mark, nor do they present a double entendre as was found in Colonial Stores, Inc., 157 USPQ at 385 (SUGAR AND SPICE not merely descriptive of bakery products because it brings to mind the nursery rhyme). Applicant’s argument that its product is “highly unique” and has not “been brought to market yet” does not change the analysis. It is well settled that the fact that applicant may be the first or only producer of such goods and services, and the first or only one to use the term does not render the phrase incongruous or distinctive. Phoseon Technology Inc., 103 USPQ2d at 1826. “The fact that applicant may be the first and/or only entity using the phrase [CINEMA GAMERS] is not dispositive where, as here, the term unequivocally projects a merely descriptive connotation. Moreover, it is not necessary that the term be in common usage in the particular industry before it can be found merely descriptive.” In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (internal citations omitted). To the extent the argument is directed to the proposition that because applicant’s product is a mystery, the examining attorney’s evidence cannot be probative of the average future consumer’s perception of applicant’s mark used in connection with its goods and services, this argument also fails. In its responses to 12 App. Br. p. 8. Serial Nos. 85556803, et al. 9 the refusals in each application applicant provided the following information as to its goods and services: Applicant is creating new video game systems, with game console hardware, video game software, software to allow multiple players to play together, computer services for a virtual community, and providing movie theaters for the option of playing the video games projected onto the theater screens.13 As pointed out by the examining attorney, “[b]y applicant’s own statement, its goods and services relate to, or are for the purpose of cinema gaming.”14 Applicant argues that his “mark is not merely descriptive of the intended users, as the intended users of the goods/services are actually the movie theater owners/operators, and not the individual patrons who may frequent the theaters.”15 Applicant asserts that “the nature of the goods/services identified by the CINEMA GAMERS mark in each class indicates that it is the theater owners/operators who are the intended consumers, not the theater patrons.”16 Applicant explains that: [T]he consumption of these highly specialized and expensive goods/services is ultimately intended for theater owners/operators who may be interested in purchasing and/or licensing the goods and services [applicant] is offering under the CINEMA GAMERS brand. By nature, the highly sophisticated goods/services offered by Appellant under the mark are not for the individual patrons of the theaters, but rather, are for the theater owners/operators who have the facilities, infrastructure, and specialized equipment to put the [applicant’s] CINEMA GAMERS brand of goods/services into operation. … By obtaining these goods, the theater owners/operators will be able to 13 App. Resp., App. Ser. No. 85556826 (December 14, 2012). 14 Ex. Att. Br. p. 8. 15 App. Reply Br. p. 2. 16 Id. p. 3. Serial Nos. 85556803, et al. 10 implement [applicant’s] new CINEMA GAMERS brand gaming systems in their theaters. Similarly, [applicant] may license its CINEMA GAMERS service mark to various theater owners/operators who have obtained the proper software and equipment to effectively implement [applicant’s] CINEMA GAMERS brand gaming systems. As such, [applicant] is developing CINEMA GAMERS branded products and services to sell and/or license to theater owners/operators who have the facilities, infrastructure, and specialized equipment to implement the new gaming system. Therefore, contrary to [the examining attorney’s] position, [applicant’s] CINEMA GAMERS mark does not directly identify the intended group of users of [applicant’s] goods and services.17 The identifications of goods and services are not specifically restricted by trade channel or class of consumer, nor does the nature of at least some of the goods and services in each class inherently restrict the class of consumers to theater owner/operators. In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed Cir. 2005) (mere descriptiveness need only be found for one of the goods or services in a particular class). While the cinematographic apparatus may arguably inherently have a limited consumer base, the software listed in International Class 9 does not. Similarly, applicant’s services “providing on-line computer games … and information on-line relating to computer games,” as well as, “creating an on-line community for registered users to participate in discussions, [etc.]” are not limited to being offered only to theater owners. However, even with such limitations the phrase CINEMA GAMER remains descriptive of the nature of the goods and services designed for the ultimate end user, the cinema gamer, to engage in cinema gaming which, according to applicant, would be offered under license (including the service marks) by theater owners/operators. 17App. Reply Br. p. 4. Serial Nos. 85556803, et al. 11 Finally, applicant argues that we should resolve doubt in its favor; however, we have no doubt that this mark is merely descriptive in connection with the identified goods and services. In re Finisar Corp., 78 USPQ2d 1618, 1624 (TTAB 2006); In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992). Based on this record, CINEMA GAMERS immediately describes a significant feature of the goods and services, namely that they are for use in connection with cinema gaming by cinema gamers. Decision: The refusal to register the mark as merely descriptive of the identified goods and services under Section 2(e)(1) of the Trademark Act is affirmed.