Rock Intention N.V.

Trademark Trial and Appeal BoardOct 5, 2012

No. 79076199 (T.T.A.B. Oct. 5, 2012)

Mailed: October 5, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Rock Intention N.V. ________ Serial No. 79076199 _______ Patchen M. Haggerty of Dorsey & Whitney LLP for Rock Intention N.V. Charisma Hampton, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _______ Before Bucher, Mermelstein and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Rock Intention N.V. (“applicant”) seeks registration on the Principal Reg- ister of the mark PokerListings (in standard characters) for services ulti- mately recited in the application as follows: Advertising, business management, business administration, ad- vertising services, namely, promoting the goods and services of others, in International Class 35; and Leisure, sports and cultural activities, namely, providing a web- site featuring information about tournaments, events, and com- petitions in the field of online poker gaming; leisure, sports and cultural activities, namely, providing a website featuring enter- tainment information in the nature of reviews of online poker gaming websites and rooms, bonus offers, rakeback offers, opera- This Opinion is NOT a Precedent of the TTAB Serial No. 79076199 - 2 - tors of poker gaming websites, books and movies about poker in International Class 41.1 The trademark examining attorney has refused registration of appli- cant’s mark under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), having de- termined that the applied-for mark merely describes the subject matter of ap- plicant’s services. The examining attorney also rejected applicant’s showing of acquired distinctiveness under Trademark Act § 2(f), 15 U.S.C. § 1052(f), as being insufficient. After the examining attorney made the refusal final, applicant appealed to this Board.2 We affirm. The Mark is Merely Descriptive Trademark Act § 2(e)(1) prohibits registration of a mark which is merely descriptive of the applicant’s goods or services. A term 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. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bayer Aktiengesell- 1 Application Serial No. 79076199 was filed on December 17, 2009, under Trademark Act § 66(a); 15 U.S.C. § 1141f(a), based on applicant’s request for extension of protec- tion of International Reg. No. 1021812 for the mark PokerListings for “advertising, business management, business administration, administrative services” in Interna- tional Class 35 and “education, training, leisure, sports and cultural activities” in In- ternational Class 41; registered on September 29, 2009. Priority claimed from Neth- erlands Antilles Reg. No. 14094, registered on April 17, 2009. 2 Applicant’s footnote nos. 1 and 2 to its Reply Brief suggest applicant’s intention to file a request for remand. The record does not reflect any such filing. Serial No. 79076199 - 3 - schaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor Devel- opment Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods and/or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or feature about them. Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which regis- tration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). In this case, applicant concedes that its mark is descriptive, and seeks registration only on the basis of Trademark Act § 2(f). “Where an applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive.” Cold War Museum, Inc. v. Cold War Air Muse- um, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)). Applicant has not preserved an alternative claim that its mark is inherently distinctive. As applicant acknowledges, “once [applicant] claimed that the POKERLISTINGS mark had acquired dis- tinctiveness under § 2(f) in the First Response, the only issue to be deter- Serial No. 79076199 - 4 - mined was whether the POKERLISTINGS mark had acquired distinctiveness … .”3 Nonetheless, we have considered the evidence submitted by the Trade- mark Examining Attorney inasmuch as it shows, through dictionary and In- ternet evidence, that the mark PokerListings is highly descriptive in rela- tion to applicant’s services. The dictionary evidence shows that the term “poker” is defined as “a card game in which players attempt to acquire a win- ning combination of cards and bet at every deal,” and the term “listing” is de- fined as “an entry in a list, catalog, or directory.”4 The Internet references (from the first and final Office actions) show that the phrase “poker listings” is commonly used to describe a website listing of online poker rooms, or sites, where customers can play poker (emphasis supplied): A page copied from the website www.pokerextras.com headed “Poker Listings” reads as follows: “Take the time to go through the poker listings and make a comparison of the features offered at each and every poker online room we list….Compare all the listed poker bonuses, the reloads, the poker freerolls and the tournaments schedule before you decide to make your first depos- it.” At www.texasholdem101.com, “Your Guide to Beginning Texas Holdem,” there is a paragraph that reads, in pertinent part, “Freeroll Poker Listings – Find and play in some of the best and biggest texas holdem online freeroll poker tournaments. … Click the links displayed on this page to ensure your eligibility in all of the freeroll poker listings.” 3 Applicant’s Brief, p. 3-4. 4 From http://encarta.msn.com; Office action, December 29, 2009. Serial No. 79076199 - 5 - A page copied from www.toptenpokersites.org headed “Poker Listings” indicates that “By going over the poker listings we have here, players will be able to locate the best poker sites out there for them to spend their time on. … Our poker listings will help online poker players to find the best poker bonus so they can take advantage of that bonus when they join the poker site.” At www.onlinepoker10.com, visitors may link to the “Poker Listings” page, and view: “Welcome to the OnlinePoker10 Pok- er Listings section. This part of the website is dedicated for those in search of the Top poker information and listings of the best poker players as well as top poker tips, top hands etc.” From the website http://casinoonline-poker.com, Casino Online Poker offers the “Best Casino On Line Poker Listings,” claiming “We offer the review of best and highly trusted online casino pok- er gambling rooms where you can log in without hesitation and gamble on line. … You also can choose from the list any gam- bling halls… . Moreover, we guarantee that choosing one of [sic] listed casino on line poker rooms you can enjoy the safest online gambling with direct payoffs.” The web page shown at http://onlinepoker77.com links visitors to five “poker rooms” under the heading “Poker Listings” and pro- vides a short description of the activities, bonuses, promotions and games conducted at the rooms. The website www.newpokerlistings.com advertises: “At New Poker Listings, we list the best places to play Online Poker.” Twenty-two poker rooms are listed, along with information about the rating, bonus allotment, and location (United States or oth- erwise) of the site. Vegas Poker Listings advertises “We List the Best Online Poker!” at www.vegaspokerlistings.com. Eleven poker sites are listed on the web page, providing rating, bonus allotment, and location information about the poker sites listed. The website http://pokeroso.blogspot.com helps visitors locate online poker rooms under the heading “New Montana Poker Listings.” The post states “We have roughly 60 new listings in the last 30 days and that number will be growing…. We have about (50) new live poker listings from the state of Montana we are currently working on.” Serial No. 79076199 - 6 - The above evidence of record shows that the phrase “poker listings” is highly descriptive of a website that provides lists of poker-related information, such as lists of players, poker rooms, bonuses, reloads, freerolls and tourna- ment schedules. Although applicant uses the words “poker” and “listing” as a single term, the words do not lose their descriptive characteristics when com- bined. The combination of “poker” and “listings” into the single term PokerListings does not evoke a new and unique commercial impression; ra- ther, each component term retains its merely descriptive significance in rela- tion to the services. See, e.g., In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and industri- al cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in de- velopment and deployment of application programs). Accordingly, we find the evidence shows that the mark PokerListings is highly descriptive in relation to the services recited in applicant’s application. Applicant Has Not Shown Acquired Distinctiveness It is applicant’s burden to prove acquired distinctiveness of a descrip- tive mark. Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988) (applicant established acquired distinc- tiveness in design); In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant”). The Serial No. 79076199 - 7 - higher the level of descriptiveness, the greater the proportionate showing of acquired distinctiveness need be. In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2007); Qualitex Co. v. Jacobson Prods. Inc., 514 U.S. 159, 163 (1995). “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” Steelbuilding, 75 USPQ2d at 1424. As the Court in Steelbuilding explained, factors to examine include “copying, advertising ex- penditures, sales success, length and exclusivity of use, unsolicited media cov- erage, and consumer studies (linking the name to a source).” Id. Of this list, no single factor is determinative, and each of these elements need not be pre- sent. We examine all of the circumstances involving the use of the mark to determine its primary significance in relation to the involved goods or ser- vices. To support its position that the primary significance of the mark PokerListings is to identify applicant as the source of its services, applicant has submitted two declarations from Vivian Ersilia, Managing Director of CMS Trust N.V. (identified in the first declaration as applicant’s “parent com- pany” and in the second declaration as “the managing director of the appli- cant”). There are several apparent discrepancies in the two declarations. In the first, Ms. Ersilia attests to applicant’s use since October 24, 2003, of the Serial No. 79076199 - 8 - mark PokerListings in association with the services.5 In the second, howev- er, Ms. Ersilia states that applicant’s website was launched in May of 2003. This assertion is based on a print-out from “Netcraft” entitled “Site report for www.pokerlistings.com,” showing “Date first seen – May 2003.” Ms. Ersilia further attests to applicant’s continuous use of the mark since that date.6 Both declarations note that applicant’s services are offered “exclusively via the Internet.”7 Given that the date of May 2003 is supported by evidence, we have ac- cepted May 2003 as the date applicant launched its website. However, the ev- idence is not conclusive proof that PokerListings was used as a service mark in May. If the website was launched in May, but the term “PokerListings” did not first appear thereon as a service mark until October, the apparent dis- crepancy in the two declarations is avoided. On the other hand, we reach the same result herein whether we consider the mark’s first use to have been in May 2003 or in October 2003. Applicant attests to “sizable web traffic” on its website. According to Ms. Ersilia’s first declaration, the website garnered approximately 8 million “hits” in the years 2007-2010.8 However, in her second declaration, that num- 5 Ersilia Decl., July 5, 2010, paragraph 2. 6 Ersilia Decl., January 28, 2011, paragraph 2, exhibit 1. 7 Ersilia Decl., July 5, 2010, paragraph 8. 8 Ersilia Decl., July 5, 2010, paragraph 5. Serial No. 79076199 - 9 - ber increased to over 11 million, for fewer years (2008-2010).9 The figure of 8 million is unsupported by any evidence, while exhibit 2 to Mr. Ersilia’s second declaration, listing “Monthly Unique Visitors from the United States” for the years 2008, 2009, and 2010, supports the figure of 11 million. Curiously, ex- hibit 3 to Ms. Ersilia’s second declaration, which lists the number of “visits” to applicant’s website for each year from 2007 through 2010, suggests the figure is closer to just under 10 million visits.10 Regardless of the exact figure, however, the evidence shows that only 43-47 percent of the visitors to applicant’s website were from the United States.11 Thus, we find that from 2007 through 2010, there were between 3.4 million and 5.1 million visits to applicant’s website by persons from the Unit- ed States. As for advertising expenditures, the declarations support applicant’s assertion that during the years 2008, 2009 and 2010, applicant invested over $745,000 for banner ads on third-party websites, some of which are in the United States, such as CalvinAyre.com and thebachelorguy.com.12 However, 9 Ersilia Decl., January 28, 2011, paragraph 3; exhibit 2. 10 Neither exhibit 2 nor exhibit 3 has been identified. Thus, we cannot determine whether they were created in-house or by an outside firm, the conditions under which they were generated or the basis upon which the figures were tabulated. Moreover, in the first declaration, the figures were referred to as “hits.” The second declaration discusses “unique visitors.” Whether these terms are synonymous in the context in which they are presented is unclear. 11 Ersilia Decl., January 28, 2011, paragraph 4; exhibit 3. 12 Ersilia Decl., January 28, 2011; exhibit 6; Ersilia Decl. July 5, 2010, exhibit 2. Serial No. 79076199 - 10 - while applicant argues that the banner ads increased its website traffic since 2007, traffic actually decreased from 2009 to 2010.13 Applicant argues that its banner ads have been strategically placed to target the specific market segment of poker players: CalvinAyre.com is a leading U.S. website for gambling and poker news, gaming conferences and events. Thus, visitors of the CalvinAyre.com site are regularly exposed to ads displaying the applied-for mark…. Further, the Bachelor Guy site (thebacher- lorguy.com) is a U.S. website directed toward affluent men who are actively seeking products and services to purchase who iden- tify themselves as ‘Bachelor Guys.’14 The Bachelor Guy site offers links to “gear,” “food,” “drink,” “style,” “enter- tainment,” and “skills.” Nowhere does it show that the site is marketed to poker enthusiasts. While the CalvinAyre website promotes itself as a site for gambling-related information, and offers links to “casino,” “poker,” and “enter- tainment,” it also offers links to “sports,” “business,” “conferences,” “market- ing,” “legal,” “lifestyle,” “comic timing,” and “press releases.” There is no evi- dence as to the percentage of consumers interested in poker who visit the site, compared with consumers interested in other areas, or how many of the ap- proximately 4 million visitors to applicant’s website accessed the website from CalvinAyre (or Bachelor Guy) as a result of applicant’s advertising. Ms. Ersilia notes that a search for websites using the term “pokerlist- ings,” conducted in the www.google.com and www.yahoo.com databases, de- veloped references to applicant’s website exclusively (in the first three pages 13 Ersilia Decl., July 5, 2010, paragraph 5. 14 Reply Brief, p. 3. Serial No. 79076199 - 11 - of each search). Ms. Ersilia attests that “[e]very result refers to our POKERLISTINGS trademark.”15 The online search results, however, do not have significant probative value. First, applicant limited the search to the single-word, combined term “pokerlistings” and did not request any results for “poker listings” as two words. Further, the search conducted using the Yahoo search engine revealed mostly foreign websites, described in foreign lan- guages; even assuming these all pointed to applicant, it is unlikely the majori- ty of them would be accessed by individuals in the United States. Moreover, applicant is not necessarily the only entity listed; in the search conducted us- ing the Google search engine, there is a reference to the “online poker maga- zine PokerListings” that is available at www.parttimepoker.com. It does not appear as though this listing references applicant. Taken as a whole, these lists of links are not persuasive evidence of acquired distinctiveness of the mark. The remaining evidence is also insufficient. The declarations further support the fact that applicant has provided “live coverage of the World Series Of Poker Main Events (held each year in Las Vegas, Nevada) on the www.pokerlistings.com website… .”16 Although the declarations attest to con- tinuous coverage of the World Series of Poker games since 2005, the exhibits show coverage for the years 2006 and 2010 only. Ms. Ersilia further attests to 15 Ersilia Decl., July 5, 2010, paragraphs 9 and 10; exhibits 4 and 5. 16 Ersilia Decl., July 5, 2010, paragraph 4; exhibit 1; Ersilia Decl. January 28, 2011, exhibit 5. Serial No. 79076199 - 12 - “numerous unsolicited articles” that reference the mark PokerListings.17 However, applicant submitted only three articles, and two of these use “pokerlistings.com” as a domain or company name to refer to the place of em- ployment of one of applicant’s employees, rather than as a trademark: At www.boston.com, Meredith Goldstein posted “Damon wants ‘Rounders2’” on July 28, 2009, wherein an individual named Sean Lind is identified as a writer from Pokerlistings.com.18 At http://articles.cnn.com, Sid Lipsey posted “Online poker: A whole new card game” on January 12, 2005, about the pleasures of playing poker online. He writes: “At Pokerlistings.com, you’ll find listings and descriptions of various poker Web sites.”19 At http://gizmodo.com, there is a post entitled “Make Poker More Challenging by Playing With a Rock Band Drum Kit” that men- tions “Poker Listings’ Sean Lind” as having “figured out a fairly simple way of turning your Rock Band drum kit into a set of con- trols for poker.”20 This additional evidence is insufficient to show that consumers have become conditioned to perceive PokerListings as a service mark. Based on this record, we cannot conclude that applicant’s mark PokerListings has acquired distinctiveness. As shown by the evidence sub- mitted by the examining attorney, discussed supra, the mark is highly de- scriptive. The prima facie case of distinctiveness which must be established by applicant requires a greater quantum of evidence than has been presented because the purchasing public is less apt to view the term as a service mark. 17 Ersilia Decl., January 28, 2011, paragraph 5; exhibit 4. 18 Id. 19 Id. 20 Ersilia Decl., July 5, 2010, paragraph 7, exhibit 3. Serial No. 79076199 - 13 - In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Conclusion We have carefully considered the entire record, including all arguments and the evidence submitted. We find that the mark is merely descriptive and that applicant’s showing of acquired distinctiveness is insufficient to overcome the refusal. Decision: The refusal to register under Trademark Act § 2(e)(1) is af- firmed.