Wednesday, December 14, 2005

TTAB Citable Decision Deems "SPORTSBETTING.COM" Generic

In its 16th citable decision of the year, the TTAB affirmed the PTO's refusal to register SPORTSBETTING.COM, finding it generic for various Internet gaming services (which services excluded "actual money wagers"). The Board wrestled with the issue of defining the genus of the services, but it deemed the term generic regardless of whether actual betting is included in the genus. In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005).

In particular, DNI identified its services as:

"Provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment."

The Examining Attorney relied on dictionary definitions of "sport" and "bet" and on "multiple examples" wherein the words "sports" and "betting" are "actually joined together into a single compound term and used generically by applicant and by its competitors, for both sports wagering and for providing information regarding sports and betting."

DNI contended that because it specifically excluded "money wagering" from its recitation of services, the PTO's refusal to register could not stand.

Q1. What is the genus?

Applying the two-part test of H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986), the Board first sought to determine the genus of DNI's services. Noting that DNI actually does offer sports betting services at its website, the Board asked:

"Must this Board turn a blind eye to the reality of what is being offered on the named website, restricting our purview to the recitation of services in the application itself ....?"

No, said the Board. "[P]articularly where a single website is offering a variety of interrelated, interactive services, it seems appropriate to take all of those largely undifferentiated services into consideration when defining the genus of services. Accordingly, despite applicant's tactical decision to carve them out of its recitation of services, we find that the relevant genus of services herein includes wagering on sporting events."

Nonetheless, the Board pointed out that, even if it ignored the fact that DNI offers wagering at its website, "the class or category of services described in the application still clearly includes that of providing information regarding sports and betting."

Q2. Is the term understood by the relevant public to refer to the genus?

The Board agreed with the PTO that joining "sports" and "betting" yields a term that "in context, would be generic for a service that permits one to wager on sporting events." It distinguished the CAFC's recent In re, 75 USPQ2d 1420 (Fed. Cir. 2005), because that case involved a "double entendre," whereas here there is no such "realistic" double meaning.

"[V]oluminous evidence" of use of the terms "sports betting" and "sportsbetting" convinced the Board that "members of the relevant public, i.e., persons with Internet access who might wager on sports, primarily perceive 'sports betting' and 'sportsbetting,' usually set in lower case letters, as generic."

As to DNI's services of providing information regarding gaming and athletic competition, the Board found that "the information piece of applicant's recited services is inextricably tied into the actual betting." In that connection, the Board referred to its decision in In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) , in which BONDS.COM was held to be generic for information services related to debt instruments and other related investments, even though that applicant did not buy or sell bonds.

Mere descriptiveness

The PTO alternatively deemed SPORTSBETTING.COM to be merely descriptive of DNI's services. It noted that DNI had disclaimed both SPORTSBETTING and COM in an earlier registration. The Board agreed that, if SPORTSBETTING.COM is not generic, then it is "certainly merely descriptive." DNI made no attempt to prove acquired distinctiveness under Section 2(f), and so the Board upheld the refusal to register on the Principal Register.

In sum, the Board affirmed the refusal to register because the designation SPORTSBETTING.COM is incapable of registration under Section 23. It also affirmed the PTO's refusal of registration on the Supplemental Register. In the alternative, in light of the absence of evidence of secondary meaning, it affirmed the refusal to register under Section 2(e)(1).

TTABlog note: If DNI can get the genericness refusal reversed on appeal, then it appears that it may yet obtain a Supplemental Registration for its "mark."

TTABlog further note: In two companion cases (but uncitable) decided the same day, the Board found the designations SPORTSBETTING INFO and SPORTSBET INFO likewise to be generic and incapable of registration, or in the alternative merely descriptive, for the same services as in the citable case.

Text Copyright John L. Welch 2005.


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