Tuesday, November 28, 2006

"GAMESTUDIO" Not Merely Descriptive of On-Line Game, Says TTAB

Reversing a Section 2(e)(1) refusal, the Board found the mark GAMESTUDIO not merely descriptive of an on-line simulated securities exchange game. In re Hollywood Stock Exchange, LLC, Serial No. 78389911 (November 2, 2006) [not citable].

The Examining Attorney contended that GAMESTUDIO "appears to be commonly used by organizations who specialize in the creation or marketing of on line electronic games." Thus, he argued, GAMESTUDIO is like "men's store" or "dairy."

Applicant HSX maintained that the evidence did not show that "Game Studio" is a common business reference, nor that a company designated as a "game studio" offers on-line access to games. According to Applicant, the mark has "potential suggestive meanings" and is therefore not merely descriptive.

The Board observed that the record evidence suggests that "'game studios' typically develop and license use of game programs, but do not provide games directly to consumers." It was unclear "whether average purchasers of applicant's services would perceive GAMESTUDIO as either a merely descriptive term or as an entity designation as the Examining Attorney argues."

"... the evidence fails to establish that average purchasers of or players of online games would perceive GAMESTUDIO in the same sense as potential clothing purchasers would perceive 'men's store' or potential purchasers of dairy products would perceive 'dairy.'"

Moreover, the example of Applicant's use of the GAMESTUDIO mark (see above) "casts further doubt on the Examining Attorney's argument." As used therein, GAMESTUDIO "does not in any way suggest an entity type." The example also supports Applicant's assertion that its mark "may be perceived as suggesting an association with the film industry, the focus of the three games, or even a virtual place, or 'STUDIO' where these online games may be played."

In sum, the Board agreed with Applicant that "the significance of GAMESTUDIO in this context is ambiguous." Recognizing that this is a case "where some doubt may exist," the Board resolved any doubt in favor of Applicant.

TTABlog comment: If a "film studio" produces films and distributes them to the public, and if a "photography studio" takes photos and distributes (sells) them to customers, why wouldn't a "game studio" create and sell games?

It is well settled law that just because Applicant may be the first user of the mark GAMESTUDIO doesn't mean the mark isn't descriptive. I think other makers of games should be free to use "game studio" without fear of an infringement charge.

Text © John L. Welch 2006.


Post a Comment

<< Home