Thursday, December 27, 2012

GRAND PRIX SPORTS Merely Descriptive of Rugby and Soccer Tournaments, Says TTAB

In this consolidated appeal, the Board affirmed nine (9) Section 2(e)(1) refusals to register, finding the marks GRAND PRIX SPORTS and eight other GRAND PRIX-formative marks to be merely descriptive of entertainment services related to rugby, soccer, football, and basketball. Dictionary definitions, third-party registrations, and Applicant William Tatham's responses to several questions posed by the Examining Attorney David Elton supported the PTO refusal. In re Tatham, Serial Nos. 77754249, 77754270, 77754276, 77754286, 77754290, 77754297, 77754306, 77754327 and 77782796 (December 12, 2012) [not precedential].

The evidence showed that "grand prix" refers to "important or high level competitions," and applies not only to auto racing but to vastly different competitions. Applicant stated that his tournaments would be "at the highest possible level," like the Formula One Grand Prix auto race. Third-party registrations included FINA GRAND PRIX for water sports [GRAND PRIX disclaimed], K-1 GRAND PRIX for martial arts [GRAND PRIX disclaimed], GRAND PRIX OF DOG AGILITY for sporting events for animals [Section 2(f)], and GRAND PRIX CARD TOURNAMENTS [Supplemental Register].

Tatham argued that the primary definition of "grand prix" refers to an auto race, but the Board pointed out that the marks must be considered in the context of the services. Just because a particular definition is not the first listed in a dictionary does not mean that is is inapplicable or that imagination or thought is required to apply that definition to the services at hand.

Tatham also contended (without proof) that "grand prix" conveys a second, broader meaning of "prestige of services," in the nature of a double entendre, but the Board observed that even if true, that second meaning too would be laudatory and descriptive.

Finally, Tatham took one more wrong turn, pointing to a distinction between the competitions relied on by the PTO (equestrian, autos, sailing, water sports, dog agility, and card games) and his services (rugby, soccer, basketball, and football). The PTO's examples involve "a course or track with a starting line and a finish line," while his involve "head-to-head competitions on a field or court where the participants take alternative turns attacking and defending a goal or zone." The Board pointed out, however, that the dictionary definitions of "grand prix" have no such limitations. There was nothing in the record, and no reason, to conclude that the consuming public would make such a distinction.

And so the Board affirmed the Section 2(e)(1) mere descriptiveness refusals of: GRAND PRIX SPORTS, GRAND PRIX FOOTBALL, GRAND PRIX BASKETBALL, GRAND PRIX SOCCER, GRAND PRIX SEVENS, GRAND PRIX STUDIOS, GRAND PRIX ONLINE, GRAND PRIX GAMING, AND GRAND PRIX RUGBY SEVENS (each including a disclaimer of the wording other than GRAND PRIX).

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Text Copyright John L. Welch 2012.


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