WYHA? TTAB Finds CASINO INFO Generic and/or Merely Descriptive of ... Guess What?

The Board affirmed two refusal of CASINO INFO for, inter alia, the provision of a website featuring information on gaming and entertainment, finding the term to be generic, or alternatively, merely descriptive under Section 2(e)(1). Applicant appealed, but it rolled snake eyes in the TTAB casino. In re Nortech Investments Ltd., Application No. 85080867 (July 10, 2013) [not precedential].

Mere Descriptiveness: The Board dealt first with the Section 2(e)(1) refusal. Applicant did not assert inherent distinctiveness but instead claimed acquired distinctiveness under Section 2(f) and transferred distinctiveness from two prior registrations.

First, applicant claimed that because of its claim of five years of continued and substantially exclusive use, the applied-for mark was entitled to a "presumption of acquired distinctiveness" under Section 2(f). Not so, said the Board. Section 2(f) states that the PTO "may accept" five years of use as prima facie evidence of distinctiveness. Here, website pages and other evidence submitted by Examining Attorney Linda Lavache established the "highly descriptive nature" of the mark, and consequently "it would not be appropriate to accept applicant's five years of use as prima facie evidence of distinctiveness in this case."

As to the prior registrations, Rule 2.41(b) provides that, "[i]n appropriate cases, ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness." Here, the first registration was on the Supplemental Register, and so did not qualify under Rule 2.41. The second registration, for the word and design mark shown above, covered broadcasting and netcasting services and included a disclaimer of CASINO INFO. Obviously it cannot be used to established distinctiveness of the disclaimed phrase. Moreover the mark and services were different from the application at hand.

Finally, applicant claimed acquired distinctiveness from its actual use of CASINO INFO in commerce for 13 years. However, there was little detail in the record regarding applicant's use of the mark, and no context in which to evaluate the little detail that was provided. The Board found no probative value in the fact that CASINO INFO appears first in a Google search result listing, since the Board is "not privy to the algorithm by which Google selects and displays the results of a search." The Board noted the evidence that others are using CASINO INFO to describe their similar services, demonstrating that CASINO INFO does not identify applicant as the sole source of services under the CASINO INFO brand name.

Genericness: The Board found the genus of services to be adequately defined by the recitation of services in the subject application. Dictionary definitions and webpages established the generic use of CASINO INFO in connection with the provision of information about gambling. Although the evidence does not contain a definition of "casino info," it demonstrates, under American Fertility, that CASINO INFO is "widely used for exactly the same purposes as applicant."

And so the Board affirmed the genericness refusal.

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TTABlog note: Well, would you have appealed?

Text Copyright John L. Welch 2013.