Wednesday, December 09, 2015

WYHA? TTAB Finds MULTI-BINGO Merely Descriptive of Gaming Devices

The Board affirmed a Section 2(e)(1) refusal to register the mark MULTI-BINGO, finding it to be merely descriptive of gaming machines, bingo machines, and the related software, firmware and gaming equipment "sold or leased to owners or operators of gambling places." On appeal, Applicant argued unsuccessfully that the mark is merely suggestive, since it does not appear in dictionaries and could have various meanings. Would You Have Appealed? In re Xylomen Participations, S.à r.l., Serial No. 86024542 (November 19, 2015) [not precedential].

Dictionary definitions of "multi" and "bingo" were sufficient to show that the combined term MULTI-BINGO immediately conveys to owners and operators of gambling facilities that Applicant's goods allow players to play multiple, simultaneous, bingo games. That fact that "multi-bingo" is not found in a dictionary is "not controlling." The question is whether the merely descriptive components retain their merely descriptive meaning when combined. The Board answered that question in the affirmative.

Examining Attorney Daniel S. Stringer also made of record several webpages showing use of the terms "multi and multiple" to describe bingo games, machines, or game rooms where a single player may play multiple games of bingo at once. This evidence corroborated the dictionary evidence in establishing that the subject mark immediately conveys information about this feature of Applicant's goods.

Applicant feebly contended that "multi bingo" could have many different meanings and was too vague to be merely descriptive. The Board, however, concluded that "multi" is "not so broad as to require mature thought to discern the nature of the goods." There is a readily recognizable connection between the mark and applicant's goods. Moreover, the alternate meanings that Applicant proposed -  more than one person can play, more than one game can be played on the same card, or more than one bet may be place or prize awarded - all describe possible features of Applicant's goods.

Moreover, Applicant's identified customers are "owners or operators of gambling places" and therefore sophisticated purchasers who are likely to be aware of the features of various gambling machines, including multiple play options.

The Board concluded that the mark MULTI-BINGO immediately apprises consumers of a central aspect of the goods, namely, that they allow players to play multiple games of bingo at the same time.

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2015.


At 11:44 AM, Anonymous Kara Grogan said...

If Xylomen Participations, S.a.r.l. [hereinafter Xylomen] had been my client, I would not have appealed, for the evidence presented by the Examiner during the application process indicates the mark is merely descriptive of the goods/services. A mark is considered merely descriptive if “it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007)) (citing In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987)). Descriptiveness is determined “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” Id. Instead of an appeal, there are several alternative avenues for which I would have advised Xylomen to proceed.

First, as this was an intent-to-use application, I would have advised the mark to be used as soon as possible in interstate commerce. Then, once the mark was used in interstate commerce, I would have recommended Xylomen apply for registration on the Supplemental Register §23, for the Supplemental Register does not prohibit registration for marks that are merely descriptive of the goods/services.

While the protection afforded on the Supplemental Register is thin in comparison to the protection afforded on the Principal Register, the Supplemental Register would give the mark MULTI BINGO some protection, and most importantly, a chance to acquire distinctiveness through a secondary meaning. A mark develops secondary meaning in the minds of the consumer, when the consumer “connects the mark with the producer, rather than the product.” Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1018 (9th Cir. 1979) (citing Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970)).

Then, once the mark, while on the Supplemental Register, was given a chance to acquire distinctiveness through a secondary meaning, I would recommend Xylomen apply for registration on the Principal Register. While this would require Xylomen to apply for two marks (one on the Supplemental Register and one on the Principal Register), if an infringer used the MULTI BINGO mark after the new application had matured onto the Principal Register, Xylomen would be able to cite his date of first use, as the date set forth in the application for registration on the Supplemental Register.

Alternatively, I would have recommended Xylomen go back to the drawing board and amend their mark, to include a design, with the MULTI BINGO text. Next, I would recommend Xylomen apply for registration on the Principal Register, with a disclaimer of the text. This avenue would allow Xylomen to still file an intent-to-use application, and not rush the product into the marketplace. While the disclaimed text would have limited protection, the entire mark would have the full protection of the Principal Register. Then, after enough time had passed for the mark to develop distinctiveness through a secondary meaning, I would recommend Xylomen file a second mark on the Principal Register, of just the text MULTI BINGO, for the text would no longer need to be disclaimed.

Lastly, while not what Xylomen would want to hear, I would have recommended Xylomen try and come up with a name that is suggestive, or arbitrary for the MULTI BINGO goods/services. This would likely be frustrating to Xylomen, as one can imagine they have invested a lot of time and capital in the MULTI BINGO mark, but it may be the best method to achieve the level of protection Xylomen originally sought.

In sum, I would not have advised Xylomen appeal the Examiner’s decision, for the evidence presented indicates the MULTI BINGO mark is merely descriptive of the goods/services.


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