TTAB Reverses Geographical Descriptiveness Refusal of CASINOLA for Game Software and Related Retail Services

The Board reversed a Section 2(e)(2) refusal to register the mark CASINOLA for downloadable game software and related online retail store services featuring gaming goods. The Board found that the primary significance of CASINOLA is "the geographical place known as LA, i.e., the City of Los Angeles, California and the highly descriptive term CASINO." However, the USPTO failed to prove that applicant's goods will originate there or that consumers will associate applicant's goods or services with that geographic location. In re Casinola LLC, Serial Nos. 90115759 and 90115777 (July 5, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

"The test for determining whether a term is primarily geographically descriptive is whether (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) the goods or services originate in the place identified in the mark; and (3) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in geographic place identified in the mark." In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-9 (Fed. Cir. 2015). [emphasis added].

As to the first element, the Examining Attorney submitted the Wikipedia entry for "Los Angeles," dictionary definitions of "LA," a Wikipedia entry for "Casino games," and screenshots from third-party websites displaying the word CASINOLA and variations thereof in connection with casinos and casino gaming in Los Angeles. 

Applicant argued that consumers would more readily associate CASINOLA with New Orleans (Nola) or Louisiana (LA), if they made any geographical association However, there was little or no evidence that consumers would make such associations. "Rather, the consuming public commonly uses and recognizes LA to refer to LA to refer to Los Angeles as its primary significance." The Board agreed with the Examining Attorney that the word CASINO is highly descriptive of applicant's gaming-related goods and services, and does not detract from the geographic significance of the mark as a whole.

As to the second element of the test, applicant has a business address in Los Angeles. It indicated that its goods will be available online by means of an app store with no physical location, and its services will be available online. There was little evidence that Applicant’s goods or services will be developed or produced in Los Angeles. In fact, there was no evidence, for instance, that a main component of the goods will be produced there.

As to the third element, there was "insufficient evidence that Los Angeles is known for the identified goods or services.

Aside from a single webpage discussing one casino assertedly located in Los Angeles, the record does not support a finding that consumers generally associate LA with computer and video gaming goods and online retail store services of the type intended to be offered by Applicant. Absent from the record is evidence from Applicant’s website or marketing materials, third-party webpages, an electronic database, gazetteers, encyclopedias or geographic dictionaries establishing an association between Los Angeles and the identified goods and services. See TMEP §1210.04 and authorities cited therein.

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Can a mark for online services ever be primarily geographically descriptive? Suppose the software  includes scenes of Los Angeles, or depicted a casino in LA? Would that make the mark merely descriptive under Section 2(e)(1)? 

Text Copyright John L. Welch 2023.