TTAB Finds LOTERIA Generic for Gaming Machines

In a 40-page decision, the Board upheld a genericness refusal of LOTERIA [English translation, "Lottery"] for "Gaming machines, namely, slot machines and electronic gaming machines for playing games of chance." Alternatively, the Board affirmed a mere descriptiveness refusal, finding that applicant could not demonstrate the exclusivity of use needed to support her Section 2(f) claim. In re Martha Maria Sanchez Quiroz, Serial No. 90630537 (August 5, 2024) [not precedential] (Opinion by Judge Thomas V. Shaw).

Applicant stated that her predecessor-in-interest introduced a bingo-style game called “Don Clemente Loteria” in Mexico around 135 years ago. Applicant now offers a variety of goods in the United States under several LOTERIA-formative marks and owns a number of registrations, including one for LOTERIA for playing cards.

The Board deemed the genus at issue to be "gaming machines" and the relevant public to "consist of the adult public of the United States who are interested in gambling on gaming machines, namely, slot machines and electronic gaming machines for playing games of chance."

The Board found from the USPTO's evidence that "Loteria" is the generic name of a Mexican-style bingo game of chance played with cards and boards featuring various images. Next, it found that gaming machines can be programmed to give prizes for various combinations of those images or symbols.

It noted that applicant’s gaming machines feature images from its own LOTERIA DON CLEMENTE Mexican-style bingo game, "as would be expected from the name at the top of the machine." The Board therefore agreed with Examining Attorney Rebecca Gilbert that the "Loteria" Mexican-bingo style game "is the key aspect and central feature of the goods." See Cordua Rests., 823 F.3d at 603 (“[A] term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus[.]").

Therefore, the Board found that LOTERIA is generic when used in connection with applicant’s gaming machines featuring an image-matching game.

The Board noted that "it is possible that some Spanish-speaking consumers are unfamiliar with Mexican-style bingo. That is, some Spanish-speaking consumers would understand LOTERIA only to translate simply to LOTTERY." The Board then went on to find that the English translation as "lottery" would also identify a key aspect of gaming machines (i.e., video lottery machines) that fall within applicant's identification of goods.

For completeness, the Board considered the alternative Section 2(e)(1) refusal, first finding the proposed mark to be highly descriptive, and then finding that applicant had failed to satisfy Section 2(f):  "the plentiful evidence of third-party use of LOTERIA coupled with the absence of evidence such as sales and advertising figures, unsolicited media attention, or quantification of consumer impressions or views of the proposed mark, is fatal."

And so the Board affirmed the refusal(s) to register.

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TTABlogger comment: If Spanish-speaking Americans find LOTERIA to be generic for the goods, isn't that enough? Why did the Board need to consider whether the translated version, LOTTERY, is generic?

Text Copyright John L. Welch 2024.