TTABlog Test: Is TENNISOS Merely Descriptive of Robotic Systems Software Platforms?
The USPTO refused to register the proposed mark TENNISOS for Computer software platforms for presentation of data and communicating with robotic systems, deeming the mark merely descriptive under Section 2(e)(1). Applicant Tennibot argued that, since “[t]he language of tennis and the language of computers have not traditionally been associated,” the combined term TENNISOS creates an "incongruity" that requires some thought and imagination to "understand the nature" of Applicant’s goods. How do you think this came out? In re Tennibot Inc., Serial No. 98243344 (July 25, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).
Examining Attorney Noopur Amin maintained that TENNISOS comprises two component terms: the first word TENNIS (the sport), to which is added the ending "OS," an abbreviation for "operating system." Applicant Tennebot appeared to agree, stating that "a consumer that encounters the Mark on Applicant’s website could understand TENNISOS to refer to the application that communicates with the Tennibot." the robotic product Applicant sells. Tennibot’s own specimens (see above) refer to TENNISOS that way.
Nonetheless, Tennibot argued that "OS" will be perceived as referring to "oversize" tennis rackets. The Board didn't buy it, since "Applicant's identified goods are software and Applicant uses the term in connection with describing the means by which users of its tennis robot communicate with and operate Applicant's robot."
With respect to Tennibot's "incongruity" argument, the Board saw "no inherent contradiction or incompatibility in using a computer term and a sports term together." Even if Tennibot were the first user of TENNISOS, the term is still merely descriptive if it describes a feature, characteristic, or function of the goods.
Moreover, the Board noted, "[t]he issue isn’t whether, seeing the mark, the consumer would thereby be able to 'understand the nature' of the product at issue." "This argument gets the issue backwards." "Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them."
And so, the Board affirmed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: WYHA? Mere descriptiveness as a guessing game is one of the "Top Ten Losing TTAB Arguments."
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 7/28/2025
8 comments
8 Comments:
Perhaps an even more interesting question is why would their be a need to register a mark for a computer platform for a proprietary and branded product?
How is it merely descriptive if the identification of goods and services doesn’t include the word tennis? I guess the specimen makes reference to Tennibot but I thought the analysis has to be limited to the ID?
So just because I see the mark and recognize the word TENNIS and the word OS, and these words have something to do with this ingenious robotic system means it's merely descriptive? I disrespectfully disagree
I still have no idea what TENNISOS is or what it is for. I did not view this as TennisOS, but maybe because it was all caps in your header. I thought it was some pharma drug and because maybe I read it too quickly and thought TENOSIS.
Remember, you have to look at the mark in the context of the goods, not in the abstract. It's not a guessing game where you just look at the mark and guess what the goods are. Also, the goods fall within the broad identification, just as "chair' would fall within "furniture."
I wonder, since the ID says nothing about Tennis, if they filed ITU would they have been likely to get an NOA issued - since there is nothing for the examiner to connect the software to tennis, unless she asked for more information. However, if they got an NOA, then upon submission of the SOU would it still have been refused? Perhaps after an NOA issued it would have been easier to get through, since it had already been "reviewed" and the examiner is more focused on whether it is a proper specimen.
"It's not a guessing game where you just look at the mark and guess what the goods are".
---> I think there may be a few who think that is exactly how the Board often decides a case. Then, they write a decision to match that result.
John, you are so off base as to be hilarious. I'm sure you would have appealed this if it were your client.
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