Friday, September 12, 2008

My Goodness? TTAB Reverses Mere Descriptiveness Refusal of "MY HORSE PLAYER" for Handicapping Software

Does addition of the word "MY" make an otherwise merely descriptive mark inherently distinctive? Maybe, maybe not, said the Board, but it did the trick in In re Scott McKeever, Serial No. 78919885 (September 10, 2008) [not precedential]. The Board reversed a Section 2(e)(1) refusal of the mark MY HORSE PLAYER, finding the mark not merely descriptive of horse handicapping software and related Internet services.

The PTO maintained that MY HORSE PLAYER is comprised of merely descriptive components that retain their descriptive meaning when combined. HORESEPLAYER is defined as "one who regularly bets on horses" and is therefore descriptive of the intended users of McKeever's goods and services. Furthermore, according to the PTO, both HORSE and PLAYER are individually descriptive of a feature of the goods and services: HORSE means horse, and PLAYER means someone who bets on horses. The word MY "serves only as the possessive pronoun identifying the particular customers chosen 'horse player,' or mode of assistance in handicapping a horse race."

McKeever submitted 37 third-party registrations on the Principal Register for marks that include the term MY with disclaimed matter [e.g., MY WEB, MY ARABIC TEACHER]. The PTO countered with 40 registrations in which MY is combined with descriptive or generic terms, and which registrations reside on the Supplemental Register, or under 2(f) on the Principal Register [e.g., MY FIRST KEYBOARD]. The only conclusion the Board could draw from these registrations is that "sometimes 'MY' marks have been found to be descriptive and sometimes they have not."

McKeever further argued that its mark is incongruous, and the Board agreed. "The term HORSE PLAYER means a person who places bets on horses, but is used here in connection with a thing that can be used by a horseplayer to assist in betting choices."

"There are at least two mental steps that one seeing the mark must make to connect it with a significant feature of the goods or services: 1) the viewer must understand that the mark does not refer to the user, that the goods or services are a software program or online service [TTABlog comment: when considering mere descriptiveness, one is supposed to consider the mark in the context of the goods and services; so isn't this a given?]; and 2) the goods or services do not allow a user to place bets or play horses, but assist in handicapping or deciding how to place bets on horses."

As to the PTO's argument that the mark describes the intended use of the goods and services, that might be true if the mark were just HORSE PLAYER, said the Board. However, adding the word MY, "turning the user into the mechanism, creates a unitary phrase with sufficient incongruity to require some thought in divining the nature of the goods and services and, thus, the mark does not immediately convey that information."

The Board pointed out that it was not finding "that the inclusion of the word MY will always make an otherwise merely descriptive mark inherently distinctive." That depends on the fact of the particular case.

Nothing that there is a "thin line" of distinction between suggestive and merely descriptive, and resolving any doubt in Applicant McKeever's favor, the Board reversed the refusal.

TTABlog comment: Suppose the mark were MY H-O-R-S-E PLAYER for software for playing the basketball game of H-O-R-S-E on the computer. Would this be merely descriptive? I think so. What if MY HORSE PLAYER were used as a mark for a computer program that allows the user to play the role of a horse on a virtual farm? Forget it. I'm not going there. Besides, I'm from the South Side of Chicago, and I don't do farms.

Text Copyright John L. Welch 2008.


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