Thursday, July 30, 2009

TTAB Finds "BRAIN GAMES" Merely Descriptive of Puzzle Books, Lacking in Acquired Distinctiveness

It was close to a no-brainer for the Board in its affirmance of a refusal to register the mark BRAIN GAMES for "printed publications, namely, books and magazines containing games, puzzles and other cognitive exercises." The Board found the mark merely descriptive under Section 2(e)(1), and lacking in acquired distinctiveness under Section 2(f). In re Publications International, Ltd., Serial No. 77103024 (July 6, 2009) [not precedential].

Mere Descriptiveness: Examining Attorney Michael J. Souders relied on Internet websites showing descriptive use of the term "brain games" in connection with various cognitive and mental exercise games, and in connection with services to help improve learning and memory skills. He maintained urged that "brain games" is used to describe "a genre of games designed to improve one's cognitive abilities and exercise the mind." The Board agreed.

Here, very little exercising of the brain is needed for consumers to understand the highly descriptive nature of "brain games" when it is used on "printed publications, namely, books and magazines containing games, puzzles and other cognitive exercises."

Applicant IPL did not contest the Examining Attorney's evidence or analysis, but instead merely pointed to a third-party registration for the mark MIND GAMES that IPL contended is "no less descriptive" than its mark. The Board, once again, pointed out that each application must be considered on its own facts and record evidence. [The Board also noted that MIND GAMES may be a double entendre, whereas BRAIN GAMES is not.]

Acquired Distinctiveness: The Board began its Section 2(f) analysis by noting that "[t]he greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness."

Applicant IPL's evidence was rather feeble: a photograph of a display at the Frankfurt Book Fair; one letter received by Applicant; a sales catalog, two thousand copies of which were distributed at trade shows; sale of 1,681,139 copies of the books since November 2006; advertising expenditures of $50,000 for the Frankfurt fair; and revenues of $5,743,981.

The Board found that this evidence fell "far short" of establishing "that purchasers of applicant's goods recognize BRAIN GAMES as a distinctive source indicator for such goods." Given the "highly descriptive" nature of the mark, "substantially more evidence" would be needed.

The Board noted that the sales and revenue figures (which "appear to be substantial, on their face") were based on unsupported representations of counsel, and in any case were not placed in context vis-a-vis Applicant's share of the market. In any case, gross sales and revenue figures may indicate commercial success of the product, but not necessarily secondary meaning of the trademark.

And so the Board affirmed the mere descriptiveness refusal.

TTABlog comment: I think this case falls above the WYHA line, but just barely.

Text Copyright John L. Welch 2009.


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