Friday, November 18, 2011

PICROSS Has Acquired Distinctiveness for Nintendo's Video Games, According to TTAB

Based on third-party usage, the Board agreed with the Examining Attorney that "PICROSS" is merely descriptive of Nintendo's video games. But it reversed the PTO's Section 2(e)(1) refusal to register the mark PICROSS DS without a disclaimer of PICROSS because it found that the word had acquired distinctiveness. In re Nintendo of America Inc., Serial No. 77245239 (November 3, 2011) [not precedential].

Mere Descriptiveness: Nintendo's goods feature a type of puzzle known as a "nonogram," also known as "Paint by Numbers," "Hanjie," and "Japanese Crosswords." The Examining Attorney submitted excerpts from more than 20 websites showing that the term PICROSS is used in connection with these types of puzzles. As a result, the Board found that the Examining Attorney had established a prima facie case that PICROSS is merely descriptive of nonogram puzzles.

Nintendo submitted a variety of evidence in rebuttal and asserted that it had coined the term "picross." Nonetheless, the Board pointed out, regardless of who invented the term, the question is whether PICROSS is, at the time of the application, merely descriptive of the goods.

Nintendo claimed that the third-party uses are infringing and that it has made efforts to enforce its mark. The Board observed, however, that Nintendo "overstates the impact of its efforts to police the mark and understates the descriptive significance of these third-party uses."

And so the Board ruled that PICROSS is merely descriptive of the goods.

Acquired Distinctiveness: The Board's discussion of Nintendo's 2(d) evidence was somewhat puzzling. It found that evidence of "media coverage of the popularity of these games provides some measure of context." [for Applicant's sales figures? - ed.]. The game also received high ratings from reviewers. [So what? - ed.]

Twenty-one form declarations from GAME STOP employees showed some degree of association of PICROSS with Applicant's games. Finally, Nintendo demonstrated that its "use of PICROSS has received extensive unsolicited media coverage." The Board concluded that:

Applicant has shown that the term PICROSS has been widely-associated with its two game programs. The games also have been shown to be both relatively popular and frequently reviewed by video game media sources. Balancing all of the evidence of record, we find that applicant has met its burden of showing that PICROSS has acquired distinctiveness.

The Board therefore reversed the requirement that PICROSS be disclaimed, and it ordered that the mark be published for opposition "with a notation of applicant's claim of acquired distinctiveness" as to PICROSS.

TTABlog comment: I was unconvinced by the Board's explanation as to why it found acquired distinctiveness. How about you?

Text Copyright John L. Welch 2011.


At 10:39 AM, Anonymous Alex Butterman said...

I haven't read the case but maybe that was a compromise position on the part of the Board?


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