TTABlog Test: Is BEST KNIGHT GAMES Merely Descriptive of Board Games?
The USPTO refused to register the proposed mark BEST KNIGHT GAMES for "board games; card games; checkers games; chess games; dice games; equipment sold as a unit for playing board games; go games; parlor games; puzzle games; strategy games; tabletop games; chess equipment and accessories; chess clocks; chess timers," finding the mark to be merely descriptive of the goods. Applicant argued that the mark is "suggestive in relation to the applied-for goods and suggests that the products can be enjoyed at night and derive from a source that prides itself as being honorary, fun, excellent, and entertaining." How do you think this came out? In re Portland Chess Shop LLC, Application Serial No. 90433730 (November 15, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).
Examining Attorney Andrea Cornwell relied, unsurprisingly, on dictionary definitions of "best," "knight," and "games," leading the Board to conclude that "when used in connection with the products in Applicant’s description of goods listed above, consumers will perceive BEST KNIGHT GAMES as superior activities involving a medieval, mounted soldier in armor." Third-party websites using the terms "knight games" and "best night games" confirmed that meaning.
The Board pooh-poohed applicant's argument that the proposed mark is suggestive of the goods and "does not immediately convey information about the quality, feature, function, or characteristic of Applicant’s goods to the average consumer." The Board found that "when the mark BEST KNIGHT GAMES is used in connection with board games, parlor games, or strategy games, consumers immediately understand that the activity (game) involves medieval mounted solders wearing armor (i.e., knights)."
Applicant also argued that its use of "Best" makes the mark BEST KNIGHT GAMES registrable because "Best" does not specify what aspects, if any, are better than other similar goods. The Board was unmoved. "Applicant’s use of the word 'Best' is laudatory. Laudatory terms, those that attribute quality or excellence to goods or services, such as Applicant’s use of 'Best' in BEST KNIGHT GAMES, are merely descriptive under Section 2(e)(1) of the Trademark Act."
And so, the Board affirmed the refusal to register.
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TTABlogger comment: WYHA?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 11/17/2022
9 comments
9 Comments:
I seriously had to look at the calendar to make sure it wasn't April 1. This is the worst decision of all time. The first thing I thought was "what a nice pun. I'll have the best night of my life playing these games". What does best knight even describe? Wow..
This strikes me as a decent enough play on words that it should have registered. Not all board games involve "knights" -- even the game of chess cannot be played without the other pieces. It takes two kings, two queens, four bishops, four rooks, 16 pawns -- and, yes, four knights -- to set a chess board.
An overly mechanical application of the "merely descriptive" prohibition of Section 2(e)(1) impoverishes the branding landscape. The use of "knight" in the applied-for mark is an application of the literary device of synecdoche, defined as: "a figure of speech in which a part is made to represent the whole or vice versa, as in Cleveland won by six runs (meaning “Cleveland's baseball team”)." I think that the use of such a figure of speech involves some incongruity and imagination. An expression using a synecdoche can be much more vivid than the "merely" descriptive terms. A nation can send soldiers somewhere or it can put BOOTS on the ground. We remember Mark Antony's speech in Julius Ceasar because it opens with the line, "Friends, Romans, countrymen, lend me your EARS..."
I fully realize that using a part to describe a whole meets the definition of "descriptive." But the Act also allows us to consider by what mechanism a term is descriptive. The examiners and the Board can be purely mechanical and lots of otherwise fun, imaginative, and commercially strong marks are strangled in the crib as a result.
Well, if is a "synechdoche," it's a commonly used one to describe the goods. And I didn't see a pun at all. "best night of my life"? Come on!
Perhaps if it was registered as a design mark where it was clear that BEST KNIGHT was the mark and GAMES merely the generic term then my point would have been stronger. Not knowing there was such a thing as "knight games" I had no way of knowing that it should have ben parsed as BEST...KNIGHT GAMES. But still, the mere fact that ONE game (chess) had a knight makes the whole mark descriptive of all the games? Geez..just delete chess and rely on related goods" to get it back as a practical matter. Would it then have been deceptive? No. For checkers and Monopoly, it would be a completely arbitrary mark.
The mark is weak sauce. Although 10:57 makes a well written pitch, the Board got this right. This opinion notwithstanding, the USPTO is too soft on descriptive marks. We really should see more merely descriptive refusals, more generic refusals, and more scrutiny of 2f claims. If the descriptive marks are so great, they will help launch the products and will acquire secondary meaning.
Just wondering, if I had a blog or website that looked at games and I used the title "Best Knight Games" for the title of my blog, would the trademark holder who was able to trademark BEST KNIGHT GAMES send me a cease and desist? If you go to google and type in "Best Knight Games", you will see why the decision makes sense because so many websites and blogs use this exact or similar phrase already.
Gene: chess is not the only "knight" game, apparently from the evidence.
I think one factor is the low cost of an appeal: the preparation of the brief largely involves cutting and pasting arguments already made in prosecution. Many practitioners do not seem aware of some of the basic principles that the TTAB applies (see my article, The Top Ten Losing TTAB Arguments). Also there is a CYA factor: the attorney, who has told the client to file the application and argue against the refusal, is, by human nature, likely to tell the client that the examining attorney is wrong.
I thought this opinion was bad until I Googled "best knight games" and there were a bunch of hits. Knight games are essentially a genre at this point.
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