No. 77250406 (T.T.A.B. Nov. 10, 2011)

Barcelou

Trademark Trial and Appeal BoardNov 10, 2011

No. 77250406 (T.T.A.B. Nov. 10, 2011)

Mailed: November 10, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Barcelou ________ Serial No. 77250406 _______ F. Richard Rimer, Jr. of Troutman Sanders LLP for David Barcelou. Benji Paradewelai, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Kuhlke, Bergsman and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: David Barcelou (“applicant”) filed an intent-to-use application on the Principal Register for the mark SLOTCAR, in standard character form, for the following goods, as amended: Computerized gaming equipment, namely, virtual reality vehicle racing simulators that accept an entry fee adapted for use with an external display screen or monitor; computerized gaming equipment, namely, stand alone video gaming machine which features computer hardware and software to simulate racing, and hardware to accept and dispense currency and connect to an interactive network, in Class 9. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77250406 2 The Trademark Examining Attorney refused to register applicant’s mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark is merely descriptive of applicant’s goods and, in the alternative, on the ground that applicant’s mark is deceptively misdescriptive of applicant’s goods. According to the Examining Attorney, SLOTCAR immediately conveys to the purchaser that applicant’s goods are a race car simulator featuring slotcar racing.1 In the alternative, the Examining Attorney argues that the mark is deceptively misdescriptive because computerized games feature slotcars or slotcar racing and the mark SLOTCAR is likely to lead consumers to believe that the applicant’s products feature slotcars or slotcar racing when they do not have those features.2 Evidence A. November 19, 2007 Office action. 1. “Slot car” is defined as “an electric toy racing car with a pin underneath that fits into a grove on a track for guidance.” Merriam-Webster Online (w-m.com). 2. The “Slot Car” entry from Wikipedia.com. A slot car (sometimes, slotcar) is a powered miniature vehicle which is 1 The Examining Attorney’s Brief, unnumbered page 4. 2 Id. at unnumbered page 9. Serial No. 77250406 3 guided by a groove or slot in the track on which it runs. A pin or blade extends from the bottom of the car into the slot. Though some slot cars are used to move highway traffic on scenic layouts, the great majority are used in the competitive hobby of slot car racing or slot racing. … Drivers generally use a hand-held controller to regulate a low-voltage electric motor hidden within the car. Each car runs on a separate lane, with its own guide-slot. The challenge in racing slot cars comes in taking curves and other obstacles at the highest speed that will not cause the car to lose its grip and spin sideways, or “deslot” and leave the track altogether. * * * Some hobbyists speculate that digital control and R/C will soon replace conventional slot systems, but others maintain that the relative simplicity and lower costs of traditional slot racing will insure its continued popularity even in the face of high- tech advance. (Emphasis added). 3. A review for the computer game Grooverider Slot Car Thunder for Xbox in C/Net Reviews (reviews.cnet.com). (Emphasis added). Slot Car Thunder is actually one of the few games to try to re-create slot car racing into video game form, and it does so at a budget price tag. … Slot Car Thunder features a few different single-and multiplayer modes, including arcade, time trial, championship and special. … Serial No. 77250406 4 An advertisement for this game appearing in Yahoo! Shopping (shopping.yahoo.shopping) touts the game as bringing the “action from the toy hobby to the television screen.” However, a comment from a customer reviews in Amazon.com indicate that this game “is NOT a slot car simulation, it IS a fun little arcade racer with fast little slot cars,” and “it is a slot car game, not an actual race car game.”3 (Emphasis in the original). The comments notwithstanding, the record shows that this is a “video game.”4 4. Hot Wheels Slot Car Racing advertised on shopping.msn.com. (Emphasis added). Hot Wheels Slot Car Racing brings the excitement of slot car tracks and vehicles to a virtual level by offering eight tracks and a dozen Hot Wheels cars. Compete against the computer or one human opponent using the keyboard or a pair of special Slot Car Controllers designed to plug into the PC game port. … Custom tracks, complete with curves, straight stretches, loops, dips, dives and jumps can be designed with the Trackbuilder module in the Hot Wheels Racing Lab. Both personal designs and randomized instant tracks can be constructed. 3 May 7, 2009 Office action. 4 See GameZone (gamezone.com) “Grooverider: Slot Car Thunder” (November 30, 2009 Office action); Business Wire, “Daredevil,” “Grooverider: Slot Car Thunder,” and “JoWood Games to Be Showcased at Encore’s E3 Booth” (July 19, 2010 Office action). Serial No. 77250406 5 5. An excerpt from the Slot Car Garage website (slotcargarage.com) featuring a review of a “3-D Slot Car Racing PC Game.” It is advertised as a “slot car simulator for your personal computer.” The game is favorably reviewed as realistically simulating slot car racing: “[i]t has great graphics, smooth animation, realistic simulation of slot car racing at home.” See also the entries in the Freegamebox.com website identifying the “3D Slot Car Racing Game” as a simulation game for personal computers.5 B. May 7, 2009 Office action. 1. An excerpt from the Carscoop website (carscoop.blogspot.com) entitled “VW Creates Virtual Golf GTI VI Slot Car Race Game.” The author reports that Volkswagen has developed “a new virtual slot car game that you can play online from the comfort of your office chair – just don’t get caught.” 2. An article in PCWorld (pcworld.com) “Freeverse Announces Slot Car Racing Game for IPhone.” Freeverse Software has announced the development of SlotZ Racer, a new slot car racing game for the iPhone and iPod Touch. … 5 May 7, 2009 Office action. See also “PC SlotCarz 1.0” (download3k.com). Serial No. 77250406 6 Designed to replicate the fun of slot car racing, SlotZ Racer lets you race 3D slot cars against the computer or up to three other players. … The game also incorporates a track editor so you can design your own sot [sic] car courses. C. November 30, 2009 Office action 1. An excerpt from the GameZone website (mobile.gamezone.com) regarding the LOTUS CHALLENGE SLOT CARS game for a mobile telephone. 2. An excerpt from the NINTENDO website (Nintendo.com) advertising its Wii FAMILY SLOT CAR RACING game. See also “Family Slot Car Racing Review,” a review of the game published in the IGN.com website. The review provides that “Family Slot Car Racing, as a video game, removes a common inconvenience of normal slot car competition - - you don’t have to run across the room and physically pick up a car that’s gone off the track here.” D. July 19, 2010 Office action.6 1. A copy of Registration No. 3794348 for the mark SLOT CAR SPEEDWAY for “gaming machines, namely, electronic slot and bingo machines.”7 Registrant disclaimed the exclusive right to use the term “Slot Car.” 6 We will not recount the duplicate evidence submitted by the examining attorney. Further, we note that the July 19, 2010 Office action included 221 pages of evidence that could have been included in any one of the previous five Office actions. 7 The copies of pending applications submitted by the examining attorney have no probative value. A pending application is Serial No. 77250406 7 2. LexisNexis articles referencing slot car racing video games.8 Excerpts from the articles are listed below. (Emphasis added). Newstex Web Blogs (September 14, 2007) PixelJunk Is More Than Just Racers Typically, there was a team of 4-5 people working full-time on PixelJunk Racers. The title itself is fairly straight forward - - deceptively simple, even. It’s a top down, slot- car style racing game that features over thirty modes like “Fireball Frenzy” in which hitting other cars causes you to speed up or “Balloon Bust” in which your car is propelled by deflating it. The slot car element gives the game a puzzle feel in which it’s more about “maneuvering” and less about “driving” where the goal isn’t finishing the race, but completing the objective. PR Newswire (July 25, 2000) [A] Slot Car Racing demo created by Human Code allows a player to speed along a slot car track while racing the clock and a computer-generated opponent. Players can watch their car from a chase camera perspective or an overhead view as it climbs the track in a child’s bedroom, over a chair, into and out of the closet, under a bed and through a box tunnel. The exciting game showcases both multi-resolution incompetent to prove anything other than the fact that it was filed. In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992); Merritt Foods Co. v. Americana Submarine, 209 USPQ 591, 594 (TTAB 1980). 8 We did not consider the articles from foreign publications because the examining attorney did not include evidence to show that they would be encountered by readers in the United States. Serial No. 77250406 8 mesh and lighting features of the Intel Internet 3D Graphics technology of Macromedia Shockwave Player. Newsday (December 13, 2000)9 Hot Wheels Slot Car Racing … a CD-ROM game by Mattel, comes with two slot-car controllers that players use to manage the speed of the car on eight different tracks. Newstex Web Blogs and Gaming Bits (August 17, 2009) Family Slot Car Racing Daddy, Mommy, Sarah and Billy are putting the pedal to the metal in Family Slot Car Racing. Race through three racing circuits, each composed of multiple racetracks and even bonus tracks. You can race against a friend for some friendly one-on-one racing action. Choose among multiple slot cars with varying designs to see which car has the best grip and speed. As you progress, you’ll unlock new courses and even new slot cars to help you reach the top of the racing circuit. Do you have it in you to be the fastest racer on four wheels? Telecommunications Business (February 4, 2009) Freeverse announced the release of SlotZ Racer, the ultimate slot car racing game for the iPhone and iPod touch. Developed by Strange Flavour, the creators of Flick Fishing, SlotZ Racer put the thrill of realistic 3D slot cars in the palm of your hand. Relive those great childhood memories of building tracks, burning rubber, and racing with your friends and family! 9 See also The Dallas Morning News (January 25, 2001). Serial No. 77250406 9 3. Third-party websites for video slot car racing games, including 3D Slot Car Racing Game 1.0, Slot Car Racer 1.18, Online Slot Car Racing, Slot Car Speedway, and Slot Car Derby. The BMIGAMING.com website advertises the sale of video arcade games, including GO GO GRAND PRIX SLOT CAR RACING ARCADE VIDEO GAME. It is a digital slot car racing game. The BMIGAMING.com website also advertised the sale of speedboat, motorcycle, and other vehicle arcade racing games that are simulations. They resemble applicant’s proposed product submitted in the May 15, 2008 Response. E. May 15, 2008 Response 1. A photograph of a prototype of applicant’s virtual reality vehicle racing simulator demonstrating that the user will sit in a machine with a steering wheel and video screen simulating an automobile race. See D(3) above. 2. An excerpt from the NASCAR SILICON MOTOR SPEEDWAY website (URL not provided) promoting a race car simulator. NASCAR NEXTEL Series racing simulators are nearly full-size racecar replicas with advanced software on full-motion hydraulic platforms. Each race car has 135 degrees of surround video monitors, immersive audio systems, and paint schemes Serial No. 77250406 10 corresponding to real NASCAR teams and drivers. F. March 10, 2009 Response 1. “A summary of the differences between a slot car and Applicant’s SLOTCAR.” 1960 slot car … slot car racing has been around for about 50 years. It consists of racing scale model cars with electric motors around a slotted track. … along the center of each lane is a groove called a slot. The slot car’s engine gets power from electric contacts on either side of the slot. … That’s the secret of slot car racing: go as fast as possible without “de- slotting.” 2009 SLOTCAR … Computerized gaming equipment, namely, automotive racing simulators network interconnected to facilitate automotive game of skill sports league competitions. … Preferably, the automotive racing simulators include multimedia enhancements and pertinent video displays to enhance the entertainment experience, including but not limited to audio as well as video instructions and menus and real time broadcasting connections between locations worldwide. 2. “Detailed responses to the Examining Attorney’s questions about Applicant’s goods.” The most relevant responses are listed below. 2. whether applicant’s goods are a racing game; Yes Serial No. 77250406 11 3. whether applicant’s goods are equipment for entertainment of making believe that users are in a race; Yes 6. whether applicant’s goods will allow its customers or players to race slot cars in a virtual reality environment; No 7. whether applicant’s goods allow its customers or players to race slot cars in a simulated environment; No 8. whether applicant’s goods allow its users to virtually race slot cars; No, however, users are always driving a computer generated “virtual” car photo, realistically modeled to appear “real”. 9. whether the subject of applicant’s simulators and video gaming machine are slot cars; No 10. whether applicant’s goods allow its users to virtually race real cars or vehicles; Yes G. May 19, 2010 Response Nine third-party registrations containing the word “Slot” for slot machines. Serial No. 77250406 12 Whether the mark is merely descriptive? A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the Serial No. 77250406 13 term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). The evidence of record shows that when the term SLOTCAR is used in connection with video or computer games, it directly conveys to consumers that the product is a virtual version of the classic toy (i.e., a slot car simulation). When a consumer encounters applicant’s mark SLOTCAR used in connection with applicant’s “virtual reality vehicle racing simulator,” the consumer immediately will know, without the need for any logical thought process or multi-step reasoning, that the product is a car racing simulation. In other words, in the context of a virtual reality racing simulator, the word SLOTCAR means more than just its dictionary definition (“an electric toy racing car with a pin underneath that fits into a grove on a track for guidance”). It has taken on a meaning that incorporates virtual gaming. Accordingly, applicant’s argument that its product is not a technical slot car ignores what has happened in the marketplace. Applicant’s argument that nine third-party registrations including the word “slot” registered on the Serial No. 77250406 14 Principal Register without a disclaimer or without a claim of acquired distinctiveness is not persuasive. First, the third-party registrations are for marks incorporating the word “slot” (e.g., SLOTSKY, SLOT JOCKEY, SLOTENGINE, etc.), not “slotcar” or “slot car.” Second, the “slot” marks are registered for slot machines, not virtual reality car racing simulators. These third-party registrations are not relevant to the issue before us. We find that the evidence submitted by the examining attorney, recounted above, is sufficient to show that consumers perceive the term SLOTCAR as describing a significant feature of video or computer racing games, including virtual reality simulators. Accordingly, when a consumer sees the mark SLOTCAR used in connection with “virtual reality vehicle racing simulators,” the consumer immediately knows that the product is a race car game. In view of the foregoing, we find that applicant’s mark SLOTCAR is merely descriptive of the goods listed in the application. Whether the mark is deceptively misdescriptive? In the alternative, in the event applicant’s “virtual reality vehicle racing simulators” do not feature slot cars, the examining attorney refused registration on the ground that SLOTCAR is deceptively misdescriptive when used Serial No. 77250406 15 in connection with “virtual reality vehicle racing simulators.” For purposes of completeness, we now turn to that ground of refusal. Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), prohibits registration of designations that are deceptively misdescriptive of the goods to which they are applied. With that premise, we begin the analysis. As explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984): The test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955), aff’d sub nom. S.C. Johnson & Son v. Gold Seal Co., 230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied, 352 U.S. 829 (1956), superseded by statute on other grounds as stated in Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). See also Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101, 1108 (TTAB 2009) (to be deceptively misdescriptive, a mark must immediately convey an idea about the goods, but that idea, though plausible, must be false). When we analyze whether SLOTCAR misdescribes applicant’s “virtual reality vehicle racing simulators,” we Serial No. 77250406 16 must answer in the affirmative. As discussed above, the evidence establishes that the term SLOTCAR or SLOT CAR is not inherently distinctive when used in connection with video or computer race car games; rather, it is routinely used in connection with race car games to describe a significant feature of the goods. Thus, by its argument that SLOTCAR “does not immediately convey a characteristic and/or feature of” the products in its description of goods, we understand this to mean in the context of this refusal that applicant’s goods do not include or simulate slot cars. Therefore, the mark SLOTCAR misdescribes applicant’s product as featuring simulated slot cars or slot car racing. The second part of the test for deceptive misdescriptiveness is whether the misrepresentation is likely to be believed by anyone. Applicant argues that the “reasonable purchaser will not be deceived into believing that [SLOTCAR] misdescribes Applicant’s goods.”10 Applicant respectfully submits that [the examining attorney’s evidence] are not chassis in which the consumer must sit to play. … Getting into a chassis is an integral part of a race car experience and differentiates [applicant’s goods] from 10 Applicant’s Brief, p. 16. Serial No. 77250406 17 the evidence of third party users as supplied by the PTO. … Further, to the extent any consumer is confused, even a quick review of the subject products will confirm that they are not computerized gaming equipment that feature slot cars. …11 However, as indicated in the analysis of whether the mark is merely descriptive, the term “slotcar” encompasses more than the technical definition of that term. When used in connection with video or computer games, the term encompasses a virtual version of the classic game. Slot Car Thunder is actually one of the few games to try to re-create slot car racing into video game form … Hot Wheels Slot Car Racing brings the excitement of slot car tracks and vehicles to a virtual level … “3-D Slot Car Racing PC Game” is a “slot car simulator for your personal computer.” The evidence of record demonstrates that the term “slotcar” when used in connection with a video or computer race game engenders the commercial impression of a virtual version of slot car racing. Consumers will expect to experience a slot car simulation when they encounter applicant’s mark SLOTCAR used for “virtual reality vehicle racing simulators.” Therefore, SLOTCAR used to identify 11 Applicant’s Brief, pp. 16-17. Serial No. 77250406 18 products that do not simulate slot car racing is deceptively misdescriptive. Applicant, relying on Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985) and other cases, argues that “even a quick review of the subject products will confirm that they are not computerized gaming equipment that feature slot cars.”12 Because of the term SLOTCAR, consumers are likely to believe the misrepresentation that the product is a slot car simulation and they will not discover that applicant’s product does not simulate slot cars until after they begin playing the game. Thus, consumers cannot readily examine applicant’s product to determine that it does not simulate slot car racing. In view of the above, we hold in the alternative, that applicant’s proposed mark SLOTCAR is deceptively misdescriptive. Decision: The refusal to register is affirmed on both grounds. 12 Applicant’s Brief, p. 17.