Bonus XP, Inc.

Trademark Trial and Appeal Board

Sep 28, 2015

No. 85626197 (T.T.A.B. Sep. 28, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bonus XP, Inc.
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Serial No. 85626197
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Robert D. McCutcheon of Munck Wilson Mandala LLP,
for Bonus XP, Inc.
Midge F. Butler, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Cataldo, Wolfson and Gorowitz,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Bonus XP, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark BONUS XP (in standard characters) for
Computer and mobile device game software; video game
programs; interactive video game programs;
downloadable electronic game programs and computer
software platforms that may be accessed via the Internet,
computers, mobile phones, smart phones and tablet
computers; computer software for uploading, posting,
showing, displaying, tagging, blogging, sharing or
providing electronic media and information in the fields of
virtual communities, electronic gaming, entertainment,
and general interest via the Internet or other
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communications networks with third parties in
International Class 9; and
Entertainment services, namely, providing online
computer and mobile device games and electronic games;
entertainment services, namely, providing online reviews
of computer and mobile device games; entertainment
services, namely, providing online information relating to
computer and mobile device games; entertainment
services, namely, providing an Internet website portal in
the field of computer and mobile device games and online
gaming; entertainment services, namely, providing
virtual environments in which users can interact through
social games for recreational, leisure or entertainment
purposes in International Class 41.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the proposed mark is deceptively misdescriptive.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board.3 We affirm the refusal to register.

1 Application Serial No. 85626197 was filed on May 15, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.

2 We note that the issue of whether Applicant’s proposed mark is deceptive under
Trademark Act Section 2(a) is not before us.
We further note that the Examining Attorney previously refused registration under
Section 2(e)(1) on the ground that the mark merely describes a function, feature or
characteristic of the goods and services, but subsequently withdrew that refusal to register.

3 Any of the evidence attached to Applicant’s appeal brief that was not previously submitted
is untimely and we give it no consideration. Trademark Rule 2.141(d); 37 C.F.R. §2.141(d).
See also TBMP §1203.02(e) (2015) and authorities cited therein. Any of the evidence
attached to Applicant’s appeal brief that was previously submitted is duplicative and
unnecessary. See In re Sela Products, LLC, 107 USPQ2d 1580, 1584 (TTAB 2013). See also
TBMP §1203.01 (2015) and authorities cited therein.

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Applicable Law
The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts.
First, we must determine whether the matter sought to be registered misdescribes
the goods or services. In order for a term to misdescribe goods or services, “the term
must be merely descriptive, rather than suggestive, of a significant aspect of the
goods or services which the goods or services plausibly possess but in fact do not.” In
re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); see also In re
Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006). The examining attorney bears the
burden of showing that a term is merely descriptive (and thus is potentially
deceptively misdescriptive) of the relevant goods or services by a preponderance of
the evidence. See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567,
4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Second, if the term misdescribes the goods or services, we must ask whether
consumers are likely to believe the misrepresentation. In re White Jasmine LLC,
106 USPQ2d 1385, 1394 (TTAB 2013); In re Phillips-Van Heusen Corp., 63 USPQ2d
at 1048; In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). The Board
has applied the reasonably prudent consumer test in assessing whether a mark
determined to be misdescriptive also would deceive consumers. See R. J. Reynolds
Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB
1985) (“On this evidence, we do not believe reasonably prudent purchasers are apt
to be deceived.”).
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A. Whether BONUS XP Misdescribes Applicant’s Goods and Services
The Examining Attorney introduced into the record the following dictionary
definition (from dictionary.infoplease.com) of “bonus” – “something given or paid
over and above what is due” or “something extra or additional given freely.”4 The
Examining Attorney also introduced into the record copies of numerous Internet
postings explaining the meaning of “XP” in the context of computer and video
games. The following examples are illustrative:
What does xp mean? EXPERIENCE POINTS;5

Glossary of Online Gaming Acronyms, Abbreviations and Slang
XP – experience points;6

Experience point – An experience point (abbreviated XP or EXP) is a
unit of measurement for character level advancement. Advancing to
the next level requires a fixed amount of experience points which is
determined by a formula;7 and

An experience point (often abbreviated to Exp or XP) is a unit of
measurement used in many role-playing games (RPGs) and role-
playing video games to quantify a player character’s progression
through the game. Experience points are generally awarded for the

4 September 10, 2012 Office Action at 41.
Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publically
available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014).
Citations to the examination record refer to the Trademark Office’s online Trademark
Status and Document Retrieval system (TSDR), by page number.

5 Id. at 5.

6 December 11, 2013 Office Action at 7-14.

7 August 7, 2014 Office Action at 51.

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completion of quests, overcoming obstacles and opponents, and for
successful role playing.8

The Examining Attorney further introduced Internet evidence showing that
“bonus XP” is a recognized term in the video gaming industry and community to
denote activities related to earning and accumulating bonus experience points. The
following examples are illustrative:

8 Id. at 18 (from wikipedia.org). The Board gives guarded consideration to evidence taken
from Wikipedia, bearing in mind the limitations inherent in this reference work, so long as
the non-offering party has an opportunity to rebut the evidence by submitting other
evidence that may call its accuracy into question. See In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1032 (TTAB 2007). In the case before us, the Wikipedia evidence was
submitted with the Examining Attorney’s initial Office action, and Applicant had an
opportunity to rebut it.

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9

9 September 10, 2012 Office Action at 25.
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10

10 Id. at 38.
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11

11 December 11, 2013 Office Action at 72.
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12
12 August 7, 2014 Office Action at 9.
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The evidence made of record by the Examining Attorney demonstrates that the
term XP is a shorthand version of “experience point” and that BONUS XP is a
recognized term in the computer gaming and video gaming industry denoting
activities, including special quests and events sponsored by online games,
particularly in the case of role-playing games, that award extra experience points
for completing various activities. Applicant’s goods and services include computer,
mobile device and video game programs and software, including those that may be
accessed over the Internet; software used for electronic gaming and blogging about
electronic games, and providing electronic games, reviews, information, website
portals and virtual environments therefor. As a result, we find that the Examining
Attorney has met her burden of demonstrating that BONUS XP merely describes a
significant function, feature or characteristic of such goods and services, namely,
that they provide bonus experience points for certain activities related thereto.
Based upon the evidence of record, certain of Applicant’s goods and services may
plausibly possess this feature. However, Applicant asserted in its October 21, 2013
communication that “[n]either of Applicant’s video games offers bonus experience
points. Applicant does not consider bonus experience points to be a significant
feature or characteristic of Applicant’s goods or services.”13
Applicant, for its part, argues that “the term ‘xp’ has multiple and substantially
different meanings and the word bonus can be applied to all equally – all in the

13 Applicant’s October 21, 2013 communication at 4.
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context of Applicant’s Goods/Services.”14 However, while Applicant argues that the
Examining Attorney’s evidence displays alternative definitions for “xp,” such as
“extreme programming,” “extra performance,” or “extreme performance,”15
Applicant fails to show how these alternative meanings apply to its goods and
services. It is well-settled that the possible significance of a term in different
contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Thus, the mere fact that BONUS XP may have different non-contextual
meanings does not diminish its descriptive significance as applied to Applicant’s
goods and services.
Applicant further argues that role-playing games do not all award experience
points and, in any event, those that do comprise a small percentage of video
games.16 However, Applicant cites to no authority for its apparent position that
BONUS XP must describe a significant characteristic of all or even a majority of
games in order to be merely descriptive in relation to its goods and services. We
further note that Applicant’s goods and services are not limited to any type of video
game and thus must be presumed to include role-playing games that award
experience points.
Based on the totality of the evidence of record, including evidence not specifically
discussed herein, we find that the Examining Attorney has carried the burden of
demonstrating that BONUS XP may plausibly describe a characteristic of

14 4 TTABVUE 13-14.
15 August 7, 2014 Office Action at 66.
16 Applicant’s June 11, 2014 communication at 44.
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Applicant’s recited goods and services and that Applicant’s goods and services do
not include this characteristic.
B. Whether Consumers Are Likely to Believe the Misrepresentation

Having determined that BONUS XP misdescribes Applicant’s goods and
services, we must ask whether consumers are likely to believe the
misrepresentation. In this case, we find, based upon the evidence discussed above,
that consumers of computer and video games and related services are accustomed to
encountering the term BONUS XP as a significant feature or characteristic of
computer and video games. Indeed, the evidence shows that hosts of online games
offer “bonus experience points” during set times, usually weekends, during which
gamers may accrue additional experience points for various activities allowing their
characters to “level up” and achieve enhanced abilities and standing. The evidence
further shows that such “bonus xp” events are highly anticipated, well-attended,
and also are the subject of online blogs, forums, discussions and strategy guides.
Applicant argues that “[n]othing in the record suggests that extra experience
points would materially affect the decision to purchase Applicant’s
Goods/Services.”17 Applicant further argues that the record lacks “evidence that
bonus experience points are a desirable or consequential component of video games
upon which purchasing decisions are made.”18 However, the evidence discussed
above demonstrates that offers of “bonus experience points” in games that award
experience points are highly anticipated and attended events. Contrary to

17 4 TTABVUE 17.
18 Id. at 19.
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Applicant’s apparent position, it is not necessary for extra experience points to be
offered in connection with the description of a game at the time of purchase in order
for BONUS XP to materially affect a decision to purchase a game. The widespread
understanding in the gaming universe of the descriptive significance of “bonus
experience points” and the enthusiasm for obtaining such experience points, both of
which are demonstrated by the evidence of record, support the Examining
Attorney’s contention that reasonably prudent consumers of video games and
related services would believe that Applicant’s goods and services confer “bonus
experience points” or BONUS XP.
Decision: The refusal to register Applicant’s mark BONUS XP under Section
2(e)(1) of the Trademark Act on the ground that the mark is deceptively
misdescriptive of the recited goods and services is affirmed.