Davis

Trademark Trial and Appeal Board

Aug 31, 2006

No. 75690413 (T.T.A.B. Aug. 31, 2006)

Hearing: February 16, 2006
Mailed: August 31, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Davis
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Serial No. 75690413
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Michael R. Friscia of McCarter & English for Robert
Kent Davis.

Katherine Stoides, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
____________

Before Hohein, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Robert Kent Davis has filed an application to
register on the Principal Register the mark ROBOT
GLADIATORS in standard character form for
“entertainment services, namely, the production of
demonstrations and shows featuring fights between human
and robot performers rendered live and through the
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75690413
2
media (sic) of television,” in International Class 41.1
The application includes a disclaimer of ROBOT apart
from the mark as a whole.
The examining attorney has issued a final refusal
to register, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s mark is merely descriptive when used in
connection with his services.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, and an oral
hearing was held.
Before beginning our consideration of the issue of
descriptiveness, we note that one of applicant’s main
arguments is that this refusal is procedurally
inappropriate. Prior to publication for opposition,
the examining attorney issued and then withdrew a
refusal to register on the ground that the mark is
merely descriptive. Following publication and issuance
of a notice of allowance, applicant submitted his
statement of use and a specimen of use. During the
subsequent examination, the examining attorney issued a
refusal to register on the ground that the mark is

1 Serial No. 75690413, filed May 20, 1999, based on an allegation
of a bona fide intention to use the mark in commerce. A statement
of use was filed on August 4, 2004, alleging a date of first use
as of October 14, 1999, and use in commerce as of October 20,
2003.

Serial No. 75690413
3
merely descriptive. This refusal was made final and it
is the subject of this appeal. In regard to the
refusal to register based on the ground of
descriptiveness, applicant argues there was no change
of circumstances between the time of the initial
examination and the examination that occurred after
applicant filed his statement of use. The Trademark
Manual of Examining Procedure (TMEP) addresses the
question of whether an examining attorney may raise a
new ground of refusal when examining the statement of
use. "The examining attorney may not issue a refusal
under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1),
unless the refusal is dictated by changed circumstances
from the time of initial examination, or the failure to
issue such a refusal would be a clear error." TMEP §
1109.08. Applicant disputes whether there was a change
of circumstances between the time of the initial
examination and the examining attorney's Office action
after the statement of use was filed. If an applicant
is dissatisfied with the procedural actions concerning
an examining attorney's refusal, he can seek relief by
way of a petition to the Director. 37 CFR §
2.146(a)(3); and TMEP § 1201.05. However, "[o]n
appeal, the Trademark Trial and Appeal Board will
review only the correctness of the underlying
Serial No. 75690413
4
substantive refusal of registration." TMEP § 1109.08.
Accord In re Sambado & Sons Inc., 45 USPQ2d 1312, 1314
(TTAB 1997) (expanded panel) ("Board's determination on
appeal is to be limited to the correctness of the
underlying substantive refusal to register").
Therefore, we will only consider the merits of the
examining attorney's refusal and not whether the
examining attorney properly applied the standard for
raising a refusal after the filing of a statement of
use.
Turning, therefore, to the issue before us on
appeal, the examining attorney contends that “ROBOT
GLADIATORS immediately identifies a feature of the
applicant’s services – robot fighters, or in other
words ‘robot gladiators’ are the featured performers”
(brief, unnumbered p. 3); and that the term GLADIATORS
is not incongruous in connection with performances
featuring fighting. The examining attorney submitted
definitions from The American Heritage Dictionary of
the English Language (3rd ed. 1992) of the terms
“robot” and “gladiator” as noted, in pertinent part,
below:
Robot: 1. A mechanical device that
sometimes resembles a human being and is
capable of performing a variety of often
complex human tasks on command or by being
programmed in advance.

Serial No. 75690413
5
Gladiator: 2. A person engaged in a
controversy or debate, especially in public;
a disputant. 3. Sports. A professional
boxer.
We also take judicial notice of the definition of
“gladiator” in Merriam Webster’s Collegiate Dictionary
(11th ed. 2003) as follows:
1. A person engaged in a fight to the death
as public entertainment for ancient Romans.
2. A person engaging in a public fight or
controversy. 3. A trained fighter, esp. a
professional boxer.

Applicant contends that that his mark ROBOT
GLADIATORS is not merely descriptive because “it is an
unnatural use of the term ‘gladiators’ to refer to
robot performers,” and it does not “give a consumer an
immediate impression that the services rendered
thereunder relate to human and robot performers
engaging in fights” (brief, p. 3).
The test for determining whether a mark is merely
descriptive is whether it immediately conveys
information concerning a quality, characteristic,
function, ingredient, attribute or feature of the
product or service in connection with which it is used,
or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary,
in order to find that a mark is merely descriptive,
Serial No. 75690413
6
that the mark describe each feature of the goods or
services, only that it describe a single, significant
quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is
well-established that the determination of mere
descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context
in which the mark is used, and the impact that it is
likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
In addition to the dictionary definitions herein,
applicant’s specimens of use consist of an excerpt from
his website and a copy of a press release. The website
excerpt includes the following statements:
For the first time in history, human
opponents challenge computer-controlled
robots in physical combat.

Main Event: One qualifying combat round.

The press release includes the following statements:
For the first time in history, a human
opponent will fight a computer-controlled
robot in no-holds-barred physical combat.
. . .
The intimidating “Robot Fighter™” punches
with the strength of a trained boxer, stands
9 feet tall and weighs 1,000 pounds. To
maximize the fights intensity, the robot is
also equipped with two computer-guided
tentacles tipped with 600,000-volt police
stun guns.
. . .
Serial No. 75690413
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The robot wins by incapacitating the human
through electric shock or physical blows or
by forcing the human to retreat from the
ring.
Reviewing this evidence, it is clear that the
identified entertainment services involve public fights
between two fighters consisting of a robot and a human.
It is equally clear that the term “gladiator” merely
describes the robot that is programmed, i.e.,
“trained,” to, and engages in, the fight. There is
absolutely nothing incongruous with the use of the term
“gladiator” in the context of applicant’s identified
services.
When applied to applicant’s services, the term
ROBOT GLADIATORS immediately describes, without
conjecture or speculation, a significant feature or
function of applicant’s services, namely, that
applicant’s publicly displayed events involve a robot
that is trained, or programmed, to fight. Nothing
requires the exercise of imagination, cogitation,
mental processing or gathering of further information
in order for purchasers of and prospective customers
for applicant’s services to readily perceive the merely
descriptive significance of the term ROBOT GLADIATORS
as it pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of
the Act is affirmed.
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