Hollywood Stock Exchange, LLC

Trademark Trial and Appeal Board

Jan 9, 2015

No. 85775831 (T.T.A.B. Jan. 9, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hollywood Stock Exchange, LLC
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Serial No. 85775831
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Jason M. Vogel and Jill K. Tomlinson of Kilpatrick Townsend & Stockton, LLP,
for Hollywood Stock Exchange, LLC.
Allison P. Schrody, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Kuhlke, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Hollywood Stock Exchange, LLC (“Applicant”) seeks registration on the
Principal Register of the mark BOLLYWOOD STOCK EXCHANGE (in standard
characters) for
Entertainment services, namely, providing on-line
computer games; providing online computer games in the
nature of a simulated securities exchange game; providing
an online prediction market game for trading virtual
entertainment securities; providing entertainment
information via a website; providing information, news
and commentary in the field of entertainment; providing a
website featuring entertainment information in the fields
of games, television, movies, celebrities, comedy, drama,
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sports, music, fashion, and culture; entertainment
services, namely, arranging, organizing and conducting
competitions for leagues, fantasy leagues, and
tournaments in the field of simulated predictive markets
and entertainment trivia; arranging and conducting
online contests and sweepstakes in International Class
41.1
Applicant disclaimed the exclusive right to use the term “Stock Exchange.”
Applicant also claimed ownership of the following registrations:
1. Registration No. 2094329 for the mark HOLLYWOOD STOCK EXCHANGE
for “education and entertainment services in the nature of a simulated securities
exchange game accessible through a global computer information network for the
transfer and dissemination of a wide range of information,” in Class 41.2 Applicant
disclaimed the exclusive right to use the term “Stock Exchange”;
2. Registration No. 3912382 for the mark TELEVISION STOCK EXCHANGE
for, inter alia, “entertainment services, namely, providing an on-line computer
game, namely, a simulated securities exchange game; providing a website featuring
news and information in the fields of entertainment, sports, music, television,
movies, celebrities, culture, fashion, finance, politics, and general interest topics,” in
Class 41;3 and
3. Registration No. 4280084 for the mark HOLLYWOOD MOVIE EXCHANGE
for “education and entertainment services in the nature of a simulated securities

1 Application Serial No. 85775831 was filed on November 9, 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 Issued September 9, 1997; renewed.
3 Issued January 25, 2011.
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exchange game; providing online computer games in the nature of a simulated
securities exchange game, in Class 41.4 Applicant disclaimed the exclusive right to
use “Movie” or “Exchange.”
In addition, Applicant owns the following registrations:5
4. Registration No. 2317122 for the mark MUSIC STOCK EXCHANGE for
“education and entertainment services in the nature of a simulated securities
exchange game accessible through a global computer information network for the
transfer and dissemination of a wide range of information,” in Class 41.6 Applicant
disclaimed the exclusive right to use the term “Stock Exchange”; and
5. Registration No. 3151215 for the mark SPORTS STOCK EXCHANGE for
education and entertainment services in the nature of a simulated securities
exchange game accessible through a global computer information network for the
transfer and dissemination of a wide range of information,” in Class 41.7 Applicant
disclaimed the exclusive right to use the term “Stock Exchange.”
The Trademark Examining Attorney has refused registration of 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 BOLLYWOOD STOCK EXCHANGE is merely
descriptive because “applicant’s entertainment services pertain to an online
simulated securities-exchange game where virtual entertainment securities of

4 Issued January 22, 2013.
5 September 16, 2013 response to Office Action.
6 Issued February 8, 2000; renewed.
7 Issued October 3, 2006; Section 8 affidavit accepted.
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Bollywood films and Bollywood actors are exchanged”8 and, therefore, directly
describes the subject matter of the game.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We reverse the refusal to register.
A term is merely descriptive of goods or services within the meaning of Section
2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012). See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark or a component of a mark is merely descriptive is determined in
relation to the goods or services 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). A term need not immediately convey an idea
of each and every specific feature of the goods or services in order to be considered
merely descriptive; it is enough if it describes one significant attribute, function or
property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This
requires consideration of the context in which the mark is used or intended to be
used in connection with those goods or services, and the possible significance that

8 Trademark Examining Attorney’s Brief, p. 2 (unnumbered).
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the mark would have to the average purchaser of the goods or services in the
marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007);
In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ
285 (TTAB 1985). The question is not whether someone presented only with the
mark could guess the products or activities listed in the description of goods or
services. Rather, the question is whether someone who knows what the products or
services 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).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
538, 543 (1920). See also In re Tower Tech, Inc., 64 USPQ2d at 1318
(SMARTTOWER merely descriptive of commercial and industrial cooling towers);
In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
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descriptive of computer programs for use in developing and deploying application
programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of news and information services in the
food processing industry). However, a mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a unique, non-descriptive meaning, or if the composite has a bizarre or
incongruous meaning as applied to the goods or services. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery
products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow
removal hand tool having a handle with a snow-removing head at one end, the head
being of solid uninterrupted construction without prongs”). Thus, we must consider
the issue of descriptiveness by looking at the mark in its entirety.
“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
term indicates, the term is suggestive rather than merely descriptive.” In re Tennis
in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217
USPQ at 364-65; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB
1980). In this regard, “incongruity is one of the accepted guideposts in the evolved
set of legal principles for discriminating the suggestive from the descriptive mark.”
In re Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ
at 498 (the association of applicant’s mark TENNIS IN THE ROUND with the
phrase “theater-in-the-round” creates an incongruity because applicant’s services do
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not involve a tennis court in the middle of an auditorium). On the spectrum of
distinctiveness, the dividing line between merely descriptive and suggestive is a
fine one. In re Gyulay, 3 USPQ2d at 1010. See also In re Recovery, Inc., 196 USPQ
830, 831 (TTAB 1977).
“Bollywood is the informal term popularly used for the Hindi-language film
industry based in Mumbai (formerly known as Bombay), Maharashtra, India. …
Bollywood is the largest film producer in India and one of the largest centres of film
production in the world.”9 “Bollywood is the India’s [sic] version of California’s
Hollywood.”10
A “stock exchange” is “[a] place where stocks, bonds, or other securities are
bought and sold.”11
In response to the Examining Attorney’s request for information regarding
Applicant’s services, Applicant submitted webpages from its website at hsx.com
describing Applicant’s “comparable services offered under its incontestable
HOLLYWOOD STOCK EXCHANGE trademark (Reg. No. 2,094,329).”12 Applicant
described its comparable HOLLYWOOD STOCK EXCHANGE services as follows:
HOLLYWOOD STOCK EXCHANGE®
Hollywood Stock Exchange® (www.hsx.com) is the world’s
leading entertainment stock market. At HSX.com, visitors

9 Wikipedia attached to the March 15, 2013 Office Action. See also YourDictionary.com
attached to the October 11, 2013 Office Action; the Bollywood entry at
uffilmanalysistwo.pbworks.com, and “A Beginner’s Guide to Bollywood Movies,”
Yahoo!Voices (voices.yahoo.com) attached to the May 15, 2014 Office Action.
10 TotallyBollywood.com attached to the May 15, 2014 Office Action.
11 Yahoo!Education (yahoo.com) attached to the March 15, 2013 Office Action.
12 September 16, 2013 response to Office Action.
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buy and sell virtual shares of celebrities and movies with
currency called the Hollywood Dollar®. The Company’s
Virtual Specialist® technology allows an unlimited
number of consumers to trade thousands of virtual
entertainment securities in a fair and orderly, supply-
and-demand-based market. HSX syndicates the data
collected from the Exchange as market research to
entertainment, consumer product and financial
institutions and as original content to radio, television
and print media.
The Wikipedia entry for “Hollywood Stock Exchange” states that “Hollywood
Stock Exchange … is a web-based, multiplayer game in which players use
simulated money to buy and sell ‘shares’ of actors, directors, upcoming films, and
film-related options.”13
In view of the foregoing, the Examining Attorney contends that when consumers
encounter a service “providing online computer games in the nature of a simulated
securities exchange game; providing an online prediction market game for trading
virtual entertainment securities,” the mark BOLLYWOOD STOCK EXCHANGE
directly informs consumers that the game is based on BOLLYWOOD movies. More
specifically, she argues:
[I]t is clear that consumers will not need to make a
mental leap to understand the key features,
characteristics, or function of the services. Consumers will
immediately surmise that applicant provides a virtual
stock exchange game featuring shares of Bollywood
movies and celebrities, and entertainment information
and competition pertaining thereto.14

13 May 5, 2014 Office Action
14 Trademark Examining Attorney’s Brief, p. 6 (unnumbered).
Serial No. 85775831
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Applicant argues that the mark BOLLYWOOD STOCK EXCHANGE creates a
unitary mark with a unique, incongruous meaning as applied to the services.
Applicant’s BOLLYWOOD STOCK EXCHANGE mark is
a non-literal play on the decades (even centuries)-old well-
known marks such as NEW YORK STOCK EXCHANGE
and LONDON STOCK EXCHANGE. Indeed both
BOLLYWOOD STOCK EXCHANGE and HOLLYWOOD
STOCK EXCHANGE marks quickly call to mind these
earlier venerable institutions, deriving incongruity both
because unlike NEW YORK or LONDON, which are
better known for business and finance, BOLLYWOOD
and HOLLYWOOD are thought of as film epicenters of
their respective regions (Mumbai, India on the one hand
and Los Angeles, California United States on the other
hand) and because the marks are not used for traditional
stock exchange services.15
When viewed in its entirety, we find this mark to be more in line with the
circumstances of TENNIS IN THE ROUND where the mark’s incongruity stemmed
in part from the play on the well-known phrase “theater-in-the-round.” Here, the
term stock exchange as defined and as prominently used in connection with, for
example, the NEW YORK STOCK exchange, is a term connected to financial
institutions. To combine that term of art with the nickname of the Hindu-language
film industry creates an incongruity in that BOLLYWOOD is not in any way
associated with the world of securities exchanges. While the movies and celebrities
that emanate from BOLLYWOOD are the ultimate subject matter of the virtual
securities, this is not an immediate connection when presented with the
incongruous terms of art, BOLLYWOOD and STOCK EXCHANGE. As the Board
has noted, the concept of mere descriptiveness “should not penalize coinage of

15 Applicant’s Brief, p. 5.
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hitherto unused and somewhat incongruous word combinations whose import would
not be grasped without some measure of imagination and ‘mental pause.’” In re
Shutts, 217 USPQ at 364-5. As discussed above, the line between suggestive and
merely descriptive terms is a fine one, and we must resolve any doubt on this
question in favor of Applicant.16 Id.
Decision: The refusal to register Applicant’s mark BOLLYWOOD STOCK
EXCHANGE is reversed.

16 Applicant contends that its previous intent-to-use application (Serial No. 77443442) to
register BOLLYWOOD STOCK EXCHANGE for almost identical services was passed to
publication and issued a notice of allowance.16 According to Applicant, “[t]he Examining
Attorney has not argued and has provided no evidence that Applicant’s BOLLYWOOD
STOCK EXCHANGE mark has lost its distinctiveness since the 2008 Applicant was
approved or allowed by the USPTO,” and that this prior application is “probative of the
mark’s distinctiveness.”16 However, a pending application is competent to prove only that
an application was filed. See In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699
(TTAB 1992) (“The drawings from the third-party applications are evidence of nothing
other than the fact that the applications containing the drawings were filed.”); Olin Corp. v.
Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981) (“Introduction of the record of a
pending application is competent to prove only the filing thereof.”); Merritt Foods Co. v.
Americana Submarine, 209 USPQ 591, 594 (TTAB 1980).