Hollywood Stock Exchange, LLC

Trademark Trial and Appeal Board

Nov 2, 2006

No. 78389911 (T.T.A.B. Nov. 2, 2006)

Mailed
November 2, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hollywood Stock Exchange, LLC
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Serial No. 78389911
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Georges Nahitchevansky of Kilpatrick Stockton LLP for
Hollywood Stock Exchange, LLC.

Henry S. Zak, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On March 24, 2004, Hollywood Stock Exchange, LLC
(applicant) filed an intent-to-use application to register
the mark GAMESTUDIO in standard-character form for services
now identified as “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
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78389911
2
information” in International Class 41.1 The Examining
Attorney has refused registration on the grounds that the
mark merely describes the services under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1). Applicant
argued against the refusal in its response; the Examining
Attorney made the refusal final; and applicant appealed.
Applicant and the Examining Attorney have filed briefs.2 We
reverse.
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. See, e.g., In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant attribute

1 Applicant proposed this amended identification in its request
for reconsideration and the Examining Attorney accepted it in
responding to that request.
2 In its main brief applicant objected to certain evidence the
Examining Attorney attached to his response to applicant’s
request for reconsideration. The Examining Attorney withdrew the
evidence in response to applicant’s objection. Therefore, we
have not considered that evidence in deciding this case. If we
had considered it, we would not decide the case differently.
Ser No. 78389911
3
or function of the goods. See In re H.U.D.D.L.E., 216 USPQ
358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338,
339 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
identified in the application, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
use or intended use. In re Polo International Inc., 51
USPQ2d 1061, 1062 (TTAB 1999); and In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979).
The Examining Attorney argues that, “A term that
identifies the source or provider of a product or service
is merely descriptive under Section 2(e)(1).” (Citations
omitted.) He argues further, “The term applicant seeks to
register, GAMESTUDIO, is not uniquely coined or created by
the applicant, but appears to be commonly used by
organizations who specialize in the creation or marketing
of on line electronic games, regardless of the subject
matter or method of play of such games. The Examining
Attorney has made of record materials clearly showing that
this term, ‘game studio’ is frequently used by third-party
electronic or online game developers and marketers to
identify the entity involved in the creation or marketing
Ser No. 78389911
4
of such electronic games.” The Examining Attorney likens
GAMESTUDIO to terms, such as “men’s store” or “dairy,” and
relies on cases, such as In re Taylor & Francis
[Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB
2000)(PSYCHOLOGY PRESS held merely descriptive for series
of nonfiction books in the field of psychology); In re Polo
Intl. Inc., 51 USPQ2d 1961, 1063 (TTAB 1999)(“Doc-Control”
held merely descriptive for software for document
management); and In re The Phone Co., Inc., 218 USPQ2d
1027, 1028 (TTAB 1983)(THE PHONE COMPANY held merely
descriptive for telephones and related equipment).
Applicant argues that, “the Examining Attorney
contends that the mark describes the applicant.” (Emphasis
in the original.) Applicant states further, “… the
evidence does not in any way demonstrate that ‘Game Studio’
is a common business reference akin to ‘men’s store’ or
‘dairy’… nor does it demonstrate that a company designated
as a ‘game studio’ offers access to players of online
games.” Applicant adds, “There is no reason consumers
would describe Applicant, Applicant’s services or its games
as a ‘game studio’ or believe they came from a ‘game
studio.’” Applicant also points to potential suggestive
meanings of its mark: as a suggestive reference to the
film industry, the focus of its current games; or as a
Ser No. 78389911
5
suggestive reference to the “place” where its virtual,
online games are played. Applicant also argues, “It is
well settled that a mark which has multiple meanings, and
is vague, is suggestive rather than descriptive.” In
support of its position, applicant cites cases, such as, In
re TMS Corporation of the Americas, 200 USPQ 57, 59 (TTAB
1978)(THE MONEY SERVICE held not merely descriptive for
financial services wherein funds are transferred to and
from a savings account from locations remote from the
associated financial institution).
The evidence the Examining Attorney provided indicates
that “game studio” most often refers to a software
development group which specializes in the development of
interactive games. For example, the excerpt from Consumer
Electronics Daily, dated December 9, 2004, discusses a
company called “Climax” and its “game studio” and indicates
the company’s expected involvement with the development of
games for both Xbox2 and Playstation3, competing game
platforms. An excerpt from TheStreet.com, dated May 20,
2005, suggests the structure of the game industry. It
states, “Other publishers have been gobbling up game
studios in an effort to bring more IP in house and lower
licensing and royalty costs. Don’t expect Atari to follow
a similar path in its turnaround plan…”
Ser No. 78389911
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The following statement in an excerpt from The
Hollywood Reporter of May 17, 2005, provides perhaps the
best insight into the role “game studios” play in the
industry: “One big change this year is that two Hollywood
major-studio operators – Warners and the Walt Disney Co. –
are taking more active roles in the creation of video
games. In addition to licensing big movie and TV
properties to publishers, such as Electronic Arts, THG and
Midway Games, Warner Bros. Interactive Entertainment and
Buena Vista Games now own game development studios and are
creating licensed content internally while overseeing the
development of and even distributing and codistributing
other titles… WBIE, which funded and oversaw the
development of ‘The MATRIX Online’ for four years then
bought its game studio Monolith Prods., has an assortment
of big movie properties in development…”3 These excerpts,
and others, suggest that “game studios” typically develop
and license use of game programs, but do not provide games
directly to consumers.
Based on this evidence, it is unclear whether average
purchasers of applicant’s services would perceive

3 This excerpt is one of the longer ones in the record. Many of
the excerpts are short and truncated which makes it difficult to
discern the precise significance of “game studio” as used in the
excerpt.

Ser No. 78389911
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GAMESTUDIO as either a merely descriptive term or as an
entity designation as the Examining Attorney argues. The
record does include some instances of “Game Studio” being
used in conjunction with a group name or possibly as part
of a trade name, for example, “Microsoft Game Studios” or
“Bungie game studios.” However, the evidence fails to
establish that average purchasers of or players of online
games would perceive GAMESTUDIO in the same sense as
potential clothing purchasers would perceive “men’s store”
or potential purchasers of dairy products would perceive
“dairy.”
The example applicant has provided of its use of
GAMESTUDIO casts further doubt on the Examining Attorney’s
argument. The example shows GAMESTUDIO displayed in
stylized form (with the letter “S” suggesting a dollar
sign) serving as a marquee of sorts, and the names of three
individual games appearing immediately below: ON THE
MONEY, MOVIE MOGUL, and BOXOFFICE BATTLE. As used here
GAMESTUDIO does not in any way suggest an entity type.
Furthermore, the use of the mark lends credence to
applicant’s argument that its mark may be perceived as
suggesting an association with the film industry, the focus
of the three games, or even a virtual place or “STUDIO”
where these online games may be played.
Ser No. 78389911
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When we consider the totality of the circumstances and
evidence in this case we conclude that the significance of
GAMESTUDIO in the minds of relevant customers, as applied
to a simulated securities exchange game accessible through
a global computer information network, is not merely
descriptive. We concur with the applicant in concluding
that the significance of GAMESTUDIO in this context is
ambiguous.
This case is more accurately categorized with cases,
such as, In re TMS Corporation of the Americas, 200 USPQ at
59, and the THE MONEY SERVICE mark, than it would be with
cases, such as, In re The Phone Co., Inc., 218 USPQ2d at
1028 and THE PHONE COMPANY mark. In In re The Phone Co.,
Inc., the Board characterized its task as follows, “to
decide that a mark which names the type of commercial
establishment from which particular goods [or services]
come is merely descriptive of those goods [or services].”
In that case the Board concluded that such marks are merely
descriptive and that THE PHONE COMPANY was such a mark.
Id. On this record, we cannot conclude that GAMESTUDIO is
such a mark, nor can we conclude that GAMESTUDIO otherwise
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
services at issue here. In re Gyulay, 3 USPQ2d 1009 at
Ser No. 78389911
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1009. Therefore, we conclude that GAMESTUDIO is not merely
descriptive of the services in this case.
Finally, we recognize that this is a case where some
doubt may exist and, as applicant points out, we resolve
any doubt in a case such as this in favor of applicant. In
re Penwalt Corp., 173 USPQ 317, 319 (TTAB 1972).
Decision: The refusal to register the mark under
Section 2(e)(1) of the Trademark Act is reversed.