John T. Brenden

Trademark Trial and Appeal Board

Apr 14, 2014

No. 85556821 (T.T.A.B. Apr. 14, 2014)

THIS OPINION IS A NOT
PRECEDENT OF THE TTAB

Mailed: April 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re John T. Brenden
_____

Serial Nos. 85556803; 85556811; 85556821; 855568261
_____

Lauri S. Thompson of Greenberg Traurig LLP for John T. Brenden.

Allison P. Schrody, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_____

Before Kuhlke, Wellington and Hightower, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
On February 29, 2012, applicant, John T. Brenden, filed intent-to-use
applications under Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b), to
register on the Principal Register the mark CINEMA GAMERS in standard
characters for goods and services identified as:
computer application software for mobile phones, portable media
players, and handheld computers, namely software for interfacing
video games with an external display screen; computer software for
playing video games and computer games with others via a global
computer or communication network and for accessing and browsing

1 These appeals have been consolidated upon request by the examining attorney. Board
Order, App. Ser. No. 85556811 (November 21, 2013); and Board Order, App. Ser. No.
85556803 (January 22, 2014). References to the record and briefs are from App. Ser. No.
85556803 unless otherwise noted.
Serial Nos. 85556803, et al.

2

global computer and communication networks; downloadable electronic
game programs; cinematographic apparatus, in International Class 9;2

video game consoles for use with an external display screen or monitor,
in International Class 28;3

movie theaters; providing temporary use of theatrical movie screens for
playing video games; entertainment services, namely, providing on-line
computer games; providing information on-line relating to computer
games and computer enhancements for games, in International Class
41;4 and

computer services, namely, creating an on-line community for
registered users to participate in discussions, get feedback from their
peers, form virtual communities, engage in social networking; hosting
an online community website related to video game play, in
International Class 42.5

Registration has been refused on the ground that CINEMA GAMERS is
merely descriptive of applicant’s goods and services under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1).
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USOQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations
omitted). “A mark is merely descriptive if it ‘consist[s] merely of words descriptive
of the qualities, ingredients or characteristics of’ the goods or services related to the

2 Application Serial No. 85556803.

3 Application Serial No. 85556811.

4 Application Serial No. 85556821.

5 Application Serial No. 85556826.
Serial Nos. 85556803, et al.

3

mark.” 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 MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778,
1780 (Fed. Cir. 2003). The determination of whether a mark is merely descriptive
must be made in relation to the goods or services for which registration is sought.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in
order to find a mark merely descriptive, that the mark describe each feature of the
goods or services, only that it describe a single, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods or services. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); and In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1988). 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. Oppedahl & Larson LLP, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
unique, nondescriptive 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); In re Shutts, 217 USPQ 363 (TTAB 1983).
Serial Nos. 85556803, et al.

4

In addition, a mark that describes an intended user or group of users of a
product or service is merely descriptive. In re Planalytics, Inc., 70 USPQ2d 1453
(TTAB 2004) (GASBUYER merely descriptive of intended user of risk management
services in the field of pricing and purchasing natural gas).
The examining attorney sets forth her position as follows:
Applicant’s mark in this case is a combination of two descriptive terms
that clearly identify the intended group of users of applicant’s goods
and services. The evidence of record shows the wording “cinema game”
or “cinema gaming” has a very particular meaning in the
entertainment and gaming industries, referring to interactive crowd
gaming in movie theatres, or using cinema-type home theater
equipment to play computer games at home … consumers would
immediately understand that applicant’s goods and services are
intended to be used by “cinema gamers,” or individuals who play video
games in cinema theaters or who use cinema-type gaming equipment
to play computer games at home.6

The dictionary definition for CINEMA is “1. A movie; a movie theater; the
movie industry. The term refers to movies shot for theater audiences in contrast to
videos shot with camcorders, still cameras or camera phones”7 and the definition for
GAMER is “someone who plays games, especially computer games or games in
which you pretend to be a character.”8 Based on the dictionary definitions alone,
CINEMA GAMERS immediately describes the intended users and the intended use
for applicant’s goods and services.

6 Ex. Att. Br. p. 5.

7 TheFreeDictionary (http://encyclopedia2.thefreedictionary.com), First Office Action (June
17, 2012).

8 Macmillan Dictionary (www.macmillandictionary.com), First Office Action (June 17,
2012).

Serial Nos. 85556803, et al.

5

Moreover, the record shows use of the phrases “cinema game” and “cinema
gaming” in a descriptive manner in connection with video games played on movie
theater (or cinema) screens. A few examples are set forth below (emphasis added):
A link to a Youtube video with the following description “Human
Joysticks [NewsBreaker Live – interactive cinema game] …
msnbc.com presents the worldwide premiere of interactive crowd
gaming in movie theaters.” www.youtube.com (uploaded May 10,
2007), First Office Action (June 17, 2012);9

A screenshot of Premiere Cinema’s website advertising theater cinema
gaming services : “Premiere Cinema presents Cinema Gaming Play
your favorite Xbox games on the BIG SCREEN … For more
information and details, simply download our Cinema Gaming flier.”
http://www.premierecinemas.net/holliter_gaming.php), Final Office
Action (January 7, 2013); and

A blog discussing the “Shigeru Cinema Gaming Platform” stating
“the idea was to make an easy to use platform to build games on.
Cinema gaming, in this context means games which are played at the
cinema [on] the big screen with hundreds of clients using their mobile
phones to control their avatars.” http://johannesvuorinen.com/porfolio-
item, Final Office Action (January 7, 2013).

The record also includes examples of “cinema gaming” referring to using
cinema-type equipment to play computer games at home as shown below:
An online article titled “Paradigm Cinema Gaming Speaker Systems
Target Double-Duty Living Rooms” discussing Paradigm company’s
introduction of pre-packaged speaker bundles with its “Cinema
Gaming systems.” Stating “gaming consoles play in [sic] increasing
role in [home theater] setups” http://www.engadget.com, First Office
Action (June 17, 2012); and

9 This event is described in the blog ghacks.net as follows, “The title of the video is Human
Joysticks (NewsBreaker Live interactive cinema game) which describes exactly what this is
all about. Take some motion sensing cameras, a breakout video game, a big screen and an
enthusiastic crowd and you are about to witness the funniest breakout game of all times.”
www.ghacks.net, First Office Action (June 17, 2012).

Serial Nos. 85556803, et al.

6

A home theater LCD projector offered for sale online and described as
a “Cinema Gaming Type for [use with] PS2 PS3 Xbox Wii DVD.”
http://astheaterprojectors.info, Final Office Action (January 7, 2013).

Applicant’s argument that this evidence is “of questionable relevancy”
because it shows use of the phrases “cinema game” or “cinema gaming” not “cinema
gamers,”10 is not persuasive. Evidence of use of the specific applied-for phrase is not
necessary for a refusal based on mere descriptiveness. In re Nat’l Shooting Sports
Found., Inc., 219 USPQ2d 1018 (TTAB 1983) (fact that applicant may be the first
and only user of a merely descriptive term does not justify registration if the only
significance conveyed by the term is merely descriptive). The evidence showing use
of the phrases “cinema game” and “cinema gaming” corroborates the dictionary
definition evidence by confirming the existence of this type of gaming (interactive
crowd gaming in movie theaters or using cinema equipment to play computer games
at home) and consumer exposure to and use of the phrase “cinema gaming” to
describe this type of gaming. As established by the dictionary definition, players of
computer games are called “gamers.” This definition is equally applicable to players
of cinema games, a type of video or computer game. Thus, “cinema gamers,” at a
minimum, describes the intended end users of the identified goods and services.
Applicant made of record several third-party registrations that include the
terms “CINEMA” or “GAMERS” as part of the marks and argues that the fact that
these terms have been found to have trademark significance when used for
computer services similar or related to those of [applicant’s] … tends toward the

10 App. Br. p. 5.

Serial Nos. 85556803, et al.

7

conclusion that these terms are not merely descriptive, but rather are suggestive of
[applicant’s] services.”11
Applicant acknowledges that the question of whether a mark is merely
descriptive must be determined based on the evidence of record at the time the
registration is sought and the allowance of prior registrations “does not bind the
Board.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Certainly consistency is important, and to the extent a sustained clear
practice would be revealed by USPTO records, that could provide some context for a
term in a particular industry. This record, however, does not provide such context.
None of the third-party registrations include both terms. Moreover, in several
examples the marks are unitary and would not require a disclaimer. See, e.g., Reg.
No. 3882166 for the mark UFACINEMA; Reg. No. 3298225 for the mark J’AIME LE
CINEMA; Reg. No. 4330125 for the mark GAMER NEXT DOOR; and Reg. No.
3522737 for the mark IT’S A GAMERS LIFE FOR ME. In addition, many are for
different goods or services. See, e.g., Reg. No. 3351591 for the mark CINEMA OF
FEAR for toys, dolls and action figures; Reg. No. 3658952 for the mark BOSS
GAMER for exercise machines; and Reg. No. 4189540 for the mark CARICATURE
CINEMA for drawing and painting portraits for others.
Applicant also asserts that “these terms could be used to identify a multitude
of goods, not just”12 applicant’s goods and services. However, the fact that a term

11 App. Br. p. 5. Applicant also included several “approved” applications; however, third
party applications have no probative value other than that the applications were filed. In
re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009). Nonetheless
even if we consider them for the limited purpose of determining USPTO practice, they do
not change the result.
Serial Nos. 85556803, et al.

8

may have meanings in other contexts does not obviate its mere descriptiveness in
connection with the identified goods and services. In re RiseSmart Inc., 104
UPSPQ2d 1931, 1933 (TTAB 2012). We further note that there is nothing
incongruous about the combination of these terms in applicant’s mark, nor do they
present a double entendre as was found in Colonial Stores, Inc., 157 USPQ at 385
(SUGAR AND SPICE not merely descriptive of bakery products because it brings to
mind the nursery rhyme).
Applicant’s argument that its product is “highly unique” and has not “been
brought to market yet” does not change the analysis. It is well settled that the fact
that applicant may be the first or only producer of such goods and services, and the
first or only one to use the term does not render the phrase incongruous or
distinctive. Phoseon Technology Inc., 103 USPQ2d at 1826. “The fact that
applicant may be the first and/or only entity using the phrase [CINEMA GAMERS]
is not dispositive where, as here, the term unequivocally projects a merely
descriptive connotation. Moreover, it is not necessary that the term be in common
usage in the particular industry before it can be found merely descriptive.” In re
Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (internal citations
omitted).
To the extent the argument is directed to the proposition that because
applicant’s product is a mystery, the examining attorney’s evidence cannot be
probative of the average future consumer’s perception of applicant’s mark used in
connection with its goods and services, this argument also fails. In its responses to

12 App. Br. p. 8.
Serial Nos. 85556803, et al.

9

the refusals in each application applicant provided the following information as to
its goods and services:
Applicant is creating new video game systems, with game console
hardware, video game software, software to allow multiple players to
play together, computer services for a virtual community, and
providing movie theaters for the option of playing the video games
projected onto the theater screens.13

As pointed out by the examining attorney, “[b]y applicant’s own statement, its goods
and services relate to, or are for the purpose of cinema gaming.”14
Applicant argues that his “mark is not merely descriptive of the intended
users, as the intended users of the goods/services are actually the movie theater
owners/operators, and not the individual patrons who may frequent the theaters.”15
Applicant asserts that “the nature of the goods/services identified by the CINEMA
GAMERS mark in each class indicates that it is the theater owners/operators who
are the intended consumers, not the theater patrons.”16 Applicant explains that:
[T]he consumption of these highly specialized and expensive
goods/services is ultimately intended for theater owners/operators who
may be interested in purchasing and/or licensing the goods and
services [applicant] is offering under the CINEMA GAMERS brand.
By nature, the highly sophisticated goods/services offered by Appellant
under the mark are not for the individual patrons of the theaters, but
rather, are for the theater owners/operators who have the facilities,
infrastructure, and specialized equipment to put the [applicant’s]
CINEMA GAMERS brand of goods/services into operation. … By
obtaining these goods, the theater owners/operators will be able to

13 App. Resp., App. Ser. No. 85556826 (December 14, 2012).

14 Ex. Att. Br. p. 8.

15 App. Reply Br. p. 2.

16 Id. p. 3.

Serial Nos. 85556803, et al.

10

implement [applicant’s] new CINEMA GAMERS brand gaming
systems in their theaters. Similarly, [applicant] may license its
CINEMA GAMERS service mark to various theater owners/operators
who have obtained the proper software and equipment to effectively
implement [applicant’s] CINEMA GAMERS brand gaming systems.
As such, [applicant] is developing CINEMA GAMERS branded
products and services to sell and/or license to theater owners/operators
who have the facilities, infrastructure, and specialized equipment to
implement the new gaming system. Therefore, contrary to [the
examining attorney’s] position, [applicant’s] CINEMA GAMERS mark
does not directly identify the intended group of users of [applicant’s]
goods and services.17

The identifications of goods and services are not specifically restricted by
trade channel or class of consumer, nor does the nature of at least some of the goods
and services in each class inherently restrict the class of consumers to theater
owner/operators. In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed
Cir. 2005) (mere descriptiveness need only be found for one of the goods or services
in a particular class). While the cinematographic apparatus may arguably
inherently have a limited consumer base, the software listed in International Class
9 does not. Similarly, applicant’s services “providing on-line computer games … and
information on-line relating to computer games,” as well as, “creating an on-line
community for registered users to participate in discussions, [etc.]” are not limited
to being offered only to theater owners. However, even with such limitations the
phrase CINEMA GAMER remains descriptive of the nature of the goods and
services designed for the ultimate end user, the cinema gamer, to engage in cinema
gaming which, according to applicant, would be offered under license (including the
service marks) by theater owners/operators.

17App. Reply Br. p. 4.

Serial Nos. 85556803, et al.

11

Finally, applicant argues that we should resolve doubt in its favor; however,
we have no doubt that this mark is merely descriptive in connection with the
identified goods and services. In re Finisar Corp., 78 USPQ2d 1618, 1624 (TTAB
2006); In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
Based on this record, CINEMA GAMERS immediately describes a significant
feature of the goods and services, namely that they are for use in connection with
cinema gaming by cinema gamers.
Decision: The refusal to register the mark as merely descriptive of the
identified goods and services under Section 2(e)(1) of the Trademark Act is affirmed.