Livesport s.r.o.

Trademark Trial and Appeal Board

May 18, 2018

No. 87291327 (T.T.A.B. May. 18, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: May 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Livesport s.r.o.
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Serial No. 87291327

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John Alumit of Alumit IP,
for Livesport s.r.o.

Ellen F. Burns, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Ritchie, Hightower, and Heasley,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Livesport s.r.o (“Applicant”) seeks registration on the Principal Register of the
mark SCOREBOARD and design, as shown below, for “computer application software
for mobile phones, namely, software for live sports games coverage, fixtures, results,
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statistics, lineups, standings, brackets and sports live results,” in International Class
91:

The mark contains the following description of the mark: The mark consists of the
wording “SCOREBOARD” in the color white, formed by white balls, with red
background and a white carrier in the form of a rectangle with curved corners. The
color black is not a feature of the mark, and is used only to show the white carrier.
The Trademark Examining Attorney required a disclaimer of the term
“SCOREBOARD” under Section 6(a) of the Trademark Act of 1946, 15 U.S.C.
§ 1056(a), on the ground that the term is merely descriptive of a feature, purpose
and/or intended use of Applicant’s goods under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1).2
When the requirement was made final, Applicant appealed. The appeal is fully
briefed. For the reasons discussed below, the requirement is reversed.

1 Serial No. 87291327 was filed on January 6, 2017, pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Applicant initially submitted a response to Office Action complying with the requirement,
but then, when the application was approved for publication, withdrew its disclaimer, stating
that “it was submitted in error.” The Examining Attorney then issued a Final Office Action
requiring the disclaimer, and this appeal ensued.
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I. Disclaimer Requirement
A term must be disclaimed apart from the mark as shown if it is deemed to be
merely descriptive of the subject goods or services. See In re Grass GmbH, 79 USPQ2d
1600, 1603 (TTAB 2006); TRADEMARK MANUAL OF EXAMINING PROCEDURE
§ 1213.08(b) (TMEP) (Oct. 2017). A term is deemed to be 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 In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987)); see also In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). Whether a term is merely descriptive is determined
not in the abstract, but in relation to the goods or services for which registration is
sought, the context in which it is being used on or in connection with those goods or
services, and the possible significance that the term would have to the average
purchaser of the goods or services because of the manner of its use. That a term may
have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979).
The Examining Attorney argues that the term “SCOREBOARD” is merely
descriptive of Applicant’s goods:
Specifically, the term “scoreboard,” in the context of the provision of
sports information refers to the presentation of game/match
information, such as scheduled events and statistics that may be
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relevant to any particular participant or event, e.g., performance
measures for a specified position on a team collected from past events.3
In this regard, the Examining Attorney submitted evidence that various third
parties use the term “SCOREBOARD” on their websites to provide information about
results, statistics, or standings. Some examples include the following:4

3 6 TTABVUE 6.
4 Attached to April 25, 2017 Office Action, at 7, 8; August 30, 2017 Final Office Action, at 6,
9.
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The Examining Attorney also included Applicant’s own website:5

Applicant points out that the evidence submitted by the Examining Attorney is
all from websites, while the application, by contrast, identifies not a website,6 but

5 Attached to April 25, 2017 Office Action, at 2.
6 Applicant has another pending application that includes website services, Serial No.
87291328. That is not at issue in this appeal.
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rather, “computer application software for mobile phones.” In this regard, the
Examining Attorney argues that although the evidence points to websites, the term
“SCOREBOARD” is descriptive because it “would directly refer to the information
provided by the software.”7 Applicant further argues that the term “SCOREBOARD”
is defined as a physical object, and thus is not something that can be somehow
transposed onto software for mobile phones. Applicant submitted a dictionary
definition:
Scoreboard: a large, usually rectangular board in a ballpark, sports
arena, or the like, that shows the score of a contest and often other
relevant facts and figures, as the count of balls and strikes on a baseball
batter; a board for displaying the score of a game or match.8

Applicant argues that the websites submitted by the Examining Attorney show
electronic renditions of physical scoreboards. While we find that this would not render
the term any less descriptive, simply because the websites depict an electronic
representation of a physical scoreboard, we agree with Applicant that the Examining
Attorney has only provided evidence of websites and not of computer application
software, as identified by Applicant in the present application. Furthermore, the
Examining Attorney has not provided evidence of relatedness between websites and
computer application software such as to make the evidence more relevant to

7 6 TTABVUE 6.
8 Submitted with Applicant’s June 21, 2017 Post-Approval/Publication/Post-Notice of
Allowance Amendment, citing Collins English Dictionary, Complete & Unabridged 10th
Edition. HarperCollins Publishers. 21 Jun 2017. Dictionary.com.
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Applicant’s actual identified goods.9 The burden is on the Examining Attorney, who
did not show the relatedness of computer application software to web services such
as to demonstrate that the web pages in evidence would be relevant.
Applicant also argues that the term “SCOREBOARD” has been registered for
other goods and services without a disclaimer. These include CYBERSCOREBOARD,
(Registration No. 2194533) for “providing sports information by means of on-line
computer services”; SCOREBOARD MONTHLY (Registration No. 3939581) for
“publications, namely magazines in the fields of sports”; SCOREBOARD
(Registration No. 4837067) for “on-line test preparation for college-level tests” and
GREEN TRANSITION SCOREBOARD (Registration No. 3837469) for “tracking and
monitoring the amount of private investment in companies engaged in the
development of environmentally sustainable technologies . . . ”10 We note that these
goods and services are, of course, different than those identified by Applicant.
Furthermore, the USPTO must examine each application on its own merits based on
the record in the application under consideration and neither the USPTO’s examining
attorneys nor the Board are bound by the decisions of other examining attorneys in

9 The brief submitted by the Examining Attorney argues that one of the submitted websites
is “demonstrating online software allowing the user to create their own ‘online scoreboard’
with custom-selected competitions.” 6 TTABVUE 7. The referenced website, however,
specifically mentions that it is not computer application software (“Tired of installing apps?
For this you only need a browser.”). Furthermore, the URL has a foreign top level domain
(.co), calling into question the exposure of United States consumers. See TRADEMARK TRIAL
AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.03 (June 2017).
10 Attached to June 21, 2017 Post-Approval/Publication/Post-Notice of Allowance
Amendment, at 2-5. A fifth registration was shown to be cancelled. Expired or cancelled
registrations are generally considered evidence only that the registration issued. See TBMP
§ 1208.02.
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other applications. See In re Cordua Restaurants, Inc., 823 F.3d 594, 118 USPQ2d
1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark
applications for compliance with each and every eligibility requirement . . . .”); In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
some prior registrations had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”). Accordingly, these registrations are not very availing in our analysis.
Overall, there is insufficient evidence on this record for us to find that the term
“SCOREBOARD” is merely descriptive of a feature, purpose and/or intended use of
“computer application software for mobile phones, namely, software for live sports
games coverage, fixtures, results, statistics, lineups, standings, brackets and sports
live results.” Resolving doubt, as we must, for Applicant in a Section 2(e)(1) refusal,
we reverse.
Decision: The requirement for a disclaimer of “SCOREBOARD” under Section
6(a) of the Trademark Act, 15 U.S.C. § 1056(a), on the ground that the term is merely
descriptive of Applicant’s goods under Section 2(e)(1), 15 U.S.C. § 1052(e)(1), is
reversed.