Motion Fitness

Trademark Trial and Appeal Board

Nov 19, 2013

No. 85627683 (T.T.A.B. Nov. 19, 2013)

Mailed:
Nov. 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Motion Fitness
________

Serial No. 85627683
_______

Matthew H. Swyers of The Swyers Law Firm PLLC for Motion
Fitness.

Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law
Office 111 (Robert L. Lorenzo, Managing Attorney).
_______

Before Grendel, Kuhlke and Adlin, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Motion Fitness (“applicant”) seeks registration on the
Principal Register of the mark ACTIVE GAMING (in standard
character form) for Class 41 services identified in the
application as “educational services, namely, conducting
programs in the field of health and fitness.”1

1 Application Serial No. 85627683, filed on May 16, 2012. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). October 8, 2008 is alleged in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85627683
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that it
is merely descriptive of the services identified in the
application. See Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1).
Applicant has appealed the final refusal.
After careful consideration of all of the evidence of
record and the arguments of counsel, we AFFIRM the Section
2(e)(1) refusal.
Trademark Act Section 2(e)(1) prohibits registration
on the Principal Register of a mark which “when used on or
in connection with the goods [and/or services] of the
applicant is merely descriptive or deceptively
misdescriptive of them....”
A term is considered to be merely descriptive if it
immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services with
which it is used. See In re Chamber of Commerce of the
United States of America, 675 F.3d 1297, 102 USPQ2d 1217
(Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828 (Fed. Cir. 2007); In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). “On the other

the application to be the date of first use of the mark and first
use of the mark in commerce.
Ser. No. 85627683
3
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, 497 (TTAB 1978);
see also In re Shutts, 217 USPQ 363 (TTAB 1983).
To recount, applicant seeks to register the mark
ACTIVE GAMING for “educational services, namely, conducting
programs in the field of health and fitness.”
The record establishes that “active” is defined, inter
alia, as “being in physical motion,” and “involving or
requiring physical exertion and energy: an active workout
at the gym.”2
The record also establishes that “gaming” is defined,
inter alia, as “the playing of games, especially video
games.”3
Based on these dictionary definitions, we find that
the words “active” and “gaming,” when considered separately
and when combined into the term “active gaming,” directly
and immediately describe a key feature, function and/or

2 http://education.yahoo.com/reference/dictionary/entry/active.
(Sept. 6, 2012 Office action.)

3 http://education.yahoo.com/reference/dictionary/entry/gaming.
(Sept. 6, 2012 Office action.)
Ser. No. 85627683
4
purpose of applicant’s services, in which participants
combine video gaming and physical activity.
In this regard as to the nature of applicant’s
services, Exh. A to applicant’s March 5, 2013 response to
Office action is the affidavit of applicant’s president,
Edwin Kasanders. At paragraph 2 of the affidavit, Mr.
Kasanders describes applicant’s services as follows: “Our
mark ACTIVE GAMING is used exclusively in connection with
educational services that create programs in the field of
health and fitness, namely physical activity based gaming.
Users are able to engage in the technology games they enjoy
while being physically active.”
Similarly, Exh. 4 to Mr. Kasanders’ affidavit is a
printout of pages from applicant’s website. Text from the
webpages includes the following: “What is Active Gaming?
Active Gaming, also known as ‘Exergaming,’ combines the use
of technology in the form of a game with physical activity.
Children are able to engage in the technology games they
enjoy, such as video games, while being physically active.”
Moreover, these excerpts from applicant’s website
show that applicant itself uses “active gaming” in what
clearly is a merely descriptive manner. For example, one
page states: “There are three generic categories of active
games: Exergames/Active Gaming, Interactive Fitness
Ser. No. 85627683
5
Activities, and Active Learning Games.” Thus, applicant
uses “Active Gaming” as a descriptive term for a category
of “active games,” along with the equally descriptive or
generic terms “Interactive Fitness Activities” and “Active
Learning Games.”
Similarly, one of the webpages includes the following
text under the heading “Our Concept”: “We help bring the
pieces of active gaming together for our customers. … Our
experience in the active gaming market, design,
manufacturing and distribution allow us a view into these
products and services.” (Emphasis added.) This same page
also includes the text: “The active gaming products we
design and deliver must fit into what we call our
‘Interactive Fitness and Engagement Guidelines.’”
(Emphasis added.)
We find that this evidence of applicant’s own usage of
“active gaming” in a merely descriptive manner is
persuasive evidence of mere descriptiveness. See In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.
Cir. 1987); In re Phoseon Tech. Inc., 103 USPQ2d 1822, 1825
(TTAB 2012); In re Personal Counselors, Inc., 184 USPQ 761
(TTAB 1974).
Applicant argues:
Ser. No. 85627683
6
The Applicant contends that the usage as described
by the Examining Attorney is not representative of
the complete manner in which the applicant intends
to use its mark. The examining attorney misreads
and takes too narrow a view as to the subject matter
and scope of the Applicant’s activities. The
description of the mark’s services per the subject
Application is as follows: “educational services,
namely, conducting programs in the field of health
and fitness.” The Applicant’s ACTIVE GAMING mark is
not merely a reference to actively playing video
games as the Examiner suggests.

(Applicant’s Brief at 6.)
It is settled, however, that it is not necessary that
the term in question describe all of the purposes,
functions, characteristics or features of the goods or
services to be deemed merely descriptive; it is enough if
the term describes one significant function, attribute, or
property. See In re Chamber of Commerce, supra, 102 USPQ2d
at 1219; In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d
1087, 1089 (Fed. Cir. 2005); In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). Thus,
even if applicant’s educational services might include
elements other than “active gaming,” the term nonetheless
is merely descriptive of this key feature of applicant’s
services. The mark therefore is merely descriptive of
applicant’s services for purposes of Section 2(e)(1).
Applicant also argues:
In the instance of ACTIVE GAMING, the consumer would
require a degree of imagination to draw a connection
Ser. No. 85627683
7
of the term ACTIVE GAMING with Applicant’s services
by virtue of the fact that the term ACTIVE GAMING
does not immediately conjure a universal assumption
of ‘educational fitness services.’ Some degree of
imagination is required to equate the term ACTIVE
GAMING with the Applicant’s services.

(Applicant’s Brief at 6-7.) Similarly, applicant argues:
“… the relevant consuming public would not form an
immediate impression of the features, functions, qualities
or characteristics of the goods [sic – services] offered by
Applicant by mere sight of the mark.” (Id.)
It is settled, however, that the determination of
whether a term is merely descriptive must be made in
relation to the goods or services for which registration is
sought, not in the abstract. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re
Finisar Corp., 78 USPQ2d 1618, 1620 (TTAB 2006). Thus,
“[t]he question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them.” DuoProSS Meditech Corp. v. Inviro
Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012), quoting from In re Tower Tech Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002). We find that consumers
who are familiar with the nature of applicant’s services
Ser. No. 85627683
8
would immediately understand the merely descriptive
significance of the designation ACTIVE GAMING in relation
to those services.
In summary, we find that applicant’s mark ACTIVE
GAMING is merely descriptive of applicant’s services
identified as “educational services, namely conducting
programs in the field of health and fitness.” We have
considered all of applicant’s arguments to the contrary,
including any not specifically discussed in this opinion,
but we are not persuaded by them.

Decision: The Section 2(e)(1) refusal of registration
is AFFIRMED.