Nortech Investments Ltd.

Trademark Trial and Appeal Board

May 28, 2013

No. 85081623 (T.T.A.B. May. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Nortech Investments Ltd.
_____

Serial No. 85081623
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Steven A. Gibson of Dickinson Wright PLLC for Nortech Investments Ltd.

Linda Lavache, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow,
Managing Attorney).
_____

Before Quinn, Ritchie and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Nortech Investments Ltd. (“applicant”) seeks registration of the mark
PACHINKO.COM, in standard characters, for “providing an on-line computer
database in the field of gaming, athletic competition and entertainment
information.”1 The examining attorney refused registration on the ground that
applicant’s mark is generic for the identified services under Section 2(e)(1), and,
alternatively, that the mark is merely descriptive of the identified services and has

1 Application Serial No. 85081623, filed July 9, 2010 based on alleged first use dates of
November 1, 2000 and a claim of acquired distinctiveness under Section 2(f) of the Act. The
application includes applicant’s claim of ownership of Supplemental Register Registration
No. 2523589 for the identical mark for identical services (issued December 25, 2001 from an
application filed August 18, 1999).
Serial No. 85081623
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not acquired distinctiveness. After the refusal became final, applicant appealed and
requested reconsideration. The examining attorney denied the request for
reconsideration in a “subsequent final office action” which introduced additional
evidence, and agreed that applicant could file a new request for reconsideration to
address the additional evidence. Applicant then filed a request for remand which
itself included additional argument and evidence. Ultimately, the examining
attorney maintained the final refusal on the same grounds, i.e. that applicant’s
mark is generic and alternatively is merely descriptive and has not acquired
distinctiveness. The appeal then resumed. Applicant and the examining attorney
filed briefs. We affirm the refusal to register on both alternative grounds.
Genericness
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source of the goods or services.”
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2011) (citations omitted). The ultimate test for determining whether a term is
generic is the primary significance of the term to the relevant public. See Section
14(3) of the Act. See also, In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991). The examining attorney bears the burden of
making a “strong” showing, with “clear evidence,” that applicant’s mark is generic.
In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
Serial No. 85081623
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(Fed. Cir. 1987) and In re K-T Zoe Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787,
1788 (Fed. Cir. 1994). “[D]oubt on the issue of genericness is resolved in favor of the
applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
We must make a two-step inquiry to determine whether PACHINKO.COM is
generic: First, what is the genus (category or class) of goods or services at issue?
Second, is the term sought to be registered understood by the relevant public
primarily to refer to that genus of goods or services? H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986).
In this case, both applicant and the examining attorney appear to agree that
the genus of services is coextensive with applicant’s identification of services, i.e.,
“providing an on-line computer database in the field of gaming, athletic competition
and entertainment information.” Under the circumstances, we find that this is an
appropriate genus in this case.
It does not escape notice, however, that applicant’s specimen of use
establishes that applicant’s “on-line computer database” accessible at
“pachinko.com,” which is simultaneously applicant’s Internet domain name and
involved mark, provides information about pachinko. In fact, applicant’s website
includes a page which under the heading “Pachinko” states: “The pinball-like game
of Pachinko is extremely popular in Japan and can be found in many American
casinos … In the 1980’s pachinko machines became computerized and now have
sounds and graphics that make the game more exciting … To initiate play you
Serial No. 85081623
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insert money to purchase a number of balls that are dropped into a loading area ….”
In other words, applicant uses PACHINKO.COM for a database in the fields of
gaming and entertainment information, but, more specifically, for information or a
“database” about pachinko.
We need not and in this case cannot ignore this “reality of use” revealed by
applicant’s specimen. In re Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1654
(TTAB 2005), aff’d, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); DNI Holdings,
77 USPQ2d at 1437-38;2 see also, In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1422 (Fed. Cir. 2005); In re A La Vieille Russie Inc., 60 USPQ2d
1895, 1897 & n. 3 (TTAB 2001) (“The evidence shows that ‘Russian art’ is a distinct
genre or type of art for which there is a defined commercial market, and that
applicant, and others, are known and referred to generically as dealers in Russian
art. Therefore, we find that the genus of services involved in this case is ‘art
dealership services in the field of Russian art,’ rather than merely ‘art dealership
services’ or, as applicant has argued, merely ‘dealership services.’”). The “reality” in
this case, as made clear by the evidence of record, is that applicant offers an online
computer database in the field of pachinko, rather than an online computer
database in the field of gaming or entertainment information which has nothing to
do with pachinko.

2 DNI Holdings involved an application for registration of “sportsbetting.com” for
“Provision of casino games on and through a global computer network wherein there are no
actual monetary wagers ….” DNI Holdings, the applicant in that case, acquired the there-
involved application from the applicant in this case. DNI Holdings, 77 USPQ2d at 1436 n.
1.
Serial No. 85081623
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In any event, the genus upon which the examining attorney and applicant
agree, and which is set forth in applicant’s identification of services, encompasses a
database in the field of pachinko. Indeed, the examining attorney has submitted
dictionary definitions of “gaming,” which is defined as “gambling, especially casino
gambling,”3 and “the activity of playing computer games.”4 Office Action April 28,
2012 Attachment 2. See DNI Holdings, 77 USPQ2d at 1438 (“Applicant’s recitation
of services includes the providing of a website ‘featuring information in the fields of
gaming, athletic competition and entertainment.’ That is, even if for purposes of
this inquiry, we were to ignore applicant’s clear offering on its website of ‘sports
betting services,’ we nonetheless find that the class or category of services described
in the application still clearly includes that of providing information regarding
sports and betting.”). As the examining attorney points out, where, as here, an
applicant’s broad identification of services encompasses a narrower category of
services which applicant in fact offers, in this case information about pachinko, the
mark may be found generic. In re Greenliant Systems, Ltd., 97 USPQ2d 1078, 1082
(TTAB 2010); In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019, 2024-25 (TTAB
2010); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1790 (TTAB 2002).
Turning next to the second part of the genericness inquiry, applicant argues
that the relevant public is “the class of consumers seeking ‘databases’ consisting of
information related to ‘gaming, athletic competition and entertainment,’”

3 http://education.yahoo.com/reference/dictionary/entry/gaming
4 http://macmillandictionary.com/dictionary/american/gaming

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Applicant’s Appeal Brief at 7, and the examining attorney does not disagree.
Neither do we.
Evidence of this relevant public’s understanding of the term may be obtained
from any competent source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). “[E]vidence of competitors’
use of particular words as the name of their goods or services is, of course,
persuasive evidence that those words would be perceived by purchasers as a generic
designation for the goods and services.” Continental Airlines, Inc. v. United Air
Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
Here, the examining attorney relies on dictionary definitions of the involved
mark’s constituent terms. Specifically, “pachinko” is defined as “a Japanese
gambling game played on a vertical pinball machine,”5 and “a Japanese game
similar to pinball.”6 Office Action April 28, 2012 Attachment 1. The term “.com” is
defined as “part of the Internet address of many companies and organizations. It
indicates that the site is commercial, as opposed to educational or governmental.”7
Id. Attachment 3.
Based on these dictionary definitions, both individual components of the
involved mark retain their generic meanings, because “pachinko” is a type of

5 http://education.yahoo.com/reference/dictionary/entry/pachinko
6 http://www.collinsdictionary.com/dictionary/english/pachinko
7 http://dictionary.reference.com/browse/.com?r=66. We have not considered another
definition of the term which appears to be from a British dictionary, but that definition is
nevertheless quite similar.
Serial No. 85081623
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gaming and entertainment, as applicant’s own specimen (and other evidence of
record) makes clear, and because “.com” is, at least in this case, a generic
abbreviation designating a commercial organization in internet addresses. See In re
1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009).
In fact, it is settled that except in rare circumstances not present here, the term
“.com” does not have source-identifying significance. See e.g., In re Hotels.com LP,
87 USPQ2d 1100, 1105 (TTAB 2008), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed.
Cir. 2009) (“The term HOTELS.COM is no more registrable than the generic word
‘hotels,’ alone.”); Reed Elsevier, 77 USPQ2d at 1649; In re CyberFinancial.Net, 65
USPQ2d at 1791; In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002).
The issue, is not, however, whether the constituent terms are generic, but
rather whether the compound term PACHINKO.COM as a whole is generic. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).
We have no doubt that it is, and that the combination of PACHINKO with .COM
does not create any meaning other than a database, in the form of a website, about
a type of gaming and entertainment, i.e. pachinko. Here, as in DNI Holdings, “the
combined term is not greater than the sum of its parts.” DNI Holdings, 77 USPQ2d
at 1439.
In fact, the examining attorney has introduced evidence that a number of
third parties use forms of “pachinko.com” as domain names and service marks. For
example:
• a “hotfrog.com” Internet search revealed that “slot-
pachinko.com” is a business which refurbishes and
Serial No. 85081623
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distributes “pachinko pinball machines;” Office Action of
Dec. 10, 2010;

• “japanesepachinko.com” indicates that pachinko “is a
combination between slot machine and pinball” and
provides links to online casinos; id.;

• “online-pachinko.com” indicates that “Playtech
gaming software are soon to launched (sic) the first ever
real money online pachinko game!!” and links to online
casinos; id.;

• “pachi-pachinko.com” states “Everyone wants to play
pachinko slots and anyone can do it” and links to online
casinos; id.;

• “top-pachinko.com” claims to be “an online guide to
the extremely popular game in Japan, which combines an
exciting ball action of pinball machines with a gambling
thrill offered by slot machines” and links to casinos; Office
Action of April 28, 2012;

• “webpachinko.com” links to casinos and “Pachinko
Japan.” id.;

• applicant’s Google search reveals that
“vintagepachinko.com” claims to “sell original engraved
Japanese pachinko balls, pachinko manuals and much
more;” Applicant’s Request for Remand Oct. 30, 2012 Ex.
7; and

• applicant’s Google search reveals that
“japanpachinko.com” offers the opportunity to “[p]lay
online slots for money at the most reputed sites ….” Id.

This is exactly the type of evidence which has been found to support a finding of
genericness in cases such as this. See e.g., 1800Mattress.com, 586 F.3d at 1359, 92
USPQ2d at 1684 (“The Board then considered the mark as a whole and determined
that the combination added no new meaning, relying on the prevalence of the term
‘mattress.com’ in the website addresses of several online mattress retailers that
Serial No. 85081623
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provide the same services as Dial-A-Mattress. Such reliance is permissible to
illuminate what services the relevant public would understand a website operating
under the term ‘mattress.com’ to provide.”); Reed Elsevier, 482 F.3d at 1376, 82
USPQ2d at 1378; Hotels.com, 573 F.3d at 1300, 91 USPQ2d at 1535-36.8
Applicant’s arguments notwithstanding, its ownership of Supplemental
Register Registration No. 2523589 for the identical mark for the identical services is
not relevant to the question of genericness, because a registration on the
Supplemental Register “is not evidence of ownership, validity, or the exclusive right
to use.” Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255 (TTAB
2012) (quoting In re Bush Bros. & Co., 884 F.2d 569, 12 USPQ2d 1058, 1059 n. 2
(Fed. Cir. 1989)). The Supplemental Register registration is in fact “not prima facie
evidence of anything except that the registration issued.” Copperweld Corp. v.
Arcair Co., 200 USPQ 470, 474 (TTAB 1978). And applicant’s reliance on the fact
that PET-SOURCE.COM, GOBOATING.COM and GREYHOUNDRACING.COM
registered for services similar or identical to applicant’s services in this case is
misplaced. As the examining attorney points out, “[t]he Board must decide each
case on its own merits” and “the PTO’s allowance of such prior registrations does
not bind the Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 57

8 While applicant’s identification of services also includes providing an online database in
the field of athletic competition, applicant’s mark must be found generic if it is generic for
any of the identified services. In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB
1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
Serial No. 85081623
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USPQ2d 1564, 1566 (Fed. Cir. 2001); see also, In re Boulevard Entertainment Inc.,
334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003).9
In short, there is no doubt based on a review of all evidence of record that
PACHINKO.COM is understood by the relevant public to refer to providing an
online computer database in the fields of gaming and entertainment information,
and, more specifically, pachinko. Moreover, as shown by the evidence, others have a
competitive need to use the term. In re Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056 (Fed. Cir. 1999). Therefore, PACHINKO.COM is generic and
incapable of functioning as a mark.
Acquired Distinctiveness
Because applicant seeks registration under Section 2(f) of the Act, it has
conceded that the mark is merely descriptive. The Cold War Museum, Inc. v. Cold
War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009);
Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988); In re Leatherman Tool Group, Inc., 32 USPQ2d 1443
(TTAB 1994). Moreover, the evidence of record makes abundantly clear that the
mark is not only merely descriptive, but significantly so.
Applicant bears the burden of establishing acquired distinctiveness. In re
Steelbuilding.com, 415 F.3d at 1293, 75 USPQ2d at 1424; Yamaha International,
840 F.2d at 1572, 6 USPQ2d at 1006-07. Furthermore, it is settled that “the
applicant’s burden of showing acquired distinctiveness increases with the level of

9 The Office strives for as much consistency as possible, however.
Serial No. 85081623
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descriptiveness; a more descriptive term requires more evidence of secondary
meaning.” In re Steelbuilding, 415 F.3d at 1293, 75 USPQ2d at 1424 (citing In re
Bongrain Intern. (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990)).
Here, for the reasons set forth above, we find that applicant’s mark is highly
descriptive, and therefore applicant’s burden is “concomitantly high.” Id. In
determining whether applicant has met its burden, “the Board may examine
copying, advertising expenditures, sales success, length and exclusivity of use,
unsolicited media coverage, and consumer studies (linking the name to a source),”
though “no single factor is determinative.” Id.
Applicant has not met its burden. Applicant’s Vice President, Gerencio
Masula, in a declaration submitted as Exhibit 7 to applicant’s Request for Remand
(“Masula Dec.”), testifies that during 2011 “pachinko.com” received “approximately”
1,334 unique visitors, and during 2012 received “approximately” 1,337 unique
visitors. Masula Dec. ¶¶ 3. Furthermore, these numbers are “representative of the
approximate number of Unique Visitors received on a yearly basis since the mark
PACHINKO.COM was first used in commerce on November 1, 2000.” Id. ¶ 5.
These numbers are underwhelming, especially in the absence of any evidence of
applicant’s advertising expenditures, unsolicited media coverage or other types of
evidence which would establish acquired distinctiveness.
Perhaps more importantly, the evidence of use of forms of “pachinko.com” by
several third parties establishes that applicant’s mark has not acquired
distinctiveness. To the contrary, this evidence establishes that applicant’s use of
Serial No. 85081623
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PACHINKO.COM is anything but “exclusive.” Levi Strauss & Co. v. Genesco, Inc.,
742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows
that purchasers are confronted with more than one (let alone numerous)
independent users of a term or device, an application for registration under Section
2(f) cannot be successful, for distinctiveness on which purchasers may rely is
lacking under such circumstances.”); see also, Racine Industries Inc. v. Bane-Clene
Corp., 35 USPQ2d 1832, 1840 (TTAB 1994).
Applicant’s reliance on its continuous use of the mark for well over five years
is misplaced in this case. In fact, PACHINKO.COM is so highly descriptive, and so
extensively used by third parties, that applicant’s use of its mark for 13 years is
insufficient to establish acquired distinctiveness. Yamaha, 840 F.2d at 1576, 6
USPQ2d at 1008; In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1286 (TTAB
2000) (while Board may consider evidence of continuous use for more than five
years, “the language of the statute is permissive, and the weight to be accorded this
kind of evidence depends on the facts and circumstances of the particular case”).
For all of these reasons, even if PACHINKO.COM is ultimately found to not
be generic, applicant’s evidence of acquired distinctiveness falls far short of meeting
applicant’s burden of proof. Applicant’s request to again remand this case to the
examining attorney to allow applicant to introduce additional evidence of acquired
distinctiveness is denied. See e.g., Trademark Rule 2.142(g); TBMP § 1205.01 (3d
ed. rev. 2012) (Board has the discretion to deny a request for remand, including
when it “would serve no useful purpose”).
Serial No. 85081623
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Conclusion
Applicant’s mark is generic in connection with and incapable of
distinguishing the identified services. If the mark is found not to be generic,
applicant has failed to establish that it has acquired distinctiveness.
Decision: The refusal to register is affirmed.