Publications International, Ltd.

Trademark Trial and Appeal Board

Apr 3, 2013

No. 85074667 (T.T.A.B. Apr. 3, 2013)

Mailed:
April 3, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Publications International, Ltd.
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Serial No. 85074667
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Jason A. Finestone of Shukat Arrow Hafer Weber & Herbsman,
LLP for Publications International, Ltd.

Michael J. Souders, Trademark Examining Attorney, Law
Office 115 (John Lincoski, Managing Attorney).
_______

Before Taylor, Wellington, and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Publications International, Ltd. (applicant) applied
to register BRAIN GAMES, in standard character form, on the
Principal Register as a mark for “entertainment services,
namely, providing online electronic games; Entertainment
services, namely, providing online video games” in
International Class 41.1 The application is based on
Section 1(b) of the Trademark Act (intent to use in

1 Application Serial No. 85074667 was filed on June 30, 2010.

This Opinion Is Not a
Precedent of the TTAB
Serial No. 85074667
2
commerce). The application also contains a claim that the
mark has acquired distinctiveness under Section 2(f) of the
Trademark Act.
The examining attorney ultimately refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), stating that the proposed mark is “generic and
incapable of serving as a source-identifier for the
identified services.” Office action issued August 19,
2011. The examining attorney alternatively refused
registration finding that applicant has not demonstrated
that the proposed mark has acquired distinctiveness.
Preliminary Issue
Before addressing the merits of the refusal to
registration, we note that applicant takes issue with the
examining attorney’s handling and timing of asserting the
genericness ground. Indeed, applicant dedicates a
substantial portion of its brief arguing the injustice
resulting from the examining attorney initially refusing
registration because the mark is “merely descriptive” and,
only after applicant sought registration under the acquired
distinctiveness provision, did the examining attorney issue
a formal genericness refusal. Applicant asserts that “the
Office’s change of position in this situation is unfairly
detrimental to Applicant, and has resulted in years of work
Serial No. 85074667
3
and money being spent towards accomplishing a goal set by
the Office, then arbitrarily removed.” Brief, p. 3.
We have reviewed the prosecution of the application
and note that the examining attorney’s handling of the
application was in accord with the Trademark Manual of
Examining Procedure (TMEP). In particular, we refer to the
TMEP provisions regarding applications for marks that the
Office believes are generic for the identified goods. See
TMEP Section 1209.02(a) (7th ed. 2010) (“Even if it appears
that the mark is generic, the proper basis for the refusal
is Section 2(e)(1) descriptiveness. If there is strong
evidence that the proposed mark is generic, a statement
that the subject matter appears to be a generic name for
the goods or services should be included in conjunction
with the refusal on the ground that the matter is merely
descriptive.”). See also, TMEP Section 1209.02(a) (“If the
applicant responds to a §2(e)(1) descriptiveness refusal by
amending its application to assert acquired distinctiveness
under §2(f),...the examining attorney must issue a new
nonfinal action refusing registration under §2(e)(1) on the
basis that the mark is generic and stating that the claim
Serial No. 85074667
4
of acquired distinctiveness is insufficient to overcome the
refusal.”)2
Simply put, the examining attorney was procedurally
correct in arguing that the mark was “merely descriptive”
under Section 2(e)(1) when applicant sought registration on
the Principal Register, without recourse to Section 2(f)
acquired distinctiveness; and then arguing that the mark is
generic and thus incapable of distinguishing applicant’s
services once applicant amended the application to seek
registration under Section 2(f). We further note that the
examining attorney advised applicant in the initial Office
action under a bold heading, Advisory: Applied-for Mark is
Possibly Generic, that a Section 2(f) amendment is not
recommended.
We now turn to the merits of the refusal to
registration.
Descriptiveness/Genericness
Inasmuch as applicant is seeking registration under
Section 2(f), there is no issue that its mark is merely
descriptive. The Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed.

2 The referenced edition of the TMEP post-dates the issuance of
first Office action; however, the operative sections of the TMEP
substantively remained the same in both the current and previous
editions, and offer the same instruction.

Serial No. 85074667
5
Cir. 2009) (“where an applicant seeks registration on the
basis of Section 2(f), the mark’s descriptiveness is a
nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”);
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1005 (Fed. Cir. 1988). Rather, the immediate
question is whether the mark BRAIN GAMES is generic.
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by "clear evidence." In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987); see also In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
Under H. Marvin Ginn Corp. v. Int’l Association of
Fire Chiefs, Inc., “[T]he critical issue in genericness
cases is whether members of the relevant public primarily
use or understand the term sought to be protected to refer
to the genus of goods or services in question.” 782 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986). The Federal
Circuit elaborated:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?

Serial No. 85074667
6
Id.

Here, applicant and the examining attorney are in
agreement that the relevant genus of services is that
described in the application’s recitation of services,
namely, online entertainment services in the nature of
electronic games and video games. See applicant’s Brief,
p. 4; examining attorney’s brief, p. 4. We agree and our
genericness analysis is based on such description being the
relevant genus of services.
“Next, we must determine the relevant public for
applicant's goods.” In re Active Ankle Systems Inc., 83
USPQ2d 1532, 1536 (TTAB 2007). In this case, the services
are offered online and the relevant public will be the
general public or, more specifically, the general public
who may seek to play electronic games online. The question
now is whether members of the relevant public would
understand the term BRAIN GAMES to refer to this genus of
services. Marvin Ginn, 228 USPQ at 530. “Evidence of the
public's understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer
surveys, listings in dictionaries, trade journals,
newspapers, and other publications.” In re Merrill Lynch,
Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987).
Serial No. 85074667
7
The record created by the examining attorney in this
case clearly and convincingly shows that the public would
understand BRAIN GAMES to be the name used for a subgenus
or particular type of challenging game for the brain that
may be played online. Specifically, the examining attorney
submitted printouts from various third party websites that
either feature or discuss “brain games” as a means to
improve an individual’s cognitive skills.3 For example:
The Lumosity website (www.lumosity.com) features
“Brain Games...Scientifically Designed...Shown to improve
memory and attention...Detailed feedback and improvement
tracking...Fun and easy: full workout in less than 10
mins/day...Start your training today.”
The Prevention Magazine website (www.prevention.com)
contains a “Brain Games & Training” drop down page. On the
“Brain Games” page, there are various descriptions and
links to play different games such as “Busy Bistro”
intended to “improve your short and long-term memory and
concentration.” Each game link contains a short
description of the cognitive skill being exercised.
The “School Time Games...Wholesome Learning Fun For
Kids” website (www.schooltimegames.com) also features a

3 Attached to Office actions dated July 9, 2010 and January 26,
2011.
Serial No. 85074667
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subcategory of games called “Brain Games” with links to at
least ten games called “Scene Memory,” “Path Memory,”
“Number Memory,” etc.
The Kids AOL website (www.kids.aol.com) also provides
“online games” that are described as “Brain Games.” These
games include various “word search” or “concentration” or
“Nat Geo Kids Geography Games.” The games listed are
clearly for educational purposes for children.
The examining attorney buttressed the third-party
website evidence with article excerpts containing the term
“brain games” used to reference a type of game that may be
played online or as a video game that is geared to
improving the player’s intellect or cerebral skills.4 The
article excerpts include:
Another Tech researcher will study elderly people
playing video games, hoping her work could help create
guidelines for developing other “brain games” for
seniors.
[“Should stimulus pay for studies?”; The Atlanta
Journal-Constitution, February 14, 2010];

and

Following the success of Nintendo’s “Brain Age” title,
which features math and word puzzles several video-
game developers are creating brain games that
challenge players to improve their mental health and
self-esteem with self-evaluation quizzes and positive-
thinking games.
[“And NOW!: The new”; The Columbus Dispatch, February
14, 2007].

4 Attached to Office Action dated March 13, 2012.
Serial No. 85074667
9

In its appeal brief, applicant does not rebut or
otherwise specifically address the aforementioned evidence.
Rather applicant cites to various decisions where a term
was found not to be generic and concludes:
[i]f any member of the relevant public is asked to
which genus the term ‘Brain Games’ may refer, it is
possible that one might hear answers about puzzles
such as crosswords and Sudoku, or possibly tactile or
mechanical puzzles such as the Rubik’s Cube, but there
is nothing about the term that specifically connotes
online electronic or video games, and it is unlikely
that a member of the relevant public would give such
an answer, at least not in the numbers necessary to
deem the genus as the “primary” reference.

Brief, p. 6.
As to applicant’s citation to case law, while helpful
in framing our genericness determination, each proceeding
ultimately must be decided on its own merits and on its
particular record. With regard to applicant’s conclusion
regarding the relevant consumer’s perception or
understanding of “brain games,” the examining attorney’s
submissions clearly show that the term is used generically
to refer to a type of game, such as those described by
applicant above, and these games may be played online
and/or be in the form of video games.
In sum, there is ample evidence of record and the
examining attorney has sufficiently made out a prima facie
case that BRAIN GAMES is generic for the recited services.
Serial No. 85074667
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We have no doubt that consumers, upon viewing “brain games”
in connection with the recited services, will clearly
understand this term as a generic reference to a type of
game designed to exercise or improve the player’s cognitive
skills. The term is incapable of functioning as a
registrable trademark denoting the source of the recited
services.
Acquired Distinctiveness
If a term is generic, no amount of evidence of
acquired distinctiveness can establish that the mark is
registrable. In re Northland Aluminum Products, Inc., 777
F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985). If
applicant’s term is only highly descriptive, and not
generic, we will consider evidence submitted by applicant
to show its mark has acquired distinctiveness. In this
respect, it is applicant who bears the burden of proving
that its mark has acquired distinctiveness. In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha Int’l, 6 USPQ2d at 1008.
Serial No. 85074667
11
With the above in mind, we note that applicant has not
submitted any evidence in support of its claim that BRAIN
GAMES has acquired distinctiveness as a source identifier
for its recited services. Rather, throughout the
prosecution of the application and its acquired
distinctiveness claim, applicant has merely asserted that
its mark “has become distinctive of related goods and/or
services through applicant’s substantially exclusive and
continuous use in commerce for at least the five years
immediately before the date of this statement.” Such
statements from applicant, without any supporting evidence,
are not persuasive.
In view thereof, applicant falls far short of
demonstrating that its mark has acquired distinctiveness,
even if the mark were ultimately determined to be merely
descriptive for the recited services.
Conclusion
Applicant’s term is generic in connection with the
services recited in the application and thus incapable of
distinguishing the services. In the event that the term is
ultimately decided on appeal to not be generic for the
recited services, applicant has not demonstrated that its
mark has acquired distinctiveness.
Decision: The refusal to register is affirmed.