Sierra Entertain-ment, Inc.

Trademark Trial and Appeal Board

Aug 31, 2004

No. 78101548 (T.T.A.B. Aug. 31, 2004)

Mailed: 8/31/04
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sierra Entertainment, Inc.
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Serial No. 78101548
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Rod A. Rigole of Vivendi Universal Games, Inc. for Sierra
Entertainment, Inc.
Tarah K. Hardy Ludlow, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
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Before Simms, Seeherman and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sierra Entertainment, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
SPECIAL FORCES as a trademark for “computer game software
and instruction manuals sold therewith.”1 Registration has
been refused pursuant to Section 2(e)(1) of the Trademark
1 Application Serial No. 78101548, filed January 8, 2002, and
asserting a bona fide intent to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78101548
2
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
mark is merely descriptive of its identified goods.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
It is the Examining Attorney’s position that the mark
describes a feature of the software, namely, the subject
matter of the game. In support of this position, the
Examining Attorney has provided a definition of “special
forces”: “a division of the U.S. Army composed of soldiers
specially trained in guerrilla fighting.”2
In its appeal brief, applicant points out that there
is no evidence to indicate that the game must consist of
army soldiers trained in guerrilla fighting, since its
application is based on an intent to use the mark, and thus
there are no specimens showing the mark as actually used.
Apparently the Examining Attorney found that the broad
identification of goods provided by applicant, without any
limitation as to the type of computer game, was acceptable.
This broad identification is, as the Examining Attorney
points out, broad enough to include computer games of all
types, including combat games simulating activities of the
U.S. Army special forces. Moreover, applicant has not
2 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 78101548
3
denied that the U.S. Army special forces are a feature of
its computer game.3 Applicant’s arguments against the mere
descriptiveness of its mark actually support the view that
its game does feature the Army special forces, since these
arguments do not assert that the subject matter of the game
is not the special forces. Rather, applicant contends that
the mark is not merely descriptive because it does not
describe all the details of the game, or it argues that
imagination would be required to understand the subject
matter of the game. See, for example:
If one considers the various parameters
extant in a software game of the
complexity of SPECIAL FORCES, the
retail consumer would not make the
immediate connection that the SPECIAL
FORCES mark completely describes the
details of the game offered by the
applicant. It can also be argued that
the term SPECIAL FORCES alone does not
adequately describe the game produced
by the applicant because the mark does
not contain the complete description of
how the game is played and under what
conditions.
Response filed October 16, 2002.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities or characteristics
of the goods with which it is used. In re Gyulay, 820 F.2d
3 Presumably, if applicant did deny that the game was about or
involved characters in the U.S. Army special forces, it would
have faced a refusal on the ground that the mark is deceptively
misdescriptive.
Ser No. 78101548
4
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It does not have to
describe every quality, characteristic, function, attribute
or feature of a product or service. It is sufficient if it
describes a single, significant quality, feature, function,
etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB
1985).
Thus, the fact that the mark SPECIAL FORCES does not
constitute the complete description of how the game is
played and under what conditions is of no moment. It is
sufficient that purchasers seeing the mark in connection
with the goods, computer game software and instruction
manuals sold therewith, would immediately understand that a
feature of the game is that its subject matter relates to
the U.S. Army’s special forces. The mark SPECIAL FORCES
directly conveys this information, without the need for any
exercise of imagination on the part of the consumer.
In reaching this conclusion, we have considered
applicant’s argument that its mark “may suggest a
connection to alien beings, witchcraft, the occult or
supernatural phenomena” or to “a task force of police
officers, fire fighters, rescue workers or any other agency
that may delegate an exclusive group of people with
exceptional or unusual skills to perform distinctive
tasks.” Brief, p. 3. Applicant apparently bases these
Ser No. 78101548
5
assertions on the dictionary definitions for “forces.”4
However, the mark is not “forces,” but SPECIAL FORCES, and
there is a clear meaning for this term as a whole. As a
result, consumers are not likely to break down the mark
into one of the meanings of “forces,” then combine each or
all of those definitions with the word “special” to arrive
at the connotations that applicant suggests. Rather, they
will view the mark SPECIAL FORCES as a reference to the
U.S. Army division, and understand that this mark, when
applied to applicant’s computer game, describes a feature
of the game.
It should also be noted that the situation presented
here is distinguishable from the double entendre cases
which applicant has cited. In cases such as In re Colonial
Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR
& SPICE) and Blisscraft of Hollywood v. United Plastics
Co., 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961) (POLY
PITCHER), the marks, in addition to their descriptive
meaning, had a non-descriptive meaning, i.e., a nursery
rhyme and a Revolutionary War figure. Here, SPECIAL FORCES
4 “1. Strength or energy exerted or brought to bear. 2. Moral or
mental strength. 3. The capacity to persuade or convince. 4.
Military strength. 5. A body of persons or things available for a
particular end. 5. Any of the natural influences (gravity,
electromagnetism) that exist between particles and determine the
structure of the universe.” Merriam-Webster’s Collegiate
Dictionary, 10th ed.
Ser No. 78101548
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has only the meaning of U.S. Army fighters, and this
meaning is descriptive of a feature of applicant’s
identified goods.
Applicant also asserts that its mark “does not fall
into the same class of marks such as SCREENWIPE or
BREADSPRED as Applicant’s mark is not SPECIAL FORCES
MILITARY FIGHTING GAME,” reply brief, p. 5, and that “the
words ‘computer’, ‘game’, or ‘software’ do not even appear
in Applicant’s mark." Reply brief, p. 6. Applicant is
correct that its mark is not generic. However, genericness
is not the basis for the refusal of applicant’s
application. It is not necessary that the type of goods be
mentioned in applicant’s mark for the mark to be found
merely descriptive.
Finally, applicant has pointed to registrations for
other marks which were found registrable without proof of
acquired distinctiveness. Specifically, it claims that it
owns a registration for SWAT, and that there are third-
party registrations for such marks as BIG MUTHA TRUCKERS,
COMMANDOS: BEHIND ENEMY LINES, FEAR EFFECT and GANGSTERS:
ORGANIZED CRIME.5 Aside from the fact that these marks are
5 Applicant simply listed the marks, registration numbers and
dates in its response to the first Office action. Such a listing
is ordinarily not sufficient to make the registrations of record.
See In re Duofold Inc., 184 USPQ 638 (TTAB 1974). However, the
Examining Attorney did not object to the registrations, and in
Ser No. 78101548
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different from the one at issue in this appeal, even if
some prior registrations had some similar characteristics
to applicant's mark, the Office’s allowance of such prior
registrations does not bind the Board. In re Nett Designs
Inc., 236 F3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Decision: The refusal of registration is affirmed.
fact referred to them in the following (final) Office action.
Therefore, we deem any objection to such registrations to be
waived. See TBMP §1208.02 (2d ed. rev. 2004). Thus, we have
considered the list of registrations. Applicant has also
referred to additional registrations in its reply brief. Because
these registrations were not made of record during the
prosecution of the application, and have first been mentioned at
a point that the Examining Attorney has had no opportunity to
comment on them, they have not been considered. See Trademark
Rule 2.142(d). We would add that even if these registrations
were properly of record, they would not change the result in this
case.