True Collection, LLC

Trademark Trial and Appeal Board

Jul 15, 2013

No. 85659352 (T.T.A.B. Jul. 15, 2013)

Mailed: July 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re True Collection, LLC
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Serial No. 85659352
_______

Jonathan O. Owens of Haverstock & Owens LLP for True
Collection, LLC.

Paul Fahrenkopf, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

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

Opinion by Wellington, Administrative Trademark Judge:

True Collection, LLC has filed an application to
register the mark BEAT THE PRO, MEET THE PRO (in standard
character format), for “entertainment services, namely,
providing community entertainment programs featuring unique
sporting activities, sporting contests, cultural activities
and recreation activities” in International Class 41.
1

1
Application Serial No. 85659352, filed June 22, 2012, based on
applicant’s stated intent to use the mark in commerce pursuant to
Section 1(b) Trademark Act.
THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
Serial No. 85659352
2
In the first Office action, the examining attorney
informed applicant that registration was being refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), on the ground that applicant’s mark, if used in
connection with the identified services, so resembles the
mark BEAT THE PRO (in standard character format) for
“entertainment services, namely television programs and
live exhibitions featuring sport competitions” in
International Class 41,
2
that it is likely to cause
confusion or mistake or to deceive.
Registration was also refused on the ground that the
proposed mark is merely descriptive of the identified
goods. Section 2(e)(1) of the Lanham Act, 15 U.S.C. §
1052(e)(1). The examining attorney also informed applicant
that the proposed mark may be deceptively misdescriptive
under the same section of the Act.
Lastly, the examining attorney, also in the first
Office action, issued a requirement for information. He
requested applicant to “advise whether its services will
involve the opportunity to meet the pro athlete if the
consumer beats the pro athlete at applicant’s games.” He

2
Registration No. 2307398, issued on January 11, 2000, renewed.
Serial No. 85659352
3
also requested further information regarding applicant’s
“goods.”
3

In its response to the first Office action, applicant
addressed the likelihood of confusion and descriptiveness
refusals to registration. With respect to the information
requirement, applicant replied:
While the Applicant may offer a consumer the
opportunity to potentially meet a professional...this
opportunity is not conditional on the consumer beating
the pro. Within the Office Action, the Examiner has
asked for factual information regarding the goods, how
they are sold, the salient features, their prospective
customers and channels of trade. As the Examiner is
aware, the Applicant has filed an “intent to use”
application. Thus, the Applicant is not in a position
to be able to provide this information at this time.
4

In the second Office action, the examining attorney
made the descriptiveness refusal “final” and withdrew the
“refusal based on deceptive misdescriptiveness.” The
examining attorney did not continue or otherwise address
the likelihood of confusion refusal; accordingly, said
refusal is not given further consideration.
5
The examining

3
It is noted that a companion application (Serial No. 85352336)
for the same mark was filed by applicant and said application
involves goods; the same examining attorney handled the companion
application. A separate decision from the Board involving the
appeal of a descriptiveness refusal of said application has
recently issued.
4
Response to Office action filed on October 9, 2012.
5
In its appeal brief, applicant notes that the likelihood of
confusion refusal was not continued and the examining attorney
did not address this point his appeal brief. We therefore
consider the refusal to have been effectively withdrawn.
Serial No. 85659352
4
attorney was also apparently satisfied with applicant’s
response to the information request.
Applicant filed a request for reconsideration of the
descriptiveness refusal. With its request for
reconsideration, application attached a copy of a
definition for “meet” as well as copies (from an Office
database) of seven registrations for marks beginning with
the term MEET in connection with various services, on the
Principal Register and without any disclaimer.
The examining attorney denied the reconsideration
request and submitted copies of five registrations and
three applications covering various goods and services
(e.g., “charitable fundraising,” “computer telephone
software,” “organization of fairs for commercial and
advertising purposes,” etc.), wherein the term MEET has
been disclaimed and presumably considered descriptive of
the underlying goods or services.
After the request for reconsideration was denied,
applicant appealed the final refusal. Both applicant and
the examining attorney filed briefs, including a reply
brief from applicant.
The examining attorney, in his brief, contends that
MEET THE PRO, BEAT THE PRO is merely descriptive because it
“directly and immediately conveys information regarding a
Serial No. 85659352
5
function or purpose of applicant’s services.” Brief, p. 2.
The examining attorney contends that the proposed mark
“describes a significant aspect of applicant’s services,
that if you beat the pro at the game, you will have an
opportunity to meet the pro, the only logical
interpretation that would be made by a prospective
purchaser.” Id. at p. 9.
Applicant, on the other hand, argues that “imagination
and [a] multi-stage reasoning process are required to
connect BEAT THE PRO, MEET THE PRO with [the recited
services]” and that the mark is suggestive, not merely
descriptive. Reply at p. 4. Applicant asserts that the
mark conveys a “possible end result from the use of
[applicant’s] services” and that case law supports in such
cases a finding of suggestiveness, not descriptiveness.
Id. at p. 6. Applicant explains that “[i]n use, the
function of the services is to provide entertainment
programs featuring unique sporting activities, sporting
contests cultural activities and recreation activities. A
desired result or possible result of using [the goods] is
the possibility of meeting a pro,” but this does not render
the mark merely descriptive. Id. at 7.
A term is merely descriptive if it immediately conveys
information concerning a significant quality,
Serial No. 85659352
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characteristic, function, feature or purpose of the
services with which it is used. In re Chamber of Commerce
of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). In other words, the issue is
whether someone who knows what the services are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002);
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 UPSQ 365, 366 (TTAB 1985).
“On the other 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
Serial No. 85659352
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363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Finally, it is the examining attorney who bears the
burden of showing that a mark is merely descriptive of the
identified goods or services. See In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 21567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). And, to the extent that there
is doubt as to whether the mark is merely descriptive or
suggestive of the identified goods, we resolve such doubt
in favor of the latter finding and publication of
applicant's mark for opposition. See, e.g., In re Morton-
Norwich Products, Inc., 209 USPQ 791 (TTAB 1981) and In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Based on the evidence of record or, better put, the
lack of evidence, we find that the examining attorney has
not met his burden in maintaining the refusal of
registration. We are not convinced that applicant’s
proposed mark, BEAT THE PRO, MEET THE PRO will be
immediately understood by prospective consumers as
describing a function or purpose of the recited services.
The record in this proceeding is sparse. There is no
evidence showing the relevance of applicant’s mark in
connection with entertainment services such as applicant’s
“providing community entertainment programs featuring
Serial No. 85659352
8
unique sporting activities, sporting contests, cultural
activities and recreation activities.” In order to show
that prospective consumers of such services would
immediately understand the significance of the phrases
“beat the pro” and “meet the pro” (or the combination
thereof) in the manner posited by the examining attorney,
some evidence as to its meaning or context must be included
in the record. For example, evidence showing similar
activities or contests in the manner suggested by the
examining attorney, e.g., events where consumers can play
against and/or meet professional athletes, would be
helpful. Such evidence would show that consumers are not
unaccustomed to the recited services as possibly including
“beating a professional in an event or sport” and “meeting
a professional.” While we may assume that any reference to
a “pro” would likely be understood as referencing a
professional athlete, inasmuch as the services involve
sports, we cannot assume that it would be obvious or that
consumers would immediately understand the significance of
applicant’s mark, in the manner articulated by the
examining attorney, without further information or
investigation.
The third-party registrations and applications
submitted by the examining attorney have minimal probative
Serial No. 85659352
9
value with regard to the descriptivess refusal. As already
alluded to, none of the registrations and applications
covers entertainment services and thus the context or use
of the term MEET in the marks cannot be said to have the
same context as in applicant’s mark. In contrast, the only
truly relevant third-party registration of record points to
applicant’s mark being suggestive and not merely
descriptive. That is, the mark in the previously cited
registration, BEAT THE PRO, is the same as the first phrase
of applicant’s mark, and it covers what are arguably
identical services (“entertainment services...live
exhibitions featuring sport competitions”); it is on the
Principal Register without a disclaimer or based on
acquiring distinctiveness under Section 2(f). Although we
do not make our decision herein based on a single third-
party registration nor are we bound by prior decisions of
examining attorneys, we find the registered mark BEAT THE
PRO bears the strongest resemblance to applicant’s mark and
services and was presumably considered not to be merely
descriptive.
Simply put, without relevant evidence in support, we
cannot find applicant’s mark to be merely descriptive of
the recited services. “Beating” a professional athlete and
“meeting” a professional athlete are not such common events
Serial No. 85659352
10
that we can take judicial notice of them and we thus cannot
make the assumption that consumers would be familiar with
these kinds of events or competitions. It is therefore not
possible to presume that consumers would immediately
understand applicant’s mark as describing a feature or
purpose of applicant’s services. Even allowing for the
plain meaning of words in the mark and taking into
consideration applicant’s response to the information
request, some questions remain. As applicant posited, it
remains unclear if MEET[ing] THE PRO is conditional on
BEAT[ing] THE PRO. In order to reach a conclusion that the
mark is describing a function or purpose of the identified
goods, the prospective consumer would need to engage in
some speculation.
In view of the aforementioned uncertainty and lack of
relevant evidence, we have doubt whether BEAT THE PRO, MEET
THE PRO immediately describes a significant purpose or
function of the application’s recited services, and we
resolve that doubt, as we must, in favor of applicant.
Gourmet Bakers, 173 USPQ at 565.
Decision: The refusal to register is reversed and the
application will be forwarded for purposes of publication
in the Official Gazette for opposition.