True Collection, LLC

Trademark Trial and Appeal Board

Jul 8, 2013

No. 85659336 (T.T.A.B. Jul. 8, 2013)

Mailed: July 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re True Collection, LLC
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Serial No. 85659336
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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 “downloadable electronic game
programs and applications via the internet and wireless
devices; downloadable software in the nature of a mobile
THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
Serial No. 85659336
2
application for use in tracking and participating in games
and events” in International Class 9.
1

Registration was 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). When the refusal was made final, applicant
filed a request for reconsideration that was denied by the
examining attorney. Applicant then appealed the 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
function or purpose of applicant’s goods.” Brief, p. 2.
In support, he relies on applicant’s response to an Office
action requirement for information wherein applicant
stated:
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.
2

The examining attorney contends that applicant’s goods
involve the opportunity to meet a pro and that “while

1
Application Serial No. 85659336, filed June 22, 2012, based on
applicant’s stated intent to use the mark in commerce pursuant to
Section 1(b) Trademark Act.
2
Response to Office action filed on October 9, 2012.
Serial No. 85659336
3
applicant indicates the opportunity is not conditional on
the consumer beating the pro, applicant never offers any
other possible interpretation of the mark and does not
provide any other information regarding the goods.” Brief,
p. 3. Rather, according to the examining attorney, “[t]o
the prospective consumer, the only logical significance of
BEAT THE PRO, MEET THE PRO as applied to applicant’s goods
would be that if the consumer beats the pro (professional)
at the game, they would have an opportunity to meet the
pro.” Id. at p. 5.
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 identified
goods]” and that the mark is suggestive, not merely
descriptive. Reply at p. 4. Specifically, applicant
asserts that the mark conveys a “possible end result from
the use of [applicant’s downloadable electronic games and
application software]” 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 goods is to participate in and track games
and events with electronic game programs and applications
via the internet and wireless devices. A desired result or
Serial No. 85659336
4
possible result of using [the goods] is the possibility of
meeting a pro.” Id. at 7.
A term is merely descriptive if it immediately conveys
information concerning a significant quality,
characteristic, function, feature or purpose of the goods
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 goods 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
Serial No. 85659336
5
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, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980). 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, 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 identified goods.
While there is no argument that the term PRO means
“professional,” it remains unclear what type of
“professional” might be referred to by the mark. In other
words, a question remains if this refers to a professional
athlete or someone considered a “professional” at playing
the downloadable game identified in the application.
Likewise, the MEET THE PRO element is nebulous; for
Serial No. 85659336
6
instance, how does one meet the professional, via the game
or in person? And, as applicant posited, is MEET[ing] THE
PRO conditional on BEAT[ing] THE PRO? The proposed mark
certainly suggests that the player of the downloadable
electronic game will play a professional of some sort and
will, perhaps, later meet that professional, but it is not
descriptive. 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 healthy speculation. Moreover, such an interpretation
is not immediate and a few stages of reasoning are
required. Because the goods are electronic downloadable
software and game application software, there is no obvious
direct method to “meet” a professional unless you are doing
so virtually through the game. Otherwise, one must play
the game and then, possibly contingent on winning the game,
the player will then be able to meet the professional
personally. Obviously, upon playing applicant’s
downloadable electronic games, consumers will likely
acquire a better understanding of the proposed mark in
connection with the actual game; however, determining
whether consumers would perceive the asserted descriptive
meaning of the mark after playing the game ex post is not
the test for determining whether the mark is descriptive.
Serial No. 85659336
7
The record in this proceeding is sparse. There is no
evidence showing why or how prospective consumers of
downloadable electronic games may be accustomed to beating
or meeting professionals (or understanding what type of
professionals are being referenced) when playing electronic
downloadable software games. The only evidence submitted
by the examining attorney are 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 thus presumably considered descriptive
of the underlying goods or services. However, the
examining attorney does not explain how this evidence is
relevant to showing why applicant’s proposed mark is merely
descriptive of the identified goods; pointedly, we note
that none of the goods and services identified in the
registrations and applications can be reasonably classified
as similar to applicant’s goods. Therefore the copies of
registrations and applications have almost no probative
value in showing why applicant’s mark is merely descriptive
of downloadable electronic games and application game
software. To be clear and more precise, there is no
evidence indicating that electronic downloadable games or
Serial No. 85659336
8
application software may involve the prospect of playing
and/or meeting, either online or in-person, professionals
(of any sort).
Finally, both applicant and the examining attorney
argued case law involving marks that related to a “desired
result” of the goods. An analysis based on the cited cases
is ill-suited to the subject mark because, as explained
above, the mark does not clearly identify a “desired
result.”
3
Nevertheless, we address the examining attorney’s
characterization of applicant’s mark’s “desired result” as
being “if you beat the pro in the subject games, you may
have the opportunity to meet the pro.” Brief, p. 7. We
disagree with such a simplistic explanation.
Rather, we see a distinction between the desired result
“of” the game versus a desired result “within” the game.
With respect to applicant’s mark being viewed in connection
with the identified electronic games, it may be understood
as relating to a desired result “of” the game, i.e., you
play the game so that you can beat a pro at the game in

3
Furthermore, the “desired result” cases generally involve marks
used on utilitarian products and not entertainment devices or
games. See, e.g., In re Nalco Chemical Co., 228 USPQ 972, 973
(TTAB 1986) (chemical anti-fouling additives for use in
refineries); In re The Noble Co., 225 USPQ 749, 750 (TTAB 1985)
(antifreeze); In re Universal Water Systems, Inc., 209 USPQ 165,
166 (TTAB 1980) (water filtering units); and In re C. J. Webb,
Inc., 182 USPQ 63, 64 (TTAB 1974) (brake cleaner).

Serial No. 85659336
9
order to later meet the pro in person outside the game. On
the other hand, the mark may also be understood as relating
to a desired result “within” the game, i.e., by beating the
pro within the game you may have a meeting with the pro
within or as part of applicant’s electronic game. These
possible scenarios also omit the already-discussed
ambiguity involving what sort of “pro” or “professional”
the consumer will be “beating” and/or “meeting.” As
illustrated, there are too many questions and possibilities
for consumers to be expected to immediately understand the
significance of BEAT THE PRO, MEET THE PRO in connection
with the identified goods.
In view of the aforementioned uncertainty and open
questions, we have doubt that BEAT THE PRO, MEET THE PRO
immediately describes a significant purpose or function of
the goods identified in the application, 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.