William Tatham

Trademark Trial and Appeal Board

Dec 12, 2012

No. 77754327 (T.T.A.B. Dec. 12, 2012)

Mailed:
December 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tatham
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Serial Nos. 77754249, 77754270, 77754276, 77754286,
77754290, 77754297, 77754306, 77754327 and 77782796
_______

Scott W. Kelley of Kelly Lowry & Kelley, LLP for William
Tatham.

David Elton, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Zervas, Wolfson and Hightower, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

William Tatham (“applicant”) filed the following
intent-to-use applications under Trademark Act Section 1(b),
15 U.S.C. §1051(b), to register the following proposed marks
on the Principal Register:
GRAND PRIX SPORTS (Serial No. 77754249) for
“Organizing sports league events, namely, rugby
and soccer tournaments”;

GRAND PRIX FOOTBALL (Serial No. 77754270) for
“Organizing sporting league events, namely,
football tournaments”;

THIS DECISION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 77754249, 77754270, 77754276, 77754286, 77754290,
77754297, 77754306, 77754327 and 77782796
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GRAND PRIX BASKETBALL (Serial No. 77754276) for
“organizing sporting league events, namely,
basketball tournaments”;

GRAND PRIX SOCCER (Serial No. 77754286) for “Organizing
sporting league events, namely, soccer tournaments”;

GRAND PRIX SEVENS (Serial No. 77754290) for
“Organizing sporting league events, namely, rugby
seven tournaments”;

GRAND PRIX STUDIOS (Serial No. 77754297) for
“Production and distribution of motion picture
films featuring rugby, rugby sevens, basketball,
soccer and football; production of sports related
radio and television programs featuring rugby,
rugby sevens, basketball, soccer and football, and
production of musical sound recordings” in
International Class 41;

GRAND PRIX ONLINE (Serial No. 77754306) for
“Broadcasting of video and audio programming in
the nature of sports entertainment in the field of
soccer and rugby via the internet”;

GRAND PRIX GAMING (Serial No. 77754327) for
“Providing a web-based system and on-line portal
for customers to participate in on-line gaming,
operation and coordination of game tournaments,
leagues and tours in the field of rugby, rugby
sevens, basketball, soccer and football;
conducting and providing facilities for special
events featuring casino and gaming contests,
tournaments, and wagering services in the field of
rugby, rugby sevens, basketball, soccer and
football;” and

GRAND PRIX RUGBY SEVENS (Serial No. 77782796) for
“entertainment in the nature of rugby games;
organizing sporting events, namely, rugby games
and tournaments.”

With the exception of the term GRAND PRIX, applicant
disclaimed all other wording appearing in the proposed
marks. The GRAND PRIX ONLINE services are in International
Class 38; all of the remaining services are in International
Class 41.
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77754297, 77754306, 77754327 and 77782796
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Registration of each proposed mark has been refused on
the ground of mere descriptive under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1).1 When each refusal was
made final, applicant appealed. The appeals are fully
briefed. Because the appeals involve the same issue and
similar records, we hereby consolidate the appeals and
decide each appeal in this single opinion.2
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and every
specific feature of the applicant’s goods or services in
order to be considered merely descriptive; it is enough that
the term describes one significant attribute, function or
property of the goods or services. See In re H.U.D.D.L.E.,

1 The examining attorney notes that on September 27, 2011, the
Board affirmed the refusal to register a related term, GRAND PRIX
ENTERTAINMENT (application Serial No. 77831521 for “Entertainment
services in the nature of development, creation, production and
distribution of multimedia entertainment content, namely motion
pictures, television shows, online media, music, sports and
gambling”), on the ground of mere descriptiveness.
2 The Board consolidated the appeals for the GRAND PRIX STUDIOS,
GRAND PRIX GAMING and GRAND PRIX ONLINE applications on April 17,
2012, and consolidated the appeals for the remaining applications
on April 10, 2012. In view of the similar evidentiary records
and similar issues in each of the nine applications, we hereby
consolidate all nine applications for purposes of this appeal and
issue one decision for all nine applications.
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216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it is
being used on or in connection with those goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. That a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The examining attorney argues that the wording GRAND
PRIX describes the subject matter of the identified services
- sporting events played at the highest level of
competition. Brief at 7. In support of his refusal, the
examining attorney relies on the following:
A. Information supplied by applicant in response to several
questions propounded by the examining attorney, including:
Q: At what level of competition will the
identified tournaments be played?

A: At the highest level possible, both from a
domestic and international competition
standpoint. Just as Formula One Grand Prix auto
racing is the elite event of its kind (Ferrari,
Porsche, Maserati, etc.), the goal of Grand Prix
Rugby, Basketball, Soccer, etc., is to be the
elite events as relating to their respective
sports.

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Q: Will any of the identified tournaments involve
a high-level of competition in the field of rugby
or soccer?

A: It is the goal of Grand Prix to provide fans,
viewers and gamblers with the highest level of
[sic] on the field [sic] integrity and expertise
possible. For example, Grand Prix Rugby will
showcase the world's elite union rugby sevens
teams from day one, made possible by Grand Prix's
Exclusive Sanction, Broadcast and License
Agreement with USA Rugby, the nation's governing
body for the sport of union rugby. In all
likelihood, the international teams competing in
Grand Prix Rugby's tournaments shall also
comprise each nation's Olympic Rugby Sevens
National Team for the 2016 Rio De Janeiro Summer
Olympics.

Q: Will any of the identified tournaments involve
a high-level of rugby or soccer competition made
up of a series of games, rounds, or contests?

A: Yes. It is the goal of Grand Prix to brand its
tournaments as played by the world's elite teams
and players in regard to the respective sport
being branded.
Q: Will any of the identified tournaments involve
rugby or soccer competitions that have, or will
have, the same or similar importance and prestige
as a Grand Prix in automobile racing?

A: It is hopeful that one day the prestige of the
applicant’s trademarks and brands will have the
importance and prestige as the Grand Prix in
automobile racing.

B. Dictionary definitions of “grand prix,” including:
• “Important sports competitions: any of various
competitions in a variety of sports that have the
same importance and prestige as a Grand Prix in
automobile racing.” Encarta Dictionary,
(www.encarta.msn.com);

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• “A high-level competition in another sport (as
sailing) that is often part of a series.”
Merriam-Webster’s Online Dictionary (www.merriam-
webster.com); and

• “Any competitive event or, often, series of
events.” Webster’s New World College Dictionary,
(www.yourdictionary.com).

C. Third-party registrations where the term “Grand Prix” is
either registered on (i) the Supplemental Register, or (ii)
the Principal Register under Section 2(f) based on acquired
distinctiveness or with “Grand Prix” disclaimed, e.g.:3
• FINA GRAND PRIX (Registration No. 2620252 -
Principal Register, “GRAND PRIX” disclaimed) for
“arranging and organization of water sport events
and competitions in the fields of swimming,
diving, synchronized swimming, water polo and open
water swimming”;

• K-1 GRAND PRIX (U.S. Registration No. 2396105 -
Principal Register, “GRAND PRIX” disclaimed) for
“entertainment services in the nature of martial
arts tournaments and boxing contests; educational
services, namely, providing training programs and
seminars in the field of martial arts; motion
picture, television, and videotape production;
arranging for ticket reservations for sports and
fighting sports events; and publication of books,
newspapers, and magazines”;

• GRAND PRIX OF DOG AGILITY (Registration No.
2551579 – Principal Register, Section 2(f))
claimed for “entertainment services, namely,
competitions in the field of sporting events for
animals, and establishing and promulgating
international rules for such competitions”;

• COLUMBIA CLASSIC GRAND PRIX (Registration No.
3061842 – Principal Register, “GRAND PRIX”
disclaimed) for “entertainment services in the

3 See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1797 n.1 (Fed. Cir. 1987) (“Third-party
registrations are admissible and competent to negate a claim of
exclusive rights in ‘sweats’ and the disclaimers are evidence,
albeit not conclusive, of descriptiveness of the term.”); and In
re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
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nature of an equestrian sporting event and
competition”; and

• GRAND PRIX CARD TOURNAMENTS (Registration No.
2903990 – Supplemental Register) for
“entertainment in the nature of card game
tournaments.”

According to the examining attorney, this evidence
reflects that in light of its common, ordinary definition,
namely, “important or high level competitions,” GRAND PRIX
is “a descriptive designation not only when applied to
automobile racing … but also when applied to vastly
divergent high level or important competitions ….” Brief at
9.4
Applicant argues that GRAND PRIX is not descriptive of
the identified services because the definition “a high level
and/or important sporting competitions” offered by the
examining attorney is not the primary definition; based on
the definitions in the record of “grand prix,” “the primary
definition of GRAND PRIX means a car race,” and a level of
imagination, thought, and/or perception is needed to
associate “car racing” and the disclaimed term in each mark
with the recited services. (Brief at 6 - 7). Applicant
submitted definitions of “grand prix” from, e.g., The
American Heritage Dictionary (4th ed. 2000) located at
dictionary.com, audioenglish.net and answer.com, which

4 See Response of September 29, 2010. Unless otherwise noted,
citations are to filings made in application Serial No. 77754297.
The evidentiary record in each application is substantially the
same.
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define or discuss “grand prix” only as an international road
race for sports cars.5
Descriptiveness, however, is determined not in the
abstract, but in relation to the goods or services for which
registration is sought, and that a term may have other
meanings in different contexts is not controlling on the
issue of descriptiveness. Bright-Crest, supra. The fact
that a particular definition is not the first listed
definition in a dictionary does not mean that a second or
third definition is inapplicable or that imagination or
thought would be necessary in arriving at a secondary or
third definition. Indeed, the definition from encarta.com
makes clear that the competition can be in a variety of
sports and there is no reason to exclude any of the sports
considered by applicant from the definition. Further, the
definitions define “grand prix” as important or high level
competitions which are not tied to any specific field or
discipline. Automobile racing is mentioned only as an
example in the encarta.com definition. Applicant has
described its services as occurring “at the highest level
possible, both from a domestic and international competition
standpoint.” And, applicant too references automobile
racing, as does the encarta.com definition, in his response
to the examining attorney’s request for information, stating
that “[j]ust as Formula One Grand Prix auto racing is the

5 The definition submitted by applicant from Webster’s New World
College Dictionary (2009), however, includes “any competitive
event or, often, series of events; usually used as part of the
title” in the definition of “grand prix.”
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elite event of its kind (Ferrari, Porsche, Maserati, etc.),
the goal of Grand Prix Rugby, Basketball, Soccer, etc., is
to be the elite events as relating to their respective
sports.”
Applicant also argues that GRAND PRIX conveys a
secondary meaning6 of “prestige of services,” suggesting
that by including GRAND PRIX in the proposed marks, they
convey an air of importance or aggrandizement which requires
the consumer to have a level of imagination, thought and
perception.7 Brief at 10. Applicant, however, provided no
evidence to support applicant’s theory of a double entendre.
Moreover, even if the record included evidence to establish
that “grand prix” had another meaning – e.g., “high level”
or “prestigious” in general, regardless of context – then it
could be laudatory and as such also merely descriptive. See
TMEP §1209.03(k) (October 2012) (“Laudatory terms, those
that attribute quality or excellence to goods or services,
are merely descriptive under §2(e)(1)”).
Also on the subject of double entendres, applicant
mentions the TENNIS.NET example noted by the Federal Circuit
in the case of In re Oppendahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370 (Fed. Cir. 2004) involving the mark

6 We understand applicant’s use of the term “secondary meaning”
to pertain to its position that the terms present double
entendres and not that the terms have acquired distinctiveness.
7 Applicant relies on a Board decision which was not designated
as a precedent of the Board. Decisions which are not designated
as precedent are not binding on the Board, but may be cited for
whatever persuasive weight to which they may be entitled. TBMP
§ 101.03 (3d ed. rev. 2012).
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PATENTS.COM. There, the Court discussed a hypothetical mark
TENNIS.NET which was a “witty double entrendre relating to
tennis nets,” and applicant argues that the TENNIS.NET
example is similar to its GRAND PRIX marks “where the
secondary meaning of GRAND PRIX conveys an air of importance
or aggrandizement” to the term following GRAND PRIX that
makes the mark not merely descriptive. Brief at 11. We
disagree. As stated earlier in this decision, we find no
double entendre in any of applicant’s proposed marks and
applicant has not provided any evidence to support its
theory of a double entendre.
At p. 2 of its reply brief, applicant takes a different
tack. After conceding that “‘Grand Prix’ may sometimes be
used in connection with a sporting contest at the highest
level of competition,” applicant argues that there is a
distinction between the types of competitions noted by the
examining attorney in which “Grand Prix” is used
(equestrian, automobiles, sailing, water sports, dog agility
and card games) and the competitions which are the subject
of applicant’s services (rugby, soccer, basketball and
football). Specifically, those noted by the examining
attorney involve a course or track with a starting line and
a finish line, while those activities which are the subject
of applicant’s services involve head-to-head competitions on
a field or court where the participants take alternative
turns attacking and defending a goal or zone. Reply at 3.
In view of this distinction, applicant maintains that a
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level of imagination, thought or perception is required to
associate “Grand Prix” with head-to-head competition events
as contemplated by the recited services.
The problem with the distinction that applicant offers
is that the dictionary definitions are not limited to or
exclude particular activities. As reflected by the
dictionary definitions which contain no such restrictions,
the consuming public of applicant’s services would apply the
definition of “grand prix” to either type of competition.
There is no reason, and the record does not support the
conclusion, that the consuming public would make such a
distinction.
Finally, in connection with the proposed marks GRAND
PRIX GAMING, GRAND PRIX ONLINE, and GRAND PRIX STUDIOS,
applicant argues that the services do not relate immediately
or forthwith to the particular sports set forth in the
recitations of services, but to production and distribution
services; gaming, tournament and wagering services; and
broadcasting services. This argument is not persuasive
because the recitations of services specifically identify
those sports listed by applicant and such sports are
involved as a feature of applicant’s services. It is the
content of such services that purchasers are ultimately
purchasing and such sports feature prominently in rendering
the services.
In sum, each element of each proposed mark is
descriptive and when combined these elements do not lose
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their descriptive significance. The term GRAND PRIX informs
the consumer that the subject matter of the services
includes “grand prix” competitions. It does not take any
mental leap to conclude that each of the applied-for terms
describes a significant feature of the services. Rather,
when used in connection with applicant’s services, the
proposed marks immediately describe, without need for
conjecture or speculation, a significant feature of
applicant’s services, namely, that the content of
applicant’s services features “high level” or “grand prix”
competitions.
Decision: The refusal to register each application
under Section 2(e)(1) is affirmed.