William Tatham

Trademark Trial and Appeal Board

Sep 27, 2011

No. 77831521 (T.T.A.B. Sep. 27, 2011)

Mailed:
September 27, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re William Tatham
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Serial No. 77831521
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Scott W. Kelley of Kelley Lowry & Kelley LLP for William
Tatham

Robin S. Chosid-Brown, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney)
_______

Before Bucher, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On September 21, 2009, William Tatham, applicant,
filed an intent-to-use application under Trademark Act
Section 1(b), 15 U.S.C. §1051(b), to register the mark
GRAND PRIX ENTERTAINMENT in standard characters 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” in
International Class 41.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77831521
2
Registration has been refused on the ground that GRAND
PRIX ENTERTAINMENT is merely descriptive of applicant’s
services within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1).
When the refusal was made final, applicant appealed.
The appeal is fully briefed. We affirm.
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., 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
Ser No. 77831521
3
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, 593 (TTAB 1979).
During the prosecution of the application, the
examining attorney requested information about the nature
of services. Applicant responded, inter alia, that its
services “may cover sports that include shooting, producing
and selling media content of an equestrian competition,
formula one race, or other high-level competition in
another sport such as sailing.” App. Response (June 7,
2009). Drawing from this response, the examining attorney
argues that the wording GRAND PRIX ENTERTAINMENT “merely
describes the subject matter of the content of applicant’s
entertainment services, of competitions or sports at the
highest level.” Br. p. 3. Specifically, the examining
attorney argues that because applicant’s media content may
contain high level competitions GRAND PRIX merely describes
the subject matter (or content) of applicant’s
ENTERTAINMENT services.
In support of the refusal, the examining attorney
submitted the following dictionary definitions:
Ser No. 77831521
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Entertainment 1. an entertaining or being
entertained 2. something that entertains;
interesting, diverting, or amusing thing; esp., a
show or performance. Webster’s New World College
Dictionary (2009) (retrieved from
www.yourdictionary.com);

Entertainment 1. the act of entertaining 2.
the art or field of entertaining. 3. something
that amuses, pleases, or diverts, especially a
performance or show. 4. the pleasure afforded
by being entertained; amusement. The American
Heritage Dictionary of the English Language (4th
ed. 2010) (retrieved from
www.yourdictionary.com); and

Grand Prix 1. the highest level of international
equestrian competition; also a contest at this
level; 2. one of a series of international
formula car races; also a high-level competition
in another sport (as sailing) that is often part
of a series. Merriam-Webster Online Dictionary
(2009) (retrieved from www.merriam-webster.com).

The examining attorney also submitted a printout from
a third-party website showing use of the term “Grand Prix”
as the name of a sporting event (“bnd.com ... Serving
Southwestern Illinois and the St. Louis region ... Hamilton
wins Canadian Grand Prix ... Lewis Hamilton and his McLaren
team made all the right moves in the Canadian Grand Prix,
leaving Red Bull behind at sunny Circuit Gilles
Villeneuve”) and several third-party registrations where
the term “Grand Prix” is either registered on the
Supplemental Register or on the Principal Register either
under Section 2(f) based on acquired distinctiveness or
with “Grand Prix” disclaimed. See, e.g., Registration No.
Ser No. 77831521
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1789009 on the Supplemental Register for the mark GRAND
PRIX SAILOR for a “magazine on sailing”; Registration No.
3269958 on the Principal Register for the mark IMMORTAL
GRAND PRIX with “Grand Prix” disclaimed for, inter alia,
“motion picture films featuring comedy, drama, action,
adventure and/or animation.”1 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 term.”); and In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Applicant argues that its media production services:
... [a]re the development, creation, production
and distribution of multimedia entertainment
which is related to the use of audio and video
equipment along with a solid understanding of the
tools and techniques of recording, editing and
ultimately distributing multimedia entertainment
content in the nature of motion pictures,
television shows, online media, music, sports and
gambling. Such media production services include
providing services related to the operation and
control of cameras (e.g. lenses, F-stops and
other creative focus techniques), video quality
and color techniques, camera operation and
control, positioning of cameras for proper hard
and soft lighting, color temperature and light

1 These are the most relevant third-party registrations. The
remaining registrations are, for the most part, for the sporting
events themselves rather than for the service of printing or
producing, filming and distributing the visual image of the
sporting events.
Ser No. 77831521
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intensities, etc. in order to produce the
identified entertainment content. ...

Br. pp. 4-5.
Thus, applicant contends that GRAND PRIX ENTERTAINMENT
is not merely descriptive of its services because the
“ingredients and characteristics” do not “fall within the
guise of being merely descriptive.” Br. p. 5. Applicant
focuses on the activities and equipment required to produce
and distribute the media content, and argues that one
possible subject matter of the content is not a “seminal
aspect” of its services to “create produce and ultimately
distribute that media entertainment content.” Br. p. 6.
Further, applicant argues that its “services do not
encompass actually organizing, running or even competing in
those events.” Id.
In the same way a term may be merely descriptive for
printing and distributing magazines or broadcasting
television content because it describes the content or
subject matter being offered, GRAND PRIX ENTERTAINMENT is
merely descriptive of applicant’s production and
distribution services. The media content is a significant
feature of the services. Ultimately applicant is selling
the content, not simply their facility with an F-stop. By
Ser No. 77831521
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applicant’s admission the media content portion of its
identification includes Grand Prix competitions.
Applicant also argues that the term Grand Prix has an
alternative meaning of “prestige of services.”
Specifically, applicant argues:
[T]he secondary meaning2 of GRAND PRIX conveys an
air of importance or aggrandizement to
ENTERTAINMENT that makes the mark of GRAND PRIX
ENTERTAINMENT not merely descriptive. The mark
of GRAND PRIX ENTERTAINMENT conveys an air of
importance or aggrandizement from the GRAND PRIX
portion to the ENTERTAINMENT portion which
requires the consumer to have a level of
imagination, thought and perception to then
associate the Applicant’s development, creation,
production and distribution services as being far
better when compared to the quality and prestige
of competing companies engaged in similar
services.

Br. p. 8.
In support of this alternate meaning theory applicant
points to the dictionary definition that “grand prix” can
mean “a high level competition in another sport that is
often part of a series,” arguing that grand prix “conveys
an air of importance or aggrandizement to ENTERTAINMENT.”
Reply Br. p. 6. Applicant then extrapolates that:
If the examining attorney’s definition of “Grand
Prix” was limited to just races, then the
following marks would also not convey a sense of
prestige: GRAND PRIX CHICKEN for a premiere

2 We understand applicant’s use of the term “secondary meaning”
to pertain to its position that the mark presents a double
entendre and not that the mark has acquired distinctiveness – an
issue not before us.
Ser No. 77831521
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chicken product; GRAND PRIX SALONS for a premiere
hair salon; and GRAND PRIX DRYWALL for a premiere
construction company. Clearly the “Grand Prix”
portion adds a level of prestige to each of these
hypothetical marks.

Reply Br. p. 6.
There is no evidence to support this theory of a
double entendre. The dictionary definition continues to
define grand prix as a high level competition which is the
subject matter of applicant’s media content. The
dictionary definition does not include a more amorphous or
generalized meaning of high “prestige” or “aggrandizement.”3
As to applicant’s hypotheticals it is possible these
examples, which are not sporting competitions, could
present an incongruous combination, e.g., GRAND PRIX
CHICKEN, but applicant’s mark presents no such incongruity.
Sporting events are encompassed within the meaning of
entertainment such that GRAND PRIX ENTERTAINMENT
immediately conveys a significant aspect of the services,
i.e., that the content includes “high level competitions.”
Applicant further argues that these facts are
different from the circumstances in In re Conus

3 Moreover, even if the record included evidence to establish
that the term “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) (7th ed. 2010) (“Laudatory terms, those that
attribute quality or excellence to goods or services, are merely
descriptive under §2(e)(1)”).
Ser No. 77831521
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Communications Co., 23 USPQ2d 1717 (TTAB 1992) (ALL NEWS
CHANNEL generic for television channel broadcasting all
news) and In re Weather Channel, Inc., 229 USPQ 854 (TTAB
1985) (WEATHER CHANNEL merely descriptive of channel that
broadcasts weather) because in the case of applicant’s
“applied-for mark ... it would be a rare but possible
occurrence when the applicant’s services would cover a
Grand Prix racing event” and as such it is not a
significant feature. Br. p. 10. Applicant reiterates in
its reply brief that its services of:
...creating multimedia entertainment cover a wide
range of events including football generally,
collegiate football, professional football of the
NFL, indoor football, soccer generally,
professional soccer leagues, the World Cup of
Soccer, hockey generally, professional hockey in
the NHL, collegiate hockey, volleyball generally,
beach volleyball, baseball generally, collegiate
baseball, professional baseball in the MLB,
basketball generally, collegiate basketball
including coverage of March Madness, professional
basketball in the NBA and so on and so on. As
one can see, there is an extensive list of events
the Applicant’s services may cover. It is almost
impossible to list all the different events the
Applicant’s services may cover. Within this
extensive list of possible events the Applicant’s
services may cover is a Grand Prix race. A Grand
Prix race is one possible event that the
Applicant’s services may at one point cover. It
is certainly not a seminal aspect of the
Applicant’s services, nor is it a significant
function of the Applicant’s services.

Reply Br. p. 4.

Ser No. 77831521
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The fact that GRAND PRIX is not merely descriptive of
all of applicant’s content because some of the sporting
events are not “high level” or a “Grand Prix” race, does
not obviate the refusal based on mere descriptiveness. It
is sufficient that a term is merely descriptive of one
significant feature of a service. H.U.D.D.L.E., 216 USPQ
at 359. Moreover, based on applicant’s description above,
far from being rare, applicant’s content includes several
high level competitions. Even excluding the broader
definition of “Grand Prix” as any high level competition,
the media content in the identification of services also
includes those types of races more commonly referred to as
“Grand Prix” and applicant confirmed its content could
include such races.
In sum, each element of the proposed mark is
descriptive and when combined these elements do not lose
their descriptive significance. The term GRAND PRIX
informs the consumer that the subject matter of the
ENTERTAINMENT services includes “Grand Prix” competitions.
It does not take any mental leap to conclude that GRAND
PRIX ENTERTAINMENT describes a significant feature of the
services. Rather, when used in connection with applicant’s
services, the phrase GRAND PRIX ENTERTAINMENT immediately
describes, without need for conjecture or speculation, a
Ser No. 77831521
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significant feature of applicant’s services, namely, that
applicant’s multimedia content features “high level” or
“Grand Prix” competitions.
Decision: The refusal to register is affirmed.