William Tatham, Jr.

Trademark Trial and Appeal Board

Aug 22, 2013

No. 77725646 (T.T.A.B. Aug. 22, 2013)

Mailed:
August 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tatham
________

Serial No. 77725646
_______

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

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, Jr. (“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 RUGBY on the
Principal Register for “television broadcasting of rugby
events and tournaments between rugby leagues” in
International Class 38; and “organizing and conducting
rugby exhibitions and tournaments between rugby leagues” in
THIS DECISION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 77725646
2
International Class 41. Applicant disclaimed the term
RUGBY.
Registration of the proposed mark has been refused on
the ground of mere descriptiveness under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. 1052(e)(1).1 When the refusal
was made final, applicant appealed. The appeal is fully
briefed.
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).

1 The examining attorney notes that applicant filed a number of
similar GRAND PRIX formative marks for similar services; and that
the Board affirmed the refusals to register these marks on the
ground of mere descriptiveness.
Ser. Nos. 77725646
3
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 applicant’s answers to his
questions as to whether applicant broadcasts, organizes or
conducts high-level rugby tournaments that may be a part of
a series of competitions. Applicant responded:
Applicant endeavors to broadcast, organize and
conduct high-level rugby tournaments comparable
to the type of playoff systems established by
MLB, NFL, NHL, etc.

In addition, the examining attorney refers to the
following:
A. dictionary definitions of “grand prix,” including:
• “Important sports competitions: any of various
competitions in a variety of sports that have the
Ser. Nos. 77725646
4
same importance and prestige as a Grand Prix in
automobile racing.” Encarta Dictionary,
(www.encarta.msn.com); and

• “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).

B. 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.:2
• 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

2 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.”); In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Ser. Nos. 77725646
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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
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 unnumbered p. 8.
Applicant argues that GRAND PRIX is not descriptive of
the identified services because the definition “a high
level and/or [an] important sporting competition” 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.,
Ser. Nos. 77725646
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answers.com, askoxford.com and thefreedictionary.com, which
define or discuss “grand prix” only as an international
road race for sports cars.
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
tertiary 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;
and applicant has described its services as broadcasting,
organizing and conducting high-level rugby tournaments.
Ser. Nos. 77725646
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Applicant also argues that GRAND PRIX conveys a
secondary meaning3 of “prestige of services,” suggesting
that by including GRAND PRIX in the proposed mark, it
conveys an air of importance or aggrandizement which
requires the consumer to have a level of imagination,
thought and perception.4 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 PATENTS.COM. There, the Court discussed a

3 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.
4 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).
Ser. Nos. 77725646
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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.
Applicant also 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 rugby matches. 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 where the participants take
alternative turns attacking and defending a goal. Reply at
3. In view of this distinction, applicant maintains that a
level of imagination, thought or perception is required to
associate “Grand Prix” with head-to-head competition events
as contemplated by the recited services.
Ser. Nos. 77725646
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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.
In sum, each element of each 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
services includes “grand prix” competitions. RUGBY
identifies the sport to which the services pertain. 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 mark immediately describes, 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 in rugby.
Ser. Nos. 77725646
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Decision: The Section 2(e)(1) refusal to register is
affirmed.