Xylomen Participations, S.à r.l.

Trademark Trial and Appeal Board

Nov 19, 2015

No. 86024542 (T.T.A.B. Nov. 19, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: September 15, 2015 Mailed: November 19, 2015

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

In re Xylomen Participations, S.à r.l.
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Serial No. 86024542
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Margaret S. Millikin of Millikin Intellectual Property Law, PLLC,
for Xylomen Participations, S.à r.l.
Daniel S. Stringer, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Wellington, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Xylomen Participations, S.à r.l. (“Applicant”) seeks registration on the Principal
Register of the mark MULTI BINGO (in standard characters) for
Computer software and firmware for games of chance on
any computerized platform, including dedicated gaming
consoles, video based slot machines, reel based slot
machines, and video lottery terminals; Components for
gaming machines that generate or display wager
outcomes, namely, electric control panels, electronic
display interfaces, electric control button panels, bolsters,
namely, power amplifiers, electrical wires and computer
hardware and operating software associated therewith;
Serial No. 86024542
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Gaming software that generates or displays wager
outcomes of gaming machines; all of the foregoing sold or
leased to owners or operators of gambling places
in International Class 9; and
Gaming devices that accept a wager, namely, gaming
machines, slot machines, bingo machines, with or without
video output; Spin reel game playing equipment games
that accept a wager, namely, reel slot machine games;
Stand-alone video game machines that accept a wager;
Gaming machines, namely, devices which accept a wager;
Gaming machines that accept a wager and that are
comprised of electric control panels, electronic display
interfaces, electric control button panels and bolsters,
namely, power amplifiers, electrical wires and computer
hardware and operating software associated therewith,
sold as a unit; all of the foregoing sold or leased to owners
or operators of gambling places
in International Class 28.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that Applicant’s mark, when applied to Applicant’s goods, is merely
descriptive thereof.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm.3

1 Application Serial No. 86024542 was filed on July 31, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 The initial Office Action contained a refusal under Trademark Act Section 2(d), 15 U.S.C.
§1052(d). The refusal was continued in the Final Office Action, but was withdrawn in the
appeal brief.
3 The requirement for a disclaimer of “Bingo” was not repeated during ex parte prosecution
and is considered withdrawn.
Serial No. 86024542
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Trademark Act Section 2(e)(1) prohibits registration of a mark which is merely
descriptive of the applicant’s goods or services. 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. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). Whether a
particular term is merely descriptive is determined in relation to the goods or
services 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, 200 USPQ at 218; In re
Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). “A descriptiveness refusal is proper
‘if the mark is descriptive of any of the [goods or] services for which registration is
sought.’” In re The Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting
In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
The issue is whether someone who knows what the goods or services are will
understand the mark to directly convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Serv.
Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Assn. of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990).
Serial No. 86024542
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While a combination of merely descriptive terms may be registrable if the
composite creates a unitary mark with a separate, nondescriptive meaning, In re
Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968), the mere
combination of descriptive words does not necessarily create a nondescriptive word
or phrase. If each component retains its descriptive significance in relation to the
goods or services, the combination results in a composite that is itself descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004).
Based on the evidence of record, we find that MULTI BINGO is merely
descriptive of Applicant’s gaming machines, bingo machines, and the related
software, firmware and gaming equipment that allow players to play multiple
games of chance (i.e., bingo) at one time. The submitted dictionary evidence shows
that the meaning of the term “multi” is “many; much; multiple”4 and that it is used
to refer to “more than one” or “more than two.”5 The definition of “bingo” is “a game
of chance in which each player has one or more cards printed with differently
numbered squares on which to place markers when the respective numbers are
drawn and announced by a caller.”6 The dictionary definitions alone are sufficient to
show that the composite word mark MULTI BINGO immediately conveys to owners
and operators of gambling places that Applicant’s gaming machines and related
software enable players to play multiple, simultaneous, bingo games.

4 From http://education.yahoo.com, attached to first Office Action dated November 18, 2013.
5 Id.
6 Id.
Serial No. 86024542
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Applicant does not dispute that the individual terms have descriptive
significance as used in connection with the identified goods. Applicant makes the
argument that because there is no dictionary definition for “multi bingo” per se, the
mark is not merely descriptive as a whole. However, the fact that a descriptive word
or term is not found in the dictionary is not controlling on the question of
registrability. In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004)
(GASBUYER is merely descriptive of providing on-line risk management services in
the field of pricing and purchasing decisions for natural gas); In re Orleans Wines,
Ltd., 196 USPQ 516, 517 (TTAB 1977) (BREADSPRED for jellies and jams is
merely descriptive). The test is whether the merely descriptive components retain
their merely descriptive significance in relation to the goods when the mark is
considered as a whole; if they do, the resulting combination is also merely
descriptive. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1371; In re King Koil
Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE
MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where
the evidence showed that the term “breathable” retained its ordinary dictionary
meaning when combined with the term “mattress” and the resulting combination
was used in the relevant industry in a descriptive sense); In re Tower Tech, Inc., 64
USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely descriptive of commercial
and industrial cooling towers); In re Associated Theatre Clubs Co., 9 USPQ2d 1660,
1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of
theater ticket sales services, because such wording “is nothing more than a
Serial No. 86024542
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combination of the two common descriptive terms most applicable to applicant’s
services which in combination achieve no different status but remain a common
descriptive compound expression”).
In addition, the Examining Attorney has made of record several pages from
third-party websites showing use of the terms “multi and multiple” to describe
bingo games, bingo game machines, or bingo game rooms where a single player can
play multiple games of bingo at once. Representative examples include:
CoinoExpress.com (offering a bingo redemption machine that resembles a
pinball machine under the designation Multi Bingo; players can play four bingo
frames at once);7
OnlineBingoLady.com (operating a U.S. Bingo site called “Cyber Bingo” with
“the following bingo rooms: …Diamond Multi-Bingo Room…Paradise Multi-Bingo
Room….”);8
About.com (posting an article that explains how to play bingo, noting that “many
casinos offer games that allow gamblers to play multiple cards….”);9
Apponic.com (providing free downloadable software for making bingo cards,
including one with the option of printing “multi bingo cards in one paper to save
money”);10

7 At http://www.coinopexpress.com, attached to Office Action dated November 18, 2013.
8 Id., at http://www.onlinebingolady.com.
9 At http://casinogambling.about.com; attached to Final Office Action dated June 6, 2014.
10 Id., at http://bingo-card-maker.apponic.com.
Serial No. 86024542
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Bingo Mania.com (explaining how to enter a bingo “room” and the “Auto Daub
On & Off” feature, which is “on” by default, “so you can have your cards
automatically daubed while you chat and play in multiple bingo rooms”);11 and
InsideGamingDaily.com (discussing a future release of “Zyngo Bingo” that will
allow players to play up to six cards at once and remarking that “the multi bingo
card-toting grandma on Zyngo Bingo is about to put some serious money on the
table.”).12
These websites serve to corroborate the dictionary definitions in showing that
Applicant’s prospective consumers, when encountering Applicant’s mark MULTI
BINGO in connection with bingo gaming machines and related software, firmware,
and gaming equipment, will immediately perceive that the mark describes a feature
or characteristic of the goods, namely, that they allow players to play bingo using
more than one card at one time. In addition, Applicant identified FBM Gaming as
its authorized seller or licensee of “Multi Bingo” games,13 and FBM Gaming
advertises “Multi-Bingo” as a bingo game where players can play up to 20 cards at
one time.14 The game is illustrated on FBM Gaming’s website:

11 Id., at http://www.bingomania.com.
12 At http://www.insidegamingdaily.com; attached to Office Action dated November 18,
2013.
13 14 TTABVUE 28.
14 At http://www.fbmgaming.com; attached to December 24, 2014 denial of Applicant’s
request for reconsideration.
Serial No. 86024542
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15

Applicant, in urging reversal of the refusal, maintains that its mark is
suggestive and warrants registration. Applicant contends that because “multi
bingo” could have many different meanings, the message conveyed by the mark is
too vague for the mark to be considered merely descriptive, relying on In re TMS
Corp. of the Americas, 200 USPQ 57 (TTAB 1978). There, the Board held that
“thought, imagination and perhaps an exercise in extrapolation” was needed to
discern a connection between the mark THE MONEY SERVICE and the financial
services of transferring funds to and from a saving account to a retail store where a
customer seeks to make a purchase (essentially, debit card services). The mark did
not immediately describe a feature of the services because many types of services
provide “money”; the word “money” was “too broad” to immediately describe
applicant’s transfer services. The term “multi,” on the other hand, is not so broad as
to require mature thought to discern the nature of the goods. The record establishes
a readily understandable connection between the mark MULTI BINGO and the

15 Id.
Serial No. 86024542
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goods. See, e.g., In re Broco, 225 USPQ 227, 229 (TTAB 1984) (“THE LIBRARY
COMPANY” as applied to service of providing library supplies to libraries held
merely descriptive; term “library” not so broad as to suggest a number of
possibilities). Moreover, the alternate meanings suggested by Applicant are
themselves descriptive; for example, that more than one person can play, that more
than one game is played on the same card, or more than one bet is placed or prize
awarded. Any of these possible meanings of “multi bingo” would be immediately
discerned were the goods to include such characteristics. Thus, none of these
possible meanings are so vague that it is not clear what information is being
conveyed about the goods. The fact that several slightly different connotations are
possible does not make the term any less descriptive or more registrable. As noted
above, each of the possibilities identified by Applicant involves features of playing a
game of bingo that could occur in multiples.
Moreover, the fact that Applicant’s identified customers are “owners or operators
of gambling places” means they are knowledgeable about the features of competing
bingo machines and the fact that some machines are enabled with a feature that
allows for multiple play. The mark MULTI BINGO, when viewed by such
sophisticated consumers, will immediately convey the information that Applicant’s
goods enable multiple games of bingo to be played at one time.
The combination of terms in Applicant’s mark does not create a unitary mark
with a nondescriptive or incongruous meaning. We have no doubt that, upon seeing
the mark MULTI BINGO as a whole in connection with bingo machines and the
Serial No. 86024542
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software, firmware and bingo game playing equipment identified in the application,
Applicant’s customers would immediately, and without further conjecture, be
apprised of a central aspect of the goods, namely, that they allow players to play
multiple games of bingo at the same time.
After careful consideration of the record evidence and arguments presented, we
conclude that Applicant’s mark is merely descriptive of a feature, function, or
characteristic of Applicant’s identified goods.
Decision: The refusal to register Applicant’s mark MULTI BINGO under
Trademark Act Section 2(e)(1) is affirmed as to the goods in both International
classes 9 and 28.