Flowplay, Inc.

Trademark Trial and Appeal Board

Jul 2, 2021

88470909 (T.T.A.B. Jul. 2, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: July 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Flowplay, Inc.
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Serial No. 88470906 and 884709091
_____

John Crosetto of Buchalter, A Professional Corporation,
for Flowplay, Inc.
Edward Germick, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Zervas, Goodman and Hudis,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Flowplay, Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark ARCADE.IO (application Serial No. 88470909) and the

1 Because the issues presented in both appeals are the same and the arguments and evidence
advanced by Applicant and the Examining Attorney are nearly identical in each case, we
hereby sua sponte consolidate these appeals. See, e.g., In re S. Malhotra & Co., 128 USPQ2d
1100, 1102 (TTAB 2018) (Board sua sponte consolidated two appeals). Unless otherwise
stated, all references to the briefs and evidentiary record are to application Serial No.
88470906.
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combined mark (application Serial No. 88470906).2 Applicant filed both
applications on June 12, 2019 and claims a bona fide intention to use each mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), for the
following goods and services, as originally identified in its applications:
clothing, namely, hats, shirts, t-shirts, sweatshirts in
International Class 25;
provision of digital content from the internet, namely,
providing an internet website portal featuring information
in the field of computer software in International Class 41;
and
platform as a service (PAAS) featuring computer software
platforms for enabling internet based applications in
International Class 42.3
Pursuant to a requirement by the Examining Attorney,4 Applicant merged its
International Class 41 services into International Class 42, amending the
International Class 42 identification of services to read as follows:

2 The application describes the mark as consisting of “a rectangle with rounded edges
encircling two solid, mirrored polygons suggestive of two back-to-back vintage arcade game
machines that are above the text ‘ARCADE.IO.’”
3 June 12, 2019 application.
4 September 17, 2019 Office Action, at TSDR 1. In addition to requiring reclassification of the
International Class 41 services, the Examining Attorney required Applicant to specify the
purpose or function of its software and its content or field of use. The Examining Attorney
also found the identification “[p]latform as a service (PAAS) featuring computer software
platforms for enabling internet based applications” unclear without specification of the
content or field of use and of what the internet-based applications do.
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Provision of digital content from the internet, namely,
providing an internet website portal featuring information
in the field of computer software; platform as a service
(PAAS) featuring computer software platforms for an
internet based exchange system for transmission, buying,
and selling of data in International Class 42.5
The Examining Attorney found the amended identification of services
unacceptable in Class 42, stating, “‘[p]rovision of digital content from the internet,
namely, providing an internet website portal featuring information in the field of
computer software’ … is too broad and could include goods in other international
classes … [because] it does not state the nature of the information provided, which
affects the classification,” citing Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6).6
Applicant thereafter further amended its International Class 42 identification of
services to:
Provision of digital content from the internet, namely,
providing an internet website portal featuring information
in the field of computer software in the nature of
application programming interface (“API”) for the creation
and development of online content; platform as a services
(PAAS) featuring computer software platforms for an
internet based exchange system for transmission, buying,
and selling data.7
Turning to the pending refusals, the application for the standard character mark
stands refused on the ground that the mark is merely descriptive of a feature of the

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
5 March 17, 2020 Response to Office Action, TSDR 3.
6 April 9, 2020 Final Office Action, TSDR 1.
7 October 9, 2020 Request for Reconsideration, TSDR 3.
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International Class 42 services. Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1). The
application for the combined word-and-design mark stands refused on the ground
that Applicant has not disclaimed the term “ARCADE.IO” for the International Class
42 services because it is merely descriptive of a feature of the services. Trademark
Act §§ 2(e)(1) and 6(a), 15 U.S.C. §§ 1052(e)(1) and 1056(a). In addition, both
applications – which have identical identifications of goods and services – stand
refused because the International Class 42 services as recited are indefinite, overly
broad, and exceed the scope of the identification as set forth originally in the
application. See Trademark Rules 2.32(a)(6), 2.71(a), 37 C.F.R. §§ 2.32(a)(6), 2.71(a).
The Examining Attorney has not refused registration of the marks for the
International Class 25 goods.
After the Trademark Examining Attorney issued final Office Actions in each
application, Applicant filed appeals along with requests for reconsideration. The
Examining Attorney denied the requests for reconsideration. The Board then
resumed the appeals and set the time for filing briefs. Both Applicant and the
Examining Attorney filed briefs.
We affirm the refusal to register the standard character mark, affirm the
requirement for a disclaimer of “ARCADE.IO” in the combined word-and-design mark
application, and affirm the requirement for a more specific identification of services
in both applications.
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I. Evidentiary Issue
Applicant submitted material with its appeal briefs that was not made a part of
the evidentiary record. See Exhibit A to each appeal brief.8 The evidentiary record
should be complete prior to filing an ex parte appeal to the Board. Trademark Rule
2.142(d); 37 CFR § 2.142(d). However, we consider this evidence to be of record
because the Examining Attorney did not object to it and also discussed it in his briefs.
See, e.g., In re Litehouse Inc., 82 USPQ2d 1471, 1475 n.2 (TTAB 2007) (third-party
registrations submitted for first time with applicant’s appeal brief considered because
examining attorney did not object in her brief and instead presented arguments in
rebuttal of this evidence).
II. Refusal on the Ground of Indefinite Identification of Services
The first refusal we consider concerns the proffered amendment to the
International Class 42 identification of services, because the analysis of the mere
descriptiveness refusal and the disclaimer requirement require consideration of the
identification of services.
An application must specify the goods or services on or in connection with which
an applicant uses or has a bona fide intent to use the mark in commerce. 15 U.S.C.
§§ 1051(a)(2), 1051(b)(2) and 1053. Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6),
requires that the application specify the “particular” goods or services. To specify the
particular goods means to identify them in an explicit manner. TRADEMARK MANUAL

8 8 TTABVUE 15-18 (application Serial No. 88470906); 8 TTABVUE 15-18 (application Serial
No. 88470909).
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OF EXAMINING PROCEDURE (TMEP) § 1402.01 (Oct. 2018). The identification of goods
and/or services must be specific, definite, clear, accurate, and concise. See In re Societe
Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on
other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). An identification of
goods in an application may be amended to clarify or limit, but not to broaden, the
identified goods. Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a). To determine whether
a proposed amendment is within the scope of the previously-listed identification, we
look to the “ordinary meaning of the wording.” TMEP § 1402.07(a).
Applicant’s original identification in Class 41 (merged into Class 42) included the
phrase, “provision of digital content from the internet, namely, providing an internet
website portal featuring information in the field of computer software.” In response
to the Examining Attorney’s requirement to specify the nature of the “information”
provided, Applicant added “in the nature of application programming interface (‘API’)
for the creation and development of online content.”9 Applicant argues:
The phrase “in the nature of” following “providing an
internet website portal featuring information in the field of
computer software” specifically limits the type of
information to being an API for the creation and
development of online content. Prior to Applicant’s
amendment and inclusion of the phrase “in the nature of,”
the description of “providing an internet website portal
featuring information in the field of computer software”
covered all types of information regarding all types of
computer software. However, Applicant’s proposed
amendment limits the types of information in the field of
computer software specifically to an API for the creation
and development of online content. Thus, Applicant’s
description of services no longer covers all types of

9 October 9, 2020 Request for Reconsideration, TSDR 3.
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information regarding all types of computer software, but
a specific type of computer software, that is, an API for the
creation and development of online content.10
The addition to the identification of services does not concern “information” but
pertains to an additional service, that of proving an application programming
interface or API. “API” is defined in OXFORD LANGUAGES (accessed on google.com) as
“a set of functions and procedures allowing the creation of applications that access
the features or data of an operating system, application, or other service.”11 An entry
from mulesoft.com in the Google search results of Exhibit A to Applicant’s brief states,
“API is the acronym for Application Programming Interface, which is a software
intermediary that allows two applications to talk to each other. Each time you use an
app like Facebook, send an instant message, or check the weather on your phone,
you’re using an API.”12 Applicant’s explanation that “Applicant’s proposed
amendment limits the types of information in the field of computer software
specifically to an API for the creation and development of online content” does not
make sense. An “application programming interface (‘API’) for the creation and
development of online content,” or, in other words, “a set of functions and procedures
for the creation and development of online content,” cannot be “information.”
Applicant has not offered any valid explanation why its proposed addition is
“information.”

10 Applicant’s appeal brief, 8 TTABVUE 12.
11 Id., 8 TTABVUE 16-18.
12 Id., 8 TTABVUE 17.
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We agree with the Examining Attorney that “[t]he proposed amendment … adds
a service (an API/software) that exceeds what would be logically encompassed by the
original identification (provision of information), resulting in an incongruous
identification that still does not specify the type of “information” provided (i.e.,
consumer information or technical information).”13 Applicant’s identification of
services set forth in its Request for Reconsideration is unacceptable. Thus Applicant
is left with its International Class 42 identification of services set forth in its March
17, 2020 Response:
Provision of digital content from the internet, namely,
providing an internet website portal featuring information
in the field of computer software; platform as a service
(PAAS) featuring computer software platforms for an
internet based exchange system for transmission, buying,
and selling of data.
Because Applicant has not specified what information it provides, and because the
services could be placed in a different International Class depending on the services,
the identification of services set forth in its March 17, 2020 Response is indefinite and
the requirement for more specificity in the identification of services in both
applications is affirmed.
III. Application Serial No. 88470909 – Mere Descriptiveness Refusal
A term is merely descriptive of goods or services within the meaning of Section
2(e)(1) “if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Chamber of

13 Examining Attorney’s brief, 10 TTABVUE 16.
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Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007)); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538,
543, 40 S. Ct. 414, 64 L. Ed. 705, 1920 Dec. Comm’r Pat. 471 (1920) (“A mark is merely
descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the mark.”)), cited with approval in
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). A term
need not immediately convey an idea of each and every specific feature of the goods
or services in order to be considered merely descriptive; rather, it is sufficient that
the term describes one significant attribute, function or property of the goods or
services. Chamber of Commerce, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)); In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987).
Where a proposed mark consists of multiple words, the mere combination of
descriptive words does not necessarily create a non-descriptive expression. In re
Phoseon Tech. Inc., 103 USPQ2d 1822, 1826 (TTAB 2012) (SEMICONDUCTOR
LIGHT MATRIX merely descriptive for light curing systems and UV curing systems).
If each component retains its merely descriptive significance in relation to the goods
or services, the combination results in a composite that is itself merely descriptive
and unregistrable. In re Oppedahl & Larson, 71 USPQ2d at 1371. On the other hand,
if a proposed mark comprising a combination of merely descriptive components
Serial No. 88470906 and 88470909
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creates a unitary word or phrase with a unique, non-descriptive meaning, or if the
composite has an incongruous meaning as applied to the goods or services, the mark
is registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 385 (CCPA
1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363, 364-65
(TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”); see also In re EBS Data Processing, 212 USPQ 964, 966 (TTAB
1981) (explaining composite versus unitary mark in context of disclaimer
requirement).
A. Evidence
The Examining Attorney submitted evidence to support his refusal, including the
following:
● Submitted with September 17, 2019 Office Action

• A definition from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE defining “arcade” as “[a] commercial establishment featuring an
array of large mechanical or electronic games, such as pinball machines or
video games, that charge players money before each game” and “[a] section
within another establishment, as at a bowling alley or movie theater, that
features such games” (TSDR 2-3);

• Applicant’s “Privacy Policy” accessed at arcade.io/privacy-policy.html
(TSDR 4-14);

• flowplay.com/games webpages stating, “With flagship games Vegas World
and ourWorld, alongside hundreds of in-game titles, we’re dedicated to growing
our suite of virtual worlds and immersive games to reach new audiences”;
“Vegas World is a free-to-play social casino world where players can enjoy more
than 45 different casino-style games like slots, poker, blackjack, bingo, roulette
and more”; and “ourWold is an online virtual world specifically designed to
offer teen girls a place to getaway, with over 200 in-world games ranging from
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puzzles to action alongside social environments such as dance clubs and coffee
shops.” (TSDR 17); and

• Information on “.IO” from name.com and explaining “5 benefits offered by
.IO domain names.” (TSDR 19-20).

● Submitted with April 9, 2020 Office Action

• Definitions from the dictionary noted above of various additional terms,
including “smile” and “permission” (TSDR 2-10).

● Submitted with November 6, 2020 Denial of Applicant’s Request for
Reconsideration

• addictinggames.com (TSDR 2)

What are io games?

To avoid any confusion before we get started, we should be
clear that an io game doesn’t need to have the .io domain
at the end of its name. The .io domain is just the country
code top-level domain for the British Indian Ocean. Much
like how Canada uses .ca or India uses .in. The two first
and biggest io games --Agar.io and Slither.io-- both used .io
as their domain of choice, so, it became the de facto
standard for similar games and eventually morphed into
the name of the genre.
***
The most comprehensive definition of an io game we’ve
come up with is that an io game is a free to play, browser-
based, casual game which has a multiplaycr component,
very few mechanisms, and minimalist graphics.
• crazygames.com (TSDR 7, 9)

Properties of .io games

•.IO games come in all shapes and colors, but they
do have some shared properties:
• Players grow by eating or otherwise killing other
players. By growing, they rise on the leaderboard.
• The game takes place in an arena. This arena can
be either fixed-size or shrinking ….
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• Almost all games use HTML5 technology to run in
any modern browser.
• The games are fiercely competitive and feature
real-time multiplayer gameplay.

***

How Many io Games Are There?
As of right now, there are a few hundred. I was
surprised, as with their pure nature and casual play,
I thought that the market would be flooded with at
least a hundred more titles. Just because the
number is lower right now, don’t think it will stay
there longer.
Game developers are always throwing ideas out into
the universe, and I expect that io games will grow in
the library and popularity in the coming months. I’m
talking potentially thousands by the end of 2020.
•agar.io (TSDR 12)
This is considered one of the most popular 10 titles out
there. You’ll love this description.
In Agar.io, you are different cells, trying to grow more cells
in a petri dish.
• arcadespot.com (TSDR 102)
What are IO Games?
IO games are multiplayer games that contain the word “io”
within the game title. The game is typically hosted on a .io
domain name. The .io is a top-level domain for the British
Indian Ocean territory, however it is increasingly being
used as a generic extension, for new startups and real-time
games. These games feature battles between players in a
massive arena where players have to compete against each
other to gain points. The top played .IO games are Bonk.io
and Slither.io.
•screenrant.com (TSDR 36)
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15 Best .IO Games Worth Wasting Your Time On
With hundreds of IO games out there, it’s hard to choose
which one to play.
•freewebarcade.com (TSDR 71)

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•PNPArcade.com (TSDR 73)

• webarcade.net (TSDR 80)
If life seems to be quite stressful and boring for you and you
are looking for means to break away from it, then Web
Arcade will prove to be extremely beneficial for you. At Web
Arcade, we offer you a collection of website links, where you
can play an extensive range of web arcade games.
***
Arcade games would remain the favourite of many players
out there. The fact that they are extremely fast-paced
makes them engaging and at the same time, they also test
one’s gaming skills to the fullest. Web Arcade is one of
those sites where you’ll be able to get your dosage of arcade
games anytime, anywhere, as long as you are connected to
the internet. Through our page, you’ll find varieties of
advantages that would make you want to stick with us and
the games were provided. Here are some of the benefits
that will surely convince you to have fun on our site.
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• n-arcade.io (TSDR 95-98)
Offering, inter alia, Litemint.io, Snowball.Io, Zaper.io, Hole.io,
Krunt.io, Kazap.io, Wilds.io, Warbob.io, GunFigh.io and Cartic.io.
• free80sarcade.com (TSDR 83)

Applicant submitted the following evidence and information:
• Principal Register third-party registration records including records for the
following marks, without any disclaimed matter (TSDR 8, 9 and 12):14

14 The additional third-party registrations not listed here that Applicant submitted are not
relevant because they are for different marks or they cover services or goods unrelated to
Applicant’s identified services. See i.am. symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
Serial No. 88470906 and 88470909
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Mark Reg. No. Goods/Services
HOLE.IO 5670102 Computer game software for use on mobile phones
KINFE.IO 5953594 Recorded computer game programs; Computer
operating programs, recorded; Recorded computer game
software; Downloadable computer game software;
Downloadable image file containing artwork, text,
audio, video, games and Internet Web links relating to
sporting and cultural activities
BEETLES.IO
and design
5910118 Providing online non-downloadable game software in
the nature of amusement games, recreational games,
action games, role playing games, strategy games, real-
time strategy games, shooting games, fight technology
games, education games, puzzle games, racing games,
music games, sports games, simulation games,
adventure games, love games, massively multiplayer
online role-playing games, all of the aforementioned
game software excluding casino games and gambling
games.

1751 (Fed. Cir. 2017) (disregarding third-party registrations for goods in other classes where
the proffering party “has neither introduced evidence, nor provided adequate explanation to
support a determination that the existence of I AM marks for goods in other classes ...
support[s] a finding that registrants’ marks are weak with respect to the goods identified in
their registrations”); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-party
registrations for goods that appear to be in fields which are far removed from the goods at
issue are of limited probative value).
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• Two of Applicant’s webpages:
15

15 March 17, 2020 Response to Office Action Exh. C, TSDR 23. Applicant characterizes its
submission in Exhibit C as a brochure advertising a beta trial of some of the services claimed
by Applicant. Id., TSDR 5.
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16
• Answers to the Examining Attorney’s request for information:
1. Are the services going to be used in connection with online computer
games? If so, how?

The Applicant’s computer software provides an application
programming interface for the development and provision of online
entertainment including the creation of user profiles, account
management, social communities and networks, management of virtual
currencies and goods, online chat sites, messaging, and matchmaking.

2. Will applicant’s online portal provide users access to video games or
other games?

The Applicant’s services continue to be in development but are
intended for use by third parties to provide a platform for the
distribution of the third party’s online entertainment services to
consumers.

3. Will applicant provide any of its services online at www.arcade.io?

As noted, the Applicant’s services are under development. The
website www.arcade.io is a beta site with a brief description of the
services Applicant is contemplating providing.17

16 Id., TSDR 24.
17 October 9, 2020 Request for Reconsideration, TSDR 5-6.
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B. Analysis
The Examining Attorney maintains that the word ARCADE is descriptive of a
purpose of Applicant’s services because these services can be used to create an online,
or virtual, ARCADE composed of internet-based computer games.18 He adds that
Applicant’s services are intended “for the creation of what can be described as an
online, or virtual, ARCADE, because they can be used for not only creating online
games, but for grouping them together into an online, or virtual, ARCADE, as
evidenced by the ability of users of applicant’s services to provide a common login
and/or account ‘across portal and games.’”19 He concludes that “[c]onsumers of
applicant’s services, namely software developers, would understand that a purpose of
applicant’s services could be to create an online, or virtual, ARCADE, because the
services can be used to create games that are either accessed or grouped together.”20
Applicant, however, maintains that while API tools may be used to create
videogames, the proposed mark fails to immediately convey information regarding
the Applicant’s services. It argues that its identified services do not fit within any
definition of “arcade” in the record, and:21
Applicant seeks to register ARCADE.IO for the services
offered at www.ARCADE.IO and described in the
application (as amended), which are providing API tools for
software developers. The ARCADE.IO website does NOT
“act as an online or virtual version of an arcade,” nor does
it “feature[] an array of computer games for its customers.”

18 Examining Attorney’s brief, 10 TTABVUE 4.
19 Id., 10 TTABVUE 6-7.
20 Id., 10 TTABVUE 7.
21 Applicant’s brief, 8 TTABVUE 8.
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At most, the Mark is suggestive in that the API tools
provided can be used by software developers to create
computer games. These API tools, however, are not
videogames; they are API[ ]s for payment, virtual currency,
analytics, chats, and other functionality. … Visitors to the
eponymous website expecting to find “an online or virtual
version of an arcade” or “computer games” would be
entirely disappointed, as those features or characteristics
are not to be found. Simply put, Applicant’s website is not
an “arcade,” and more to the point, Applicant does not seek
registration for an online arcade; the applied-for services
are API tools for computer programmers.22
As discussed above, Applicant’s operative International Class 42 identification of
goods set forth in the March 17, 2020 Office Action Response does not include the
references to API. Thus its arguments regarding API tools are misdirected.
Based on the evidence, we agree with the Examining Attorney that the proposed
mark immediately identifies a feature of the March 17, 2020 services.
Various websites mentioned above refer to a certain type of game playable on the
Internet as an arcade game. See, e.g., webarcade.net (“Web Arcade is one of those
sites where you’ll be able to get your dosage of arcade games anytime, anywhere, as
long as you are connected to the internet”);23 and free80sarcade.com (“Play Classic
80’s Arcade Games”). The term “arcade” as it appears in Applicant’s proposed mark
therefore evokes “arcade,” defined as “[a] commercial establishment featuring an
array of large mechanical or electronic games, such as pinball machines or video
games, which charge players money before each game.” It is more specific, however,
to “arcade,” as in a “video arcade” used in the electronic context. “Video arcade” is

22 Id., 8 TTABVUE 7.
23 November 6, 2020 Denial of Request for Reconsideration, TSDR 80.
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defined as “a place with many video games”24 and “video game” is defined as “an
electronic game in which players control images on a video screen.”25 We thus find
that Applicant’s “provision of digital content from the internet, namely, providing an
internet website portal featuring information in the field of computer software”
encompasses the provision of information in the field of computer software pertaining
to arcade games which are accessible on an internet website portal, such as
information regarding the arcade games found at freewebarcade.com and
PNPArcade.com.
We now turn to the term “.IO.” The evidence from addictinggames.com indicates
that .IO is a domain, and that .IO games are free to play, browser-based, casual games
with a multiplayer component, very few mechanisms and minimalist graphics.26 The
crazygames.com webpage indicates that such games are fiercely competitive and
feature real-time multiplayer gameplay, and that a “few hundred” of such games
exist.27 Thus, we find that the term “.IO” is a domain indicator which identifies games
with various features or characteristics playable on the Internet.

24 From https://www.merriam-webster.com/dictionary/video%20arcade, accessed on June 15,
2021. We take judicial notice of this definition. The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
25 From https://www.merriam-webster.com/dictionary/video%20game, accessed on June 15,
2021. We also take judicial notice of this definition.
26 November 6, 2020 Denial of Request for Reconsideration, TSDR 7, 9.
27 Id. at TSDR 2.
Serial No. 88470906 and 88470909
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The three Principal Register registrations containing the term “.IO” without a
disclaimer submitted by Applicant are not persuasive because they are too few to be
persuasive and the Examining Attorneys who allowed these marks to register may
have believed the marks to be unitary. Each case, however, must be decided on its
own facts and the Board is not bound by prior decisions involving different records.
See In re Nett Designs, Inc., 236 F. 3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001);
In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014), cf. In re Shinnecock Smoke
Shop, 571 F.2d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-
party registrations should have been refused registration under section 1052(a), such
errors do not bind the USPTO to improperly register Applicant’s marks.”). Further,
mere descriptiveness is determined based on the evidence of record at the time a
registration is sought. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064
(TTAB 2011).
Having concluded that “ARCADE” and “.IO” both identify a feature or
characteristic of Applicant’s services, we now consider whether the combination of
the two terms creates a unitary word or phrase with a unique, nondescriptive
meaning, or if the composite has an incongruous meaning as applied to the goods or
services, and hence is registrable. Applicant has not identified any unique,
nondescriptive or incongruous meaning for the combination of the two terms, and we
know of none. We find that the commercial impression of the marks is that it is simply
a combination of the term “ARCADE” and the domain indicator “.IO.”
Serial No. 88470906 and 88470909
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Applicant mentions the Supreme Court’s decision in U. S. Patent & Trademark
Office v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020), which
addressed genericness in the context of a generic term combined with the top level
domain “.com”. Applicant argues:
[T]he reasoning in Booking.com applies whether a mark is
generic, descriptive, suggestive or otherwise. The Supreme
Court reasoned that because only one entity can own and
control a domain at a time, inclusion of a domain indicator
within a mark serves as a source identifier because
consumers will infer that the mark refers to a specific
entity. … Further, the Supreme Court held that a domain
identifies a specific and unique owner because only one
person or entity can own a domain. Accordingly, contrary
to the Examiner’s reasoning that “IO” renders Applicant’s
Mark unregistrable, a top level domain such as “IO” used
in combination—even with a generic term—is capable of
functioning as a source identifier. Under Booking.com,
even if the term “ARCADE” were generic (which it is not),
the combination with the “IO” gTLD would support
registration of Applicant’s Mark. Here, because “ARCADE”
or “IO” are not generic terms for Applicant’s services, but
are instead suggestive (as explained above), the Mark read
in its entirety serves as a source identifier.28
There are two problems with Applicant’s argument and reliance on Booking.com.
First, Booking.com involved questions of genericness and not mere descriptiveness,
as is the case here, and, as discussed above, “ARCADE.IO” is not a suggestive term
but rather is a merely descriptive term. Second, Booking.com does not state that any
gTLD is inherently distinctive. “The Supreme Court rejected a per se rule that a
‘generic.com’ term is always generic, but also rejected a rule that such a term is

28 Applicant’s brief, 8 TTABVUE 11-12.
Serial No. 88470906 and 88470909
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automatically non-generic.” In re GJ & AM, LLC, 2021, USPQ2d 617, at *2 (TTAB
2021) (citing Booking.com, 2020 USPQ2d 10729 at *7).
Applicant further argues that its mark is not merely descriptive because “not only
do the letters ‘IO’ have multiple meanings, but that they do not call any specific good
or service to mind: they just sound cool.”29 Descriptiveness, however, is considered in
relation to the relevant services. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have
other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf,
LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods,
Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)). “It is well settled that so long as any one
of the meanings of a term is descriptive, the term may be considered to be merely
descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018)
(quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). In the context of
Applicant’s services, potential purchasers such as software developers, would
immediately recognize the significance of “.IO” and would not just think it “sounds
cool.”30
Thus, we conclude that ARCADE.IO is merely descriptive of a feature or
characteristic of Applicant’s International Class 42 services. Applicant states that
any doubts must be resolved in its favor. We do not have any doubts about our
conclusion.

29 Id., 8 TTABVUE 10.
30 See, e.g., webpages from addictinggames.com, crazygames.com and agar.io. November 6,
2020 Denial of Request for Reconsideration, TSDR 2, 7, 9 and 12.
Serial No. 88470906 and 88470909
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IV. Application Serial No. 88470906 – Disclaimer Requirement
Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1),
15 U.S.C. § 1052(e)(1), and, therefore, are subject to disclaimer if the mark is
otherwise registrable. Thus, an Examining Attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise registrable. Trademark Act
Section 6(a), 15 U.S.C. § 1056(a). Failure to comply with a disclaimer requirement is
itself grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185
USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re
National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1968).
Because we have found that the term ARCADE.IO is merely descriptive of a
characteristic of Applicant’s International Class 42 services, we affirm the Examining
Attorney’s disclaimer requirement in its application for its combined mark.
Decision: The refusals to register both of Applicant’s proposed marks for its
International Class 42 services are affirmed. Both applications will move forward to
await the filing of statements of use for the surviving International Class 25 goods.