Gridiron Enterprises, Inc.

Trademark Trial and Appeal Board

Jun 18, 1997

EX (T.T.A.B. Jun. 18, 1997)

THIS DISPOSTION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
Hearing: Paper No.
June 25, 1996 JER
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gridiron Enterprises, Inc.
________
Serial Nos. 74/249,309; 74/249,318;
and 74/249,469
_______
John P. Bouxsein, III and William L. Niro of Niro, Scavone,
Haller & Niro and Mark M. Newman of Barnes & Thornburg for
applicant.
Michael C. Mason, Trademark Examining Attorney, Law Office
101 (R. Ellsworth Williams, Managing Attorney).
_______
Before Rice, Hanak, and Hairston, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
Applications have been filed by Gridiron Enterprises,
Inc. to register, on the Principal Register under the
provisions of Section 2(f) of the Trademark Act of 1946, 15
U.S.C. §1052(f), the designations ARENA FOOTBALL,1 ARENA
FOOTBALL and design,2 as shown below (in reduced size),

1 Serial No. 74/249,469. Applicant has disclaimed the word
FOOTBALL apart from the mark as shown.
2 Serial No. 74/249,309. Applicant has disclaimed the word
FOOTBALL and the design of a football apart from the mark as
shown.

and ARENA,3 all for entertainment services in the nature of
organizing, scheduling and conducting football games. Each
of the applications was filed on February 25, 1992, with a
Section 2(f) claim of distinctiveness, and in each applicant
claims first use and first use in commerce on April 27,
1986.
With respect to the designations ARENA FOOTBALL and
ARENA, registration has been finally refused under Section
2(e)(1) of the Act, 15 U.S.C. §1052(e)(1), on the ground
that the designations, as used in connection with
applicant's services, are merely descriptive of them and
have not become distinctive but are, instead, generic.4 For

3 Serial No. 74/249,318.
4 Registration was also initially refused, in all three
applications, under Section 2(d) of the Act, 15 U.S.C. 1052(d),
on the ground that applicant's designations, as used in
connection with its services, so resemble the marks in two cited
the same reasons, the Examining Attorney has made final a
requirement, with respect to the designation ARENA FOOTBALL
and design, that applicant disclaim the words ARENA FOOTBALL
apart from the mark as shown.5 Applicant has appealed.
Prior to the filing of briefs, the three cases were
consolidated at the request of the Examining Attorney.
Accordingly, they were briefed and argued together, and are
being decided together in a single opinion.
The issues to be determined herein are (1) whether the
terms ARENA FOOTBALL and ARENA are generic with respect to
applicant's services, and, if not, (2) whether they have
become distinctive of those services.6

registrations as to be likely to cause confusion, or to cause
mistake, or to deceive. The two cited registrations were
Registration No. 1,540,429, issued May 23, 1989 from an
application filed October 7, 1987, for the mark ARENABALL for a
magazine on the subject of indoor football and for organizimg
and promoting football exhibitions, and Registration No.
1,602,917, issued June 19, 1990 from an application filed
January 20, 1988, for the mark ARENABOWL for organizing and
promoting football exhibitions. The refusal to register on this
ground was withdrawn when applicant claimed ownership of the
registrations. A refusal to register all three designations on
yet another ground, namely, lack of ownership of the
designations, was also eventually withdrawn, leaving only the
refusal described above to be determined herein.
5 Applicant has disclaimed only the word FOOTBALL and the
football design.
6 There is no question that the terms ARENA FOOTBALL and ARENA
are merely descriptive as used in connection with applicant's
services. In recognition of the merely descriptive nature of
these terms, applicant sought registration under the provisions
of Section 2(f) from the outset. The inclusion of a claim of
acquired distinctiveness in an application as originally filed
constitutes, in effect, a concession by applicant that the
designation it seeks to register is merely descriptive of its
goods or services. See In re Leatherman Tool Group, Inc., 32
USPQ2d 1443 (TTAB 1994), and cases cited therein. In the same
vein, applicant has stated, on page 1 of a response filed on
August 5, 1994 in application Serial No. 74/249,318 (the
application to register ARENA), "Applicant has already admitted
In each application, applicant has submitted as
specimens copies of a brochure which bears, inter alia, the
designation ARENA FOOTBALL and design (sought to be
registered in application Serial No. 74/249,309) and the
title "1991 MEDIA GUIDE." The brochure includes certain
background information (on pages 4-5, under the headline
"ARENA FOOTBALL HISTORY") which is helpful in understanding
these cases. Portions of this text are quoted below:
In 1985, Jim Foster brought life to an intriguing
idea he had nurtured since early 1981. Foster, a
successful pro football marketing management
veteran with experience in the NFL, USFL, American
Football in Europe and the Major Indoor Soccer
League, had created a unique new game of indoor
pro football that did not imitate the established
outdoor game.
"If they can play soccer indoors, why not
football?" reasoned Foster. While watching his
first indoor soccer game in Madison Square Garden
in 1981, Foster pulled a large manilla envelope
from his briefcase, drew the outline of a
miniature football field over a hockey rink and
penciled in notes on what would evolve into a
full-fledged concept of a curiously new and
exciting adaptation of America's favorite team

that as applied to football competitions, 'arena' is descriptive
as the competitions are or could be played in an arena and thus
submitted evidence of distinctiveness." We agree. A mark is
merely descriptive if, as used in connection with the goods or
services in question, it describes, i.e., immediately conveys
information about, an ingredient, quality, characteristic,
feature, etc. See In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978), and In re Eden Foods Inc., 24 USPQ2d
1757 (TTAB 1992). Applicant's services are identified in its
applications as entertainment services in the nature of
organizing, scheduling and conducting football games. The fact
that those football games are or could be played in an arena
(indeed, the record is replete with references to the playing of
these games in arenas) is a significant characteristic or
feature of the services. Under the circumstances, we have no
doubt that the terms ARENA FOOTBALL and ARENA are merely
descriptive of applicant's services.
sport. He began with a proven concept, American
football, and, knowing there was no room for
competition with the NFL, decided instead to
hypothesize an indoor and summertime hybrid. He
applied the best of the gridiron game with new
and interesting twists: a 50-yard field, eight
vs. eight, single-platoon, drop kicks and rebound
nets.
In 1985, after the rise and fall of the USFL,
Foster decided to move forward with the
development of indoor football. The first step
was to make sure that football could be executed
indoors on a much smaller playing surface. ...
The next step was to measure response from the
public and sports media through a test game in
April, 1986 in Rockford, Illinois. The initial
response was excellent. A second "showcase"
game in Chicago, on Feb. 26, 1987, was
enthusiastically received by 8,200 fans, and that
set the stage for the full-fledged rollout of
Arena Football in June, 1987.
* * *
The first year a small staff of league employees
successfully took an exciting new concept in pro
football to sports fans of America with the
assistance of four well-operated arenas in Denver,
Chicago, Pittsburgh and Washington D.C. The
arenas supported the effort with local marketing
and public relations. ...
* * *
... The final issuance of a U.S. patent to Jim
Foster for the Arena Football Game system on
Marh 27, 1990, made the Arena Football League
the only sports league in history to play a
patented game. This also greatly strengthened
the value of buying an Arena Football team
license and, as a result, six successful
businessmen committed, in late March 1990, to
form a stronger, reorganized league. The
future of Arena Football brightened with the
stability of the patent and the introduction of
established local ownership. ...
Arena Football delivers, in one dazzling package,
tough, gritty competition, cagey strategy and
fast-paced action that is close to the fans. ...
It is a truly different game than the NFL. ...
Arena Football has arrived. It is an emerging
summertime pro sports offering that provides
football fans with an exciting and unique indoor
air-conditioned version of their favorite game
on hot weekend summer nights.
In support of the refusal to register, the Examining
Attorney has made of record a large number (approximately
180) of representative story excerpts from the DATATIMES and
NEXIS databases, as well as an encyclopedia entry. In
addition, the Examining Attorney points to some of
applicant's own uses.
Turning first to applicant's own uses, the Examining
Attorney refers to several different items submitted by
applicant. In the specimen brochure entitled "1991 MEDIA
GUIDE," the Examining Attorney notes the following sentences
(emphasis added) which appear in a section captioned "RULES
AND REGULATIONS" appearing on pages 49-52:
There are no offensive tackles in Arena Football.
(page 49)
The average elapsed time for an Arena Football
game is about 2 hours and 15 minutes. (page 50)
Passing rules in Arena Football are the same as
in outdoor football, with one exception. (page 50)
The rules of Arena Football will be subject to
regular review and possible minor modification by
a qualified Competition and Rules Committee
appointed by the League. (page 52)
With respect to a promotional sheet submitted by
applicant,7 the Examining Attorney notes that the sheet

7 The promotional sheet was submitted in application Serial No.
74/249,469 with a request for reconsideration filed September
bears at its top applicant's designation ARENA FOOTBALL and
design and adjacent thereto the phrase "MORE THAN JUST A
GAME...It's an Event!" The Examining Attorney also points
to the following sentence (emphasis added) in the text of
the sheet: "Combining the best elements of the outdoor game
with the scoring potential of the short field, Arena
Football is thrilling fans across the country, and around
the world!"
Finally, applicant has submitted a number of different
issues of its ARENABALL game magazine. With respect to the
May 28, 1993 Texans vs. Detroit game issue,8 the Examining
Attorney notes that page 1 bears at its top applicant's
designation ARENA FOOTBALL and design with the slogan "The
50 Yard Indoor War" immediately adjacent thereto, and that
the text below includes the sentence (emphasis added), "In
the beginning, our teams faced a difficult challenge in
attracting versatile athletes to handle the unique two-way
challenges of Arena Football." Other sentences in the
magazine to which the Examining Attorney calls attention are
listed below (emphasis added):
In 1981, Jim Foster invented Arena Football
while watching an indoor soccer game at Madison
Square Garden. (page 5)

20, 1993, and in the other two applications (where it appears as
Exhibit 2 to a declaration by Jerry B. Kurz) with a request for
reconsideration filed May 9, 1995. According to applicant's
counsel, the promotional sheet is intended for distribution to
sponsors and advertisers.
8 The issue was submitted in application Serial No. 74/249,469
with applicant's request for reconsideration filed September 20,
1993.
In 1988, sports illustrated [sic] writer, Paul
Zimmerman watched his first Arena Football game
in Chicago. After viewing the game, Zimmerman
commented to several league officials that
comparing the demands and skills of an Arena
Football player to those of an outdoor
professional football player would be.... (page
11)
But I know several NFL players who could not play
Arena Football. (page 11)
O'Hara envisions a day when there will be two
distinct seasons of Arena Football in the same
calendar year. (page 60)
... the game of Arena Football is not as easy as
it seems ... players come away amazed at the
skills that are needed to play Arena Football.
(page 60)
In addition, the Examining Attorney notes that the
"Rules and Regulations" section of applicant's ARENABALL
magazine has usages similar to those in the same section of
the 1991 MEDIA GUIDE.9
We turn next to the DATATIMES and NEXIS database story
excerpts made of record by the Examining Attorney.10 The

9 The usages cited by the Examining Attorney are not the only
such usages made by applicant in the materials of record, but
are illustrative thereof.
10 As noted above, there are approximately 180 of these
excerpts, said by the Examining Attorney to be representative of
the much larger number of excerpts found in the database
searches. Approximately 8 of the story excerpts appear to come
from foreign publications. In the absence of evidence as to the
extent of circulation, if any, of these publications in the
United States, they are not probative of the significance of
ARENA FOOTBALL and ARENA in the United States. See In re BDH
Two Inc., 26 USPQ2d 1556 (TTAB 1993). Accordingly, we have
disregarded the story excerpts that appear to be from foreign
publications. In addition, there are about 11 duplicate story
excerpts. We have considered these only once. Also, there are
approximately 10 story excerpts where the pertinent usage
appears in a headline or in the specification of the newspaper
section in which the story in question appears, and the entire
greatest number of these story excerpts contain what are, to
our eyes, generic usages. Examples of these usages are
given below (emphasis added):
...200 tags suggested by fans in a name-the-
team contest for the Washington entry in the
new sport of arena football. The Washington
Post 5/7/87
Meanwhile, Cline's firm will pursue sports
such as major-league baseball, college
football and even arena football for the
Suncoast Dome,... St. Petersburg Times
9/8/87
The KBYG schedule includes call-in sports talk
from 2 to 6 p.m. and 9 p.m. to midnight, as
well as arena football, high-school sports,...
Denver Business 10/87
This winter the NFL owners will have the
opportunity to relegate instant replay to the
garbage heap of dopey sports concepts (where
things like arena football, triathlons and
synchronized swimming belong). USA TODAY
1/20/89
There are other breaks in the year, but this is
the only time there's no other sports going
on. ... No Canadian football, no arena football,
no nothing. USA TODAY 7/13/89
Louisville someday could get another pro sports

headline or section specification is in capital letters. In
most of these, we can draw no real conclusion as to the nature
of the use. Three of the story excerpts contain usages of ARENA
FOOTBALL LEAGUE, rather than ARENA FOOTBALL. These are not
pertinent. Finally, approximately 13 of the excerpts appear to
be stories from wire services. Because these proprietary
releases are primarily circulated to newspapers and news
journals rather than to the general public, they are of very
limited probative value for purposes herein. See In re Manco
Inc., 24 USPQ2d 1062 (TTAB 1992). For purposes of simplicity,
our discussion above is based upon the remaining story excerpts
(of which there are approximately 135). We note that the usages
in the wire service excerpts are, in any event, very similar in
nature (and proportion) to those revealed in the 135 story
excerpts discussed above.
franchise, perhaps in soccer or arena football,
they said. The Courier-Journal 7/18/91
Sports programs also include arena football from
around the country and U.S. Basketball League
games. Electronic Media 8/19/91
Jaffe, 28, wrote stories about a similarly broad
range of sports, from baseball to crew to arena
football. Sports Illustrated 9/23/91
Another sport Rubens thinks would do well in
Grand Rapids is arena football, which is played
during the summer months. Grand Rapids Business
Journal 11/1/91
"Maybe they (Anaheim officials) can get an arena
football team or tractor pulls," he said of sports
options currently available. Los Angeles Times
3/8/92
... grand concrete and fiberglass circus tent
in St. Petersburg's depressed downtown, largely
empty except for exhibition sports events, arena
football, tractor pulls and concerts. The San
Francisco Chronicle 8/8/92
24,445 tickets were sold for the July 13 arena
football game, Denver vs. Tampa Bay.
St. Petersburg Times 10/4/92
... the Joe Louis Arena is perfect for
basketball, circuses, wrestling, arena football,
etc. The Detroit News 10/8/92
DeSandy said the Radisson Pontchartrain is
filling rooms next year by pushing its family
reunion business and is also using its proximity
to Cobo Hall and Joe Louis Arena as an edge in
booking guests in town because of indoor soccer,
arena football and other sporting events.
Crains Detroit Business 10/12/92
This was one of those nights when it would have
made more sense to move the Springsteen concert
to the Metrodome and have Target Center turn the
Gophers-Hoosiers into an arena football game.
Star Tribune 11/1/92
...actually hit a receiver to complete a pass --
a tricky maneuver. In retrospect, however,
it was no worse than arena football. The
Hartford Courant 12/11/92
Pittsburgh, Detroit and ourselves now have an
interest in arena football and we want to talk
about dates. The Hartford Courant 12/13/92
Among events would be arena football, concerts,
family shows, more Bandits indoor lacrosse games
and NCAA basketball games.... Buffalo News
2/17/93
The latest indoor sports failure to stumble in
Sacramento is arena football. The sport's
quick demise.... The Business Journal-
Sacramento 4/5/93
Of course, we've got real pro sports: baseball,
hockey, basketball and football - and arena
football. Orlando Sentinel Tribune 5/26/93
Its programming mix will include National
Hockey League games and college basketball, as
well as such relatively exotic sports as arena
football, beach volleyball, snow boarding and
sky-surfing. The San Francisco Chronicle
7/15/93
In addition to hockey, sports such as indoor
soccer, minor league basketball and arena football
have been mentioned as possible area tenants.
The Times-Picayune 9/14/93
... are team physicians for the Cleveland Crunch
soccer team and the Cleveland Thunderbolts arena
football team. The Plain Dealer 9/19/93
There was no practice, no preseason game, no
prefab sport such as arena football.
St. Petersburg Times 10/10/93
... he, Coffey, and others interested in making
the city exciting are talking about bringing
sports such as Triple A baseball and arena
football here. Kerski described arena football
as a game in which the football bounces off the
walls. The Hartford Courant 2/7/94
To ensure more dates, a Suns subsidiary created
professional sports franchises in arena football,
team tennis and indoor soccer to play there.
Business First - Columbus 2/14/94
Winter sports purists sometimes equate mogul
skiing to arena football. The Dallas Morning
News 2/17/94
The United States has embraced such professional
sports oddities as arena football but has yet to
latch onto a sport that has prospered for
hundreds of years. The Orlando Sentinel 5/22/94
... other summer programming is not promising
unless you enjoy roller hockey, cycling, water
sports or arena football. The last will include
three appearances by the Massachusetts
Marauders.... The Boston Globe 5/22/94
The network also will show arena football,
Canadian football and boxing. Star Tribune
8/12/94
But the Garden owners could try and attract
minor sports that are gaining a following, such
as arena football (which was tested at the
Garden in the late 1980s but failed), indoor
lacrosse and soccer and in-line roller hockey.
Newsday 9/2/94
... the emergence of new leagues and new sports
like indoor soccer, arena football and roller
hockey.... The Washington Post 9/23/94
Scheer says the coliseum's pro sports bookings
will be limited to hockey and arena football.
The Virginian-Pilot (Norfolk) 11/1/94
Welcome to stadium sailing, the latest attempt -
in the grand tradition of arena football, indoor
soccer and miniature golf - to contain outdoor
sports within four walls and a ceiling. Chicago
Tribune 1/30/95
We wanted to know if the baseball and hockey
lockouts were necessary -- they weren't -- why
such minor sports as arena football can make
money while owners of many big-league franchises
can't. Financial World 2/14/95
One new feature of interest to sports fans will
be the summer's planned introduction of arena
football. The game is played on a 50-yard field.
Omaha World Herald 4/16/95
As long as the Stampede management remembers that
this is a niche sport, creates memorable events
and avoids delusional thoughts, arena football
has a chance here. St. Louis Post-Dispatch
5/14/95
Going into the NBA and NHL playoffs, with
baseball in full bloom, the average sports fan
had 60 teams to follow. And that's not counting
arena football, roller hockey, golf, tennis,
track and field, various college and high school
sports and, for you exotics, the WWF. The San
Francisco Examiner 5/19/95
... Tampa to Orlando in 1991 - just in time to
try out for an expansion team in this bizarre
sport known as arena football. The Orlando
Sentinel 6/23/95
I wouldn't miss the Extreme Games on ESPN and
ESPN2 You'll never convince me that as a TV
sport, street luge racing is on par with arena
football. The Virginian-Pilot (Norfolk) 7/4/95
Of particular interest, in terms of generic uses, are
the following story excerpts, each of which demonstrates
generic use of ARENA FOOTBALL in connection with activities
which have no connection to applicant:
It's a Tuesday night and as part of their weekly
activity, the scouts from Troop 700 are playing
arena football in the gym at Rolling Road School
in Catonsville. The Washington Post 6/25/92
When Rick Hosea stands in the middle of his
unique, 12,000-square-foot home, he ... sees the
fun his three children and their friends have
playing soccer, basketball, football, tennis and
whatever else they can dream up on the spacious
108-by-60-foot indoor playing field. ... Travis
Hosea said he likes to invite his McNicholas
football teammates for a game of arena football.
The Cincinnati Enquirer 1/28/93
Ken Davis, supervisor of financial reporting for
American Express, plays amateur arena football in
his spare time. The Arizona Republic 1/31/93
Urban Culture reports on popularity of new Miami
(Fla)-area amateur league sport of arena football.
Miami Herald 6/20/93
The DATATIMES and NEXIS database story excerpts also
include a smaller number of examples of uses in which the
first letters of the words ARENA FOOTBALL are capitalized,
or in which the first letter of ARENA is capitalized.
Examples of uses in which both first letters are capitalized
are given below:
Arena Football, the made-for-television sport
that has been getting good ratings on ESPN,
may be coming to Los Angeles. Los Angeles
Times 7/17/87
Are football fans fanatic enough to go for a
scaled-down summer version of their favorite
sport? Apparently they are, judging from the
early success of Arena Football. So what if
the game is played indoors.... ADWEEK 11/2/87
Soon, though, he had begun serious discussions
to launch his new product. He called the
sport Arena Football. ... Last summer the
Arena Football League staged what it called a
"Preview Season." Newsday 4/30/88
Look for an announcement soon concerning
Arena Football. Jim Foster, founder of the
sport, is said to be ready to emerge with a
series of exhibitions.... Chicago Tribune
5/24/89
Like mosquitoes and ants, Jim Foster's Arena
Football just won't disappear. Foster, who
invented the sport.... Chicago Tribune 11/14/89
... today when athletes in every sport except
Arena Football make at least a million annually.
The Washington Times 6/27/90
"For Arena Football to come in there and not
do any marketing would have been quite risky,"
Foster said. St. Petersbury Times 7/5/91
That wasn't the case with Arena Football; it
was its own sport. St. Petersburg Times
7/17/91
Arena Football players certainly are not in the
sport for financial gain. Orlando Sentinel
Tribune 8/24/92
"I know the kids feel the pressure of being
defending champs," said Orrico, who succeeded
Gene Nudo, who took a position with Arena
Football. Chicago Tribune 9/6/92
It was Arena Football outdoors, records falling
like shooting stars at the Florida Citrus Bowl,
a night the Knights of the University of Central
Florida were indeed mighty .... Orlando
Sentinel 9/6/92
On a recent trip to Paris, the Orlando Predators
gave a team of Europeans a lesson in Arena
Football and a 71-22 beating. USA TODAY
12/10/92
McCombs, who also owns the Spurs, was so
positive about Arena Football he said he might
want to get back into the sport in the future.
The Hartford Courant 12/20/92
And you can't play Arena Football in the
Superdome.... I'm as sold on Arena Football as
ever. It's a sport of the future.... The
Hartford Courant 12/22/92
Right up there with Arena Football and the
ballet - the professional comedy circuit suffers
the ignominy of disinterest in New Orleans.
The New Orleans Times 2/24/93
Once the sport all others envied, baseball has
fallen on such hard times even Arena Football
gets more respect. The Phoenix Gazette 3/7/93
Arena League football is a game with an
attitude... And Arena Football apparently is a
sport/entertainment that is here to stay as it
enters its seventh season. Orlando Sentinel
Tribune 5/13/93
Most of the emphasis will be on low-spectator
sports like motorcycling, skiing, volleyball
and Arena Football.... The Atlanta Journal and
Constitution 6/8/93
The plan is to hire marketing people with
experience in minor sports such as Arena
Football, soccer and minor-league baseball,
basketball and hockey.... The Buffalo News
11/14/93
The future of Arena Football and volleyball
were also discussed at length. Amusement
Business 1/31/94
And I'm not talking pseudo-pro sports such as
Arena Football or the CFL or MISL or indoor
lacrosse. Newsday 6/26/94
Arena Football, which had a one-season
exposure in Sacramento in 1992, could be on
the way back as early as 1996 at Arco....
Sacramento Bee 3/8/9511
Examples of uses in which only the initial letter in
ARENA capitalized are listed below:12

11 There is also one instance of a mixed use, appearing in a
newspaper question and answer format. That instance is listed
below:
Q: I recently attended my first arena football game
at the Suncoast Dome.... Gary L. Gilchrist, Palm
Harbor
We went to Storm owner Bob Gries for an answer. His
reply: "... That's a big part of what we promote in
Arena Football...." St. Petersburg Times 8/7/92
12 In about half of these cases, ARENA is the first word in the
sentence. We have included examples of these uses as well, but
regard them as essentially neutral, because there is no way of
determining whether the author would have capitalized the first
letter of ARENA if the term had appeared in the middle, rather
than at the beginning, of a sentence.
... Walton is again enchanted with football
and plans to return to Arena football as long
as the new sport thrive. The New York Times
7/17/87
"Arena football gives us national exposure to
a sport that is growing in popularity and was
well-received in its first year," said Hardee's
spokesperson Jerry Singer. ADWEEK 4/25/88
Arena football is another cable sports
concoction. The Seattle Times 7/7/91
Arena football, of course. In case the sport
is unfamiliar to you.... St. Louis Post-
Dispatch 6/18/92
He drew the line at Arena football, a sport
in which his hometown also is blessed with a
franchise. Newsday 8/5/92
The Suncoast Dome is more for tractor pulls
than baseball. The biggest attraction has
been Arena football. The Sacramento Bee
8/11/92
He later was a replacement player with the
Minnesota Vikings during the 1987 strike and
also played Arena football. Chicago Tribune
10/9/92
"It's a magnificent facility," he said, noting
that it has been used for tennis matches,
basketball games, Arena football and concerts.
St. Petersburg Times 11/11/92
Other new programming includes ... more
coverage of skiing, Arena football, volleyball
and "extreme sports," such as skysurfing.
Newsday 6/8/93
After perusing the nicknames of the Big Four
in hybrid sports--World TeamTennis, Arena
football, Roller Hockey International and the
Continental Indoor Soccer League--it appears
that almost everyone was clear on that concept.
The Houston Chronicle 7/18/93
Meat and potatoes fare like pro hockey, college
basketball and Arena football will be
supplemented by a dose of the sports equivalent
of bean sprouts--windsurfing, hang gliding....
The Washington Post 10/1/93
Among "minor" sports, Arena football leads in
attendance. Average attendance in 1993 for an
Arena game was 11,533. The Arizona Republic
7/5/94
"Arena football and the sports that are played
here now through the summer don't bring a lot
of out-of-town, overnight guests. Baseball
does," she said. The Phoenix Gazette 3/10/95
The league's most valuable player in 1993,
Cooper bristles at the words "trash sport."
"Arena football is more physical, more
demanding on your body, than the NFL or
Canadian Football League," said Cooper....
The Phoenix Gazette 6/17/95
Arena football is a fast-paced, high-scoring
version of the sport played with eight players
per side on a 50-yard field. The Commercial
Appeal (Memphis) 10/1/9413

13 There are also two instances in which the term ARENA appears
at the beginning of a sentence, and the first letter thereof is
capitalized, but the designation ARENA FOOTBALL appears also in
the middle of a sentence without capitals. Because of the
nature of the use made in these two instances, listed below, we
believe that they are examples of generic use:
"Everyone from George Strait to Neil Diamond,
it seems, has played in the America West Arena
since it opened in June. Arena football, team
tennis and roller hockey have all been featured
there. ... Everything else was terrific, in
terms of concerts, arena football, team tennis,
but there's nothing like the first (basketball)
game for us," Colangelo said. The Arizona
Republic 10/19/92
Arena football, recently proposed for the Civic
Center, would provide the city's ever-deteriorating
downtown with half a dozen little jolts of energy....
Having seen arena football on ESPN -- a few minutes
here, a few minutes there, and always after
midnight.... Arena football team ownership by the
same people who own the pro basketball and hockey
The final piece of evidence relied upon by the
Examining Attorney is an entry from R. Hickok, The
Encyclopedia of North American Sports History (1992).14 The
encyclopedia entry reads, in its entirety, as follows
(emphasis in original for title, but added for text):
Arena Football
A made-for-TV sport, arena football was
invented in 1987 by James Foster, who founded
Arena Sports Ventures Un Limited to operate

teams is desirable.... The Hartford Courant 12/7/92
14 At oral hearing, counsel for applicant questioned whether
the encyclopedia entry was timely made of record. A review of
the three application files reveals that in application Serial
Nos. 74/249,309 (ARENA FOOTBALL and design) and 74/249,318
(ARENA) the encyclopedia entry was made of record with the
Examining Attorney's response to applicant's request for
reconsideration of the final refusal to register. This
submission was clearly timely. See §1207.04 of the Trademark
Trial and Appeal Board Manual of Procedure ("TBMP"). In
application Serial No. 74/249,469 (ARENA FOOTBALL), the
encyclopedia entry was made of record by the Examining Attorney
after appeal, but while the application was before the Examining
Attorney upon remand for refusal of registration on an
additional ground (subsequently withdrawn), namely, lack of
ownership. The Examining Attorney's request for remand to
assert the new ground was prompted by material submitted with
applicant's request for reconsideration and notice of appeal.
Upon remand, the Examining Attorney responded to applicant's
request for reconsideration, submitted additional NEXIS evidence
in support of the Section 2(e)(1) refusal, and asserted the new
ground of refusal. Applicant filed a response thereto, arguing
both grounds for refusal. The Examining Attorney then withdrew
the lack of ownership refusal, but continued the Section 2(e)(1)
refusal. The encyclopedia entry was submitted with this action.
Under the circumstances, we consider the encyclopedia entry to
have been timely submitted in this case also. See TBMP
§§1207.04 and 1207.05. In view of the foregoing, the Examining
Attorney's request (made at the time of the submission of the
encyclopedia entry in each case) that we take judicial notice of
the entry is moot, although we have authority to do so (see, for
example, B.V.D. Licensing Corp. v. Body Action Design Inc., 846
F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988), and In re Hamilton
Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993)) and would, if
necessary.
the Arena Football League. Arena football is
played indoors on a 50-yard field, with eight
players per team. The sport incorporates
several gimmicks, including a field-wide net
at each end of the playing area. On kickoffs
and missed field goals, the ball remains in
play when it hits the net. A dropkicked field
goal is worth four points and a dropkicked
conversion is worth two points. The league
was organized as a single corporation, with
each team owner holding a limited partnership.
A "preview season" was played in 1987, with
teams in Chicago, Denver, Pittsburgh, and
Washington and a total of just 12 games. In
1988, only Chicago and Pittsburgh remained,
but Detroit, Los Angeles, New England
(Providence), and New York were added.
Disappointed at low attendance and television
ratings, owners attempted to wrest control
of the league from Foster early in 1989, but
were unsuccessful. With teams in Chicago,
Denver, Detroit, Maryland, and Pittsburgh,
the league played another abbreviated season
that year, with a five-week schedule and three
playoff games.
This brings us to applicant's evidence, which, like the
Examining Attorney's evidence, is extensive.15 First, in
support of its claim of distinctiveness, applicant has
submitted three declarations by Jerry B. Kurz, its vice
president.16 What follows is a summary of the salient
information contained in the declarations.

15 Part of applicant's evidence bears on the ownership issue
and need not be discussed herein.
16 The first declaration was submitted along with the
applications when they were filed on February 25, 1992. The
second declaration, with updated information, was submitted more
than a year-and-a-half thereafter, in September of 1993 for
Serial No. 74/249,469, and in November of 1993 for the other two
applications. The third declaration, which pertains primarily
to the ownership issue, but also includes some updated
information in support of applicant's claim of distinctiveness,
was filed in Serial Nos. 74/249,309 and 74/249,318 in May of
1995.
The designations sought to be registered by applicant
have been in continuous use since April 27, 1986, when the
first indoor game played under the unique format and rules
created by inventor James F. Foster was played in Rockford,
Illinois. In the initial full season of games (June-August
1987), 12 regular season games and one championship game
were played using the three designations on the field
surface and in publicity materials used for games.
Sweatshirts, T-shirts, hats, and pennants bearing the
designations were sold at concession stands in the
buildings. The games were played between teams owned by
applicant's predecessor in interest in Chicago, Denver,
Pittsburgh, and Landover, Maryland. Total attendance for
the season, including the championship game, was 145,000.
Gate receipts for that season, together with money earned
from sales of licensed merchandise, endorsements,
sponsorship payments and promotions totalled more than $1.2
million.
In the second full season (May-July 1988), 36 regular
season games, two playoff games, and a championship game
were organized, promoted, and played under the designations
sought to be registered. The games were played between
teams headquartered in Chicago, Los Angeles, Detroit, New
York, Pittsburgh, and the New England area. Total
attendance was approximately 340,000. Gate receipts for the
second regular season, excluding the playoff and
championship games and the money earned from sales of
licensed merchandise, endorsements, etc. were estimated at
approximately $3 million.
Corporate sponsors for the first two seasons included
Hardee's, Holiday Inn, Texas West, Inc., United Airlines,
Nike, Wilson Sporting Goods, Budget Rent-A-Car, Hiram
Walker, Little Caesar's, and Philip Morris.
A regular season of games (May-August) was played in
each of the years 1989, 1990, 1991, 1992, 1993, and 1994.
Since 1986, the games have been broadcast worldwide over the
Prime Network, Canal Plus, and the ESPN network and have
been watched by more than 70,000,000 viewers.
On August 20, 1993, the ArenaBowl 93 Championship game
was broadcast throughout the world on ESPN and watched by an
estimated one million viewers. The designation ARENA
FOOTBALL was prominently displayed in the center of the
field, and was visible throughout most of the TV broadcast
of the game. In 1994, 21 league games were broadcast by
ESPN and ESPN2, increasing broadcast exposure to more than
60 million homes in the U.S. Live attendance at games in
the 1994 season topped 750,000.
By the end of 1993, teams playing in the Arena Football
League17 and using the three designations sought to be
registered had conducted games in 40 U.S. cities and four
European cities. Over the seven full seasons, including
playoff games, the teams performed live before a total of

17 Arena Football League, Inc. is the exclusive licensee of
applicant.
more than 2,300,000 fans, and generated over $40 million in
ticket, sponsorship, and media revenues.
As of September 1, 1993, over 3,000 stories and
articles about the League had been published nationwide and
locally in magazines, newspapers, and wire services. Each
of the stories reports facts ranging from the outcome of
games to human interest items and the unique game played
under the involved designations.
Mr. Kurz also states that since 1973, he has been
involved with Minor League Football in the U.S. and Europe;
that since 1986, he has represented the Arena Football
League both in the U.S. and Europe by staging football games
under the ARENA FOOTBALL mark; that in that time, he has
traveled extensively throughout the U.S. and Europe,
promoting and staging American football games; that that
work included negotiationw with sponsors, TV, radio, print
media, and advertising agencies; that those persons with
whom he has dealt associate the mark ARENA FOOTBALL with the
American football game played by teams in the Arena Football
League; that in his experience, no other football league has
ever played football games using the mark ARENA FOOTBALL;
and that that mark is associated only with games organized,
staged, and played by the Arena Football League and
applicant.
Finally, Mr. Kurz's declarations contain assertions
that the designations sought to be registered have become
distinctive of applicant's services in commerce, being
recognized by the public as identifying applicant and its
exclusive licensee, the Arena Football League, as the sole
source of origin of said services.
Another piece of evidence submitted by applicant is the
September 14, 1993 declaration of Robert N. Hillman, a self-
employed, free lance journalist, broadcaster, and sports
media consultant, who served from 1990-1992 as Director of
Media Relations for the Arena Football League. The
declaration indicates that since 1970, Mr. Hillman has been
a principal sports anchor for network affiliate television
stations in Tucson, Detroit, Cincinnati, and Chicago. In
that time, he has also worked as a sports program producer
and reporter for the NBC Today show and the USA Today "On
TV" show. He presently has a video production company that
produces sports news features, including a weekly feature
for the NFL Chicago Bear football team, and he also has a
radio talk show in Chicago. Mr. Hillman states that he
considers himself to be knowledgeable regarding professional
sports, especially football; that he has been aware of the
professional sport of indoor football since 1987; that in
his personal knowledge, indoor football contests using a
short field and special rules and equipment, as used by the
Arena Football League, have been organized and exhibited
only by the Arena Football League (or its predecessor in
interest); that these games have been played since at least
1987; that in all of these contests, the designation ARENA
FOOTBALL has been used to identify this unique style of
football; that no other organization, to his knowledge, uses
or ever has used ARENA FOOTBALL to identify any type of
football game; that when he sees or hears the term ARENA
FOOTBALL, he immediately thinks of the indoor football games
played by the Arena Football League; that he believes that a
substantial percentage of sports fans, especially football
fans, have a similar opinion; that the term ARENA FOOTBALL
identifies professional indoor football games played by
teams of the Arena Football League in just the same way that
the term NFL FOOTBALL identifies professional football games
conducted by the National Football League; and that in his
mind ARENA FOOTBALL is associated exclusively with the Arena
Football League and applicant.
Also submitted in each application is a copy of the
patent issued to applicant's predecessor, James Foster, and
later assigned to applicant. The patent, No. 4,911,443,
issued March 27, 1990, is entitled "FOOTBALL GAME SYSTEM AND
METHODS OF PLAY."18

18 The first paragraph under the heading "BACKGROUND OF THE
INVENTION" reads:
The invention relates to an apparatus and method
for playing a game and more particularly to a new
game incorporating many aspects of traditional
American football.
The text under the heading "SUMMARY OF THE INVENTION" reads in
part as follows:
It is the primary object of the invention to provide
a variation of traditional American football that
demands virtually all of the athletic skills of
traditional football, but which is faster paced and
which may be played inside existing sports facilities.
* * *
In accordance with the present invention, a new game
involving the advancement of a ball across a playing
field and over an opponent's goal line has
Other pieces of evidence submitted by applicant include
the "1991 MEDIA GUIDE" mentioned above, in connection with
applicant's uses cited by the Examining Attorney; the
promotional sheet mentioned above; several different issues
of its ARENABALL game magazine, mentioned above; a copy of a
promotional video tape showing portions of games and
featuring the designation ARENA FOOTBALL and design, as
sought to be registered in application Serial No.
74/249,309; a copy of an unsolicited letter, dated May 24,
1993, from Sportcal Limited, a sports listing company in
London, England, asking for a schedule of "Arena Football
events" to include in its computerised calendar of
international sports events; and dictionary definitions of
the words "arena" and "football" (offered to show that ARENA
FOOTBALL does not appear therein as the generic name of a
game or type of sport) as well as a thesaurus entry for
"arena."
Finally, applicant has submitted, in application Serial
Nos. 74/249,309 and 74/249,318, copies of 10 articles. Two
of the articles concern the JOCKEY trademark and are
humorous in nature. These articles were offered by
applicant to show the difficulty and frustration faced by

substantially the same rules as American football
(e.g., NFL or NCAA) except that kicks or passes into
the end zone may be deflected back onto the playing
field as a "live" ball by a rebounding assembly that
is proximate to the goal line, but elevated above
the playing field. ...
the press when dealing with trademarks.19 The other eight
articles were offered in support of applicant's argument, as
specified on page 12 of applicant's request for
reconsideration filed May 9, 1995, that "if a person were to
refer generically to a type of football game played indoor,
it would seem only logical, even common-sensical, that it
would be referred to as 'indoor football.'"20

19 One of the articles was written by Mike Royko and appeared
in the February 17, 1995 issue of the Chicago Tribune. The
second article was written by Dave Barry and appeared in the
March 12, 1995 issue of the same newspaper.
20 Applicant has highlighted certain portions of these
articles. A story which appeared in the April 24, 1995 issue of
The Hartford Courant concerns Merv Mosley, described in the
article as "a first-team All-Arena Football League pick." The
article also includes the following text highlighted by
applicant:
In Arena Football, most players must play offense
and defense. The game is played indoors on a field
about the half size of a regular football field,
with seven players to a side.
* * *
... "We have to teach them what the huddle looks
like and what the positions are and what positions
aren't because of the differences between the outdoor
game. There is a lot of individual work.
An article appearing in the April 29, 1995 issue of The
Commercial Appeal (Memphis) concerns "the Arena Football
League's expansion Pharaohs" and "the Canadian Football League's
expansion Mad Dogs." The article also includes the following
text highlighted by applicant:
The Mad Dogs can boast they are playing real
football, outdoors and on grass.
* * *
Arenaball is played on a small field where
contact is king....
* * *
There may be, curiously, some small common ground
on which they could play. Because the Liberty
Bowl playing area isn't large enough for a CFL
field, but one will be squeezed in anyway, the
Memphis outdoor game may owe something to the
wall-crashing indoor version. Think about it:
We may be the first city to play Arena football
outdoors.
* * *
A term is generic if it names the class or genus of the
goods or services to which it is applied. See H. Marvin
Ginn Corp. v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986), and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985). The test for determining whether a
term is generic is its primary significance to the relevant
public, that is, whether the term is used or understood, by
purchasers or potential purchasers of the goods or services
at issue, primarily to refer to the class or genus of such

But what does it say about Arenaball that it is
sold more as show biz than sport?
The remaining articles, and the portions thereof highlighted
by applicant, are set forth below:
Bonner played at Northridge from 1987-90. He
played last season with the Arizona Rattlers of
the indoor Arena Football League. Los Angeles
Times 3/11/95
Lary Kuharich, a long-time coach in American
college football as well as in the Canadian
Football League and the Arena League an indoor
league, is coach of the Scottish Claymores.
AP Worldstream 1/27/95
Another Falcons defensive assistant, Tim Marcum,
will leave the team to become head coach of the
Arena Football franchise in Tampa. The most
successful coach in the indoor game, Marcum has
won four Arena championships. The Atlanta Journal
and Constitution 1/5/95
Can the Arena League (indoor football) share the
building with baseball? St. Petersburg Times
3/10/95
The NHL has set no expansion timetable, but Bryan
Colangelo, director of Phoenix Arena Sports, a
Suns' subsidiary which operates indoor football
and soccer teams, said PAS and the Suns hoped to
have a [NHL] team within three years. AP Online
2/10/95
The first team to hit town will be the Memphis
Pharaohs, who begin play next spring at The
Pyramid in the indoor Arena Football League.
The Commercial Appeal (Memphis) 12/25/94
goods or services. See Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra; and
In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB
1994). Evidence of the relevant public's understanding of a
term may be obtained from any competent source, including
consumer surveys, newspapers, magazines, dictionaries,
catalogs, and other publications. See In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., supra, and In re Northland
Aluminum Products, Inc., supra. The Patent and Trademark
Office has the burden of establishing that a term is generic
by adducing "clear evidence" that the primary significance
of the mark to the relevant public is that of a generic term
for the specified goods or services. See In re K-T Zoe
Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir.
1994), and In re Merrill Lynch, Pierce, Fenner, and Smith
Inc., supra. Any doubt on the issue must be resolved in
favor of the applicant. See In re Waverly Inc., 27 USPQ2d
1620 (TTAB 1993).
In the present cases, based on the evidence of record,
we are convinced that the primary significance of the term
ARENA FOOTBALL to the purchasers and potential purchasers of
applicant's services is that of a generic name for a
particular type of sport, that is, for indoor football
played according to the rules developed by applicant's
predecessor, James Foster. We note, in this regard, that
the DATATIMES and NEXIS article excerpts which demonstrate
what we regard as clearly generic uses (examples of which
are listed above at great length) outnumber all of those
which show use of ARENA FOOTBALL with the first or both
initial letters capitalized (even when the excerpts with
these two types of uses are counted together, including
those in which only the initial letter in ARENA is
capitalized, and ARENA is the first word in the sentence) by
a substantial margin; and that while the uses with one or
both initial letters capitalized predominated in the
DATATIMES and NEXIS excerpts for the years 1987 and 1988
(applicant's first two full seasons of games), the clearly
generic uses predominated by a large margin (i.e., by a
ratio of approximately 3:1) by the years 1994 and 1995. The
1992 encyclopedia entry made of record by the Examining
Attorney confirms and bolsters the DATATIMES and NEXIS
article excerpt evidence.21 In short, the record presents a
picture of a term which, at the time of its first use, may
have had some degree of recognition as a trademark22
(notwithstanding its highly descriptive nature) for

21 Prior to the Examining Attorney's submission of the
encyclopedia entry, applicant made much of the fact that the
Examining Attorney's evidentiary record consisted only of the
DATATIMES and NEXIS article excerpts, which applicant regarded
as circumstantial evidence, at best. Applicant argued that if
ARENA FOOTBALL and ARENA were indeed generic, there would be
direct evidence, such as dictionary and encyclopedia references,
of that fact.
22 We note in this regard that just as it is true that the
authors of articles sometimes misuse trademarks, it is also true
that they sometimes capitalize terms that are not trademarks.
applicant's services, but which over the years has come to
be used and perceived primarily as a generic designation,
that is, has fallen into the lexicon of the language
generally employed to designate a particular type of
football.23 Of course, this is the very type of football
game which applicant organizes, schedules, and conducts.
Under the circumstances, the designation ARENA FOOTBALL
names the genus of applicant's services.
In arriving at this conclusion, we have carefully
considered applicant's evidence and arguments (some of which
are discussed below), but do not find them persuasive of a
different result.
In support of its position that ARENA FOOTBALL is not
generic and has become distinctive of its services in
commerce, applicant has submitted, inter alia, two
affidavits, one from a present officer and one from a former
employee, concerning the length and extent of its use of
this designation. These are certainly two factors to be
considered, and applicant's evidence thereon is impressive.
However, the nature of the designation and of applicant's
use thereof, and the resulting public perception of the
designation, are even more critical. Here, applicant

23 It may well be that one reason why this happened is that
applicant itself used the term ARENA FOOTBALL as a noun, without
any accompanying generic designation. Indeed, many of the
article excerpt uses where the first or both initial letters in
the words ARENA FOOTBALL are capitalized are of this same
nature. Further, the record is devoid of evidence that
applicant has taken any action to police the term ARENA FOOTBALL
with respect to generic uses.
selected a descriptive designation, and, as shown by the
other materials submitted by applicant, made frequest use of
the designation as a noun, with no accompanying generic
term. In the case of Remington Products Inc. v. North
American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444 (Fed.
Cir. 1990), the Court, citing In re Thunderbird Products
Corp., 406 F.2d 1389, 160 USPQ 730 (CCPA 1969) (wherein
CATHEDRAL HULL was refused registration for boats because
the term had entered into general usage to designate a type
of boat hull), the Court stated, at 1449:
It is very easy for marks consisting of common,
simple English words having connotations related
to the products on which they are used, their
properties, or uses to slip out of their origin-
indicating role and into the vernacular as
descriptive terms and once that happens the
possibility of registration as trademarks under
the Lanham Act vanishes.
The DATATIMES and NEXIS article excerpts and encyclopedia
entry made of record by the Examining Attorney indicate that
that is exactly what has happened in this case.
Applicant relies on the case of In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., supra, which involved a
refusal to register similar to that asserted herein, with
voluminous evidence of usage in publications of the term
sought to be registered. The Board affirmed the Examining
Attorney's refusal to register, but the Court reversed. It
appears, however, that the evidence in that case was more
evenly split between generic significance and trademark
significance than is the evidence in this case. Moreover,
and most significantly, there is no indication that the
evidentiary record in that case showed the same type of
pattern as that demonstrated in this case, that is, a
pattern of growth of generic significance over a period of
years until it predominated by a large margin. Cf. In re
Northland Aluminum Products, Inc., supra.
Similarly unpersuasive is applicant's argument that
ARENA FOOTBALL identifies professional indoor football games
played by teams of the Arena Football League in just the
same way that the term NFL FOOTBALL identifies professional
football games conducted by the National Football League.
ARENA FOOTBALL inherently is a descriptive designation as
used in connection with applicant's services, whereas NFL
FOOTBALL is not in this category and creates a different
type of commercial impression.
Applicant also argues that "indoor football" is the
logical generic for football games played indoors. However,
it is well established that a product or service may have
more than one generic designation, and that each belongs in
the public domain, and must remain free of proprietary
claims. Although applicant's game rules and system are
presently covered by its patent, and its use has therefore
been essentially exclusive to date, when the patent
expires,24 other entities will be free to organize, schedule

24 Applicant's own materials emphasize the importance of the
patent, and the exclusivity that it confers, to the value of its
teams and the stability of its league.
and conduct football games similar in nature to applicant's.
The evidence of record suggests that when they do, it is the
designation ARENA FOOTBALL which will best serve to describe
the genus of their services.25 As stated by the Court of
Appeals for the Second Circuit in CES Publishing Corp. v.
St. Regis Publications, Inc., 531 F.2d 11, 188 USPQ 612, 615
(1975):
To allow trademark protection for generic
terms, i.e., names which describe the genus of
goods being sold, even when these have become
identified with a first user, would grant the
owner of the mark a monopoly, since a
competitor could not describe his goods as
what they are.
Applicant argues that in most of the article excerpts
made of record by the Examining Attorney, the author was
discussing the activities of applicant or its licensees,
either directly or indirectly. While this may well be so
(and is not surprising, in view of applicant's patent), it
does not follow therefrom that any use of ARENA FOOTBALL in
those excerpts is necessarily a service mark use.
In summary, we are convinced, having considered all of
the evidence of record, that the designation ARENA FOOTBALL

25 Applicant itself notes, in its request for reconsideration
of May 9, 1995, that the National Football League and the
Canadian Football League play some of their football games in
indoor facilities or stadiums. However, the type of "indoor
football" which these leagues offer differs from that offered by
applicant. If, in the future, competitors wish to offer
football games of the type offered by applicant under its
patent, it seems to us that they will need to use the term ARENA
FOOTBALL to generically describe their indoor football services,
as distinguished from the indoor football services offered by
the National Football League and the Canadian Football League.
is generic for applicant's services, and therefore is not
registrable. Cf. Loglan Institute Inc. v. Logical Language
Group Inc., 962 F.2d 1038, 22 USPQ2d 1531 (Fed. Cir. 1992);
In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984); and In re
Sports Tigers, 213 USPQ 670 (TTAB 1982). We add, in case we
are ultimately reversed on this issue, that the strong
evidence of generic significance leads us to conclude that
applicant has failed to prove prima facie that the
designation ARENA FOOTBALL has become distinctive of its
services.26
As to the designation ARENA, this designation is used
by applicant not alone, but rather in combination with the
term FOOTBALL, that is, as part of the generic designation
ARENA FOOTBALL. Under the circumstances, we agree with the
Examining Attorney that the primary significance which ARENA
projects is that of a generic adjective, and that it is
therefore unregistrable. Cf. In re Northland Aluminum
Products, Inc., supra; Miller Brewing Co. v. G. Heileman
Brewing Co., 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977),
cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978); In re Sun
Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970); and J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 12:10 (4th ed. 1996). And again we add, in
case we are ultimately reversed on this issue, that the

26 We note, in this regard, that applicant has submitted
declarations from a current and former employee, but no survey
or declarations from purchasers or potential purchasers
regarding their perception of the designations sought to be
registered.
strong evidence of generic significance leads us to conclude
that applicant has failed to prove prima facie that the
designation ARENA has become distinctive of its services.
We note, as a final comment, that it may well be that
ARENA FOOTBALL LEAGUE is a source identifier for applicant's
services, but that issue is not before us.
Decision: The refusal to register in application
Serial Nos. 74/249,318 and 74/249,469 is affirmed. The
requirement in application Serial No. 74/249,309 for a
disclaimer of ARENA FOOTBALL is also affirmed. Should
applicant submit the required disclaimer in application
Serial No. 74/249,309 within thirty days from the mailing
date of this decision, the decision with respect to that
application will be set aside, and the application will be
published for opposition.
J. E. Rice
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board