Nintendo of America Inc.

Trademark Trial and Appeal Board

Nov 3, 2011

No. 77245239 (T.T.A.B. Nov. 3, 2011)

Mailed: November 3, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Nintendo of America Inc.
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Serial No. 77245239
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Jerald E. Nagle for Nintendo of America Inc.

Robert J. Lavache, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
____________

Before Quinn, Bucher and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:

Nintendo of America Inc. has filed an application to
register the mark PICROSS DS in standard character form on
the Principal Register for “cartridges featuring
entertainment content, namely, games and puzzles; computer
game cartridges; computer game programs; computer game
software; electronic game cartridges; electronic game
programs; electronic game software; interactive game
cartridges; interactive game programs; interactive game
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
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software; video game cartridges; video game programs; video
game software,” in International Class 9.1
The examining attorney required applicant to disclaim
the wording PICROSS on the ground that it is merely
descriptive of applicant's goods within the meaning of
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
Applicant argued against the requirement for the disclaimer
and, in the alternative, filed an amendment seeking
registration under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), in part as to PICROSS, based on supporting
evidence of acquired distinctiveness. Upon reviewing the
evidence, the examining attorney found that applicant had
not shown that PICROSS had acquired distinctiveness under
Section 2(f). Consequently, pursuant to Section 6(a) of the
Trademark Act, 15 U.S.C. §1056(a), the examining attorney
issued a final refusal for both the requirement for a
disclaimer and the refusal of registration in the absence of
such disclaimer, stating that the evidence was insufficient
to establish acquired distinctiveness. Applicant has
appealed and both applicant and the examining attorney have
filed briefs. After careful consideration of all the
arguments and evidence of record, we find that PICROSS is
merely descriptive of applicant’s goods but that it has

1 Serial No. 77245239, filed August 2, 2007, based on use of the mark in
commerce, alleging a date of first use anywhere and a date of first use
in commerce at least as early as July 30, 2007.
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acquired distinctiveness under Section 2(f) of the Trademark
Act. Accordingly, we reverse the requirement for a
disclaimer of PICROSS and the refusal to register.
As an initial matter, in applying for a registration
under the provision of Section 2(f) in the alternative,
applicant does not admit that the term PICROSS is merely
descriptive of the goods for which it seeks registration.
Unlike the situation in which an applicant initially seeks
registration under §2(f) or amends its application without
objection, an alternative claim does not constitute a
concession that the matter sought to be registered is not
inherently distinctive. See In re E S Robbins Corp., 30
USPQ2d 1540 (TTAB 1992); In re Professional Learning
Centers, Inc., 230 USPQ 70, 71 n.2 (TTAB 1986).
Therefore, we must first determine whether the mark
that applicant seeks to register in relation to its goods is
merely descriptive. In this regard, we note that a term is
deemed to be merely descriptive of goods or services, within
the meaning of Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.
See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely
descriptive is determined not in the abstract, but in
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relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Moreover, it is settled that “[t]he question is not
whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Applicant’s goods feature a type of puzzle wherein a
player tries to reveal a picture hidden in a grid by
darkening cells or leaving them blank depending on numerical
clues provided beside the grid. According to a Wikipedia
article discussed by both the examining attorney and
applicant these puzzles are more commonly known as
“nonograms.” The puzzles are also known as “Paint by
Numbers,” “Griddlers,” “Pic-a-Pix,” “Pixel Puzzles,”
“Crucipixel,” “Hanjie,” “Japanese Crosswords,” “Japanese
Puzzles,” and a number of other names.2
The examining attorney submitted printouts from over
twenty internet websites showing that the term PICROSS is

2 http://en.wikipedia.org/wiki/nonogram
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used by third parties in connection with the same type of
picture logic puzzles as applicant is offering. These
websites mostly use the term “picross” in connection with
online or downloadable nonogram games available to computer
users, but in one instance, the term is used in the title of
a printed book of puzzles. A sampling of this evidence
includes the following excerpts:
• www.armorgames.com – “Armor Picross … Fun Puzzle game
that originated in Japan … You can see a grid of
squares with numbers surrounding it. The numbers are
clues to the picture you’re gonna make.”
• www.picross-time.net – “Play, create and share picross
… A picross (from Picture Crossword) is a Japanese
puzzle which consist [sic] to discover a picture on a
grid while blackening boxes with the help of allotted
numbers in rows and column.”
• www.millstone.demon.co.uk – “Picross is a mind-bending
puzzle game where you gradually reconstruct a picture
from numeric clues.”
• www.5minutesformom.com – “Picross 4 Kids … Picross for
Kids (sic) is an illustrated logic puzzle book … It
sets out to make a unique kind of picture logic puzzle
accessible and fun to kids as young as 5 or 6.”
• www.mathworks.com – “MATLAB Picross … MATLAB version of
the popular game. Picross is a fun game where you fill
in tiles based on outer numbers for each of the
vertical and horizontal lines of the grid. The end
result is a picture consisting of filled tiles.”
• www.download.com – “Picross Mania 1.02 … Solve over 150
fun and challenging Japanese crossword puzzles in this
picross/nonogram/hanjie game. Picross is a logic
puzzle where the target is to colour the correct blocks
in a grid, based on given number clues. Once the grid
has been coloured correctly, there is usually some sort
of picture or figure visible in the grid as a result
from the solved puzzle.”
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• www.kongregate.com – “Picross Forever … Use logic and
deduction to find hidden pictures in this addictive
puzzle game, Picross Forever.”
• www.apptism.com – “Picross | 1.0.0 | Warner Bros.
Entertainment | Games … Picross is a visual puzzler
that delivers a collection of multi-themed pixel-packs
containing over 60 challenges.”

The examining attorney also provided evidence from Apple
Computer’s iTunes “App Store” showing use of the term
“picross” in connection with several software games offered
for its iPhone, iPad, and iPod touch brand devices:
• “PicGrid – picross puzzle … PicGrid is a logic puzzle,
where a player must reveal a hidden picture by coloring
the correct blocks in a grid.”
• “Pixelogic – Picross Enhanced … Pixelogic is a fun and
challenging puzzle game where you use logic to reveal a
hidden puzzle made of colored cells.”
• “PicrossTouch … Picross is the famous game also known
as Hanjie or nonogram.”
• “PicrossDoubt” from “RuckyGames.”

We find that the examining attorney has made a prima
facie case that PICROSS is merely descriptive for nonogram
puzzles. Potential consumers, upon seeing these uses of
“Picross” or “picross” in connection with nonogram puzzles,
would be likely to view PICROSS as describing the type of
puzzles rather than as a source indicator. Applicant argues
that some of the websites provided by the examining attorney
are either duplicative or no longer active, but none of the
foregoing websites have been shown to be duplicative or
inactive. Admittedly, we cannot discern from the examining
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attorney’s evidence what percent of the nonogram puzzle
market these uses represent or whether these websites are
widely visited. Nevertheless, it seems likely that at least
some potential consumers looking for nonogram puzzles on the
internet may come across these uses of “picross” describing
a type of puzzle.
It is applicant’s burden to rebut the examining
attorney’s prima facie case that the mark is merely
descriptive. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1010 (Fed. Cir. 1987). In order to rebut the examining
attorney’s case, and in the alternative to show that the
mark has acquired distinctiveness, applicant submitted
extensive evidence purporting to show that PICROSS is not
merely descriptive and would be recognized by consumers as
identifying its goods. Applicant has submitted the
following items:
• The Wikipedia article describing the history of
nonograms and how to play them, as well as some of the
other names by which they are known.
• Samples of applicant’s use of PICROSS on game
cartridges, product packaging, and instruction manuals.
• Six third-party websites showing use of the term
nonogram as a common name of the logic puzzle games.
• Computer game industry magazine articles and excerpts
from websites reviewing applicant’s two games and
ranking their relative popularity among a number of
video games.
• Declarations from applicant’s Senior Manager of
Intellectual Property, Devon Pritchard, attesting to
the history of applicant’s creation of the term PICROSS
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and providing sales figures for applicant’s two
nonogram puzzle games, MARIO’S PICROSS and PICROSS DS.
• Printouts from the “Waybackmachine” or internet archive
showing when some of the third-party websites cited by
the examining attorney first appeared on the internet.
• Recent printouts from some of the third-party websites
relied upon by the examining attorney showing they no
longer use the term PICROSS, are no longer active, or
are duplicative.
• Twenty-one form statements from employees of GAMESTOP,
a retail electronic game store, asserting that they
associate the term PICROSS only with applicant and its
goods and not with “any web site, web page, video game,
computer game or online game other than as used by
[applicant].”
• A listing of eighteen foreign trademark registrations
for PICROSS or slight variations thereof.

Applicant contends PICROSS is fanciful and inherently
distinctive because it coined the term PICROSS when it
released its first nonogram puzzle program called MARIO’S
PICROSS in the United States in 1995. Pritchard Dec. at
Para. 3. Based on this record, we see no reason to doubt
applicant’s claim that it coined the term PICROSS.
Nevertheless, even if applicant coined the term in 1995 it
does not mean that the term cannot be merely descriptive
now. It is well-settled that registrability must be
determined at the time registration is sought and a term
that was once suggestive may later become merely descriptive
or even generic. See In re Thunderbird Prods. Corp., 406
F.2d 1389, 160 USPQ 730, 732 (CCPA 1969). Thus, the issue
before us is whether the consuming public now regards
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PICROSS as a term identifying the goods of applicant or as
merely describing a type of logic puzzle game.
The examining attorney’s evidence of third-party use of
“picross” shows that consumers would be likely to view
PICROSS as describing a type of puzzle rather than as a
source indicator. Applicant attempts to counter the
evidence by noting that these third-party uses are
infringing and that it has made efforts to enforce its mark.
Applicant claims it should not be denied registration of the
mark “simply because it has not controlled each individual
Internet user who has generated an unauthorized online
version of the owner's game.” Br. at 12. It is certainly
true that a trademark owner “is not required to act
immediately against every possibly infringing use.” See
Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp.,
680 F.2d 755, 214 USPQ 327, 336 (CCPA 1982). But
descriptive use of a mark by third-parties will diminish the
trademark significance of a term. Further, applicant
overstates the impact of its efforts to police the mark and
understates the descriptive significance of these third-
party uses. For example, applicant’s argument that none of
the websites cited by the examining attorney are “household
names” (Reply Br. at 1.) ignores that fact that four of the
third-party uses of “picross” appeared on the well-known
iTunes “app store” website.
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In view of the foregoing, we find that PICROSS is
merely descriptive when used in connection with applicant’s
goods.
We turn now to applicant’s alternative Section 2(f)
claim of acquired distinctiveness. It is applicant’s burden
to prove acquired distinctiveness. Yamaha International
Corporation v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Hollywood Brands,
Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here
is no doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant.”).
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha, 6 USPQ2d at 1008.
Beginning with the Pritchard declarations, applicant
claims that it sold approximately 51,000 units of its
“MARIO’S PICROSS” puzzle game beginning in 1995 and sold
over 121,000 units of its successor “PICROSS DS” game
between 2007 and 2010. We agree with the examining attorney
that applicant has provided no context in which to judge
these sales numbers as compared to sales numbers of other
electronic games. However, we note that applicant also has
provided evidence of media coverage of the popularity of
these games which provides some measure of context. For
example, in a publication called Game Informer magazine
“MARIO’S PICROSS was ranked in two separate compilations of
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all-time favorite video games in the top 100 and top 200
video games respectively. Similarly, applicant has provided
evidence that the PICROSS DS game program received high
ratings from industry reviewers, including being named one
of the best games of 2007 by a group called IGN
Entertainment.
Regarding the twenty-one form declarations from
employees of the retail video game store GAMESTOP, we find
that these have some probative value to show that there is a
degree of association between PICROSS and applicant’s goods,
at least to some GAMESTOP employees. Generally speaking,
the Board will not ignore such declarations simply because
they are form statements. See In re Petersen Manufacturing
Co., 229 USPQ 466 (TTAB 1986). On the other hand, in light
of the examining attorney’s evidence of third-party use of
PICROSS on internet websites, the declarants’ claim that
they do not associate PICROSS with “any web site, web page,
video game, computer game or online game other than as used
by [applicant]” is not particularly probative.
Applicant further demonstrates that its use of PICROSS
has received extensive unsolicited media coverage and
applicant has provided examples of third-party coverage of
its games:
• www.mobygames.com – Describing MARIO’S PICROSS as
“[s]imilar to the puzzle game Minesweeper” and
providing reviews from five other game review sources.
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• www.answers.com – Describing MARIO’S PICROSS as “[o]ne
of the more obscure games starring the affable Italian
plumber” and as “addictive challenging and very
enjoyable.”
• http://ds.gamespy.com – “Want to do some real brain
training? Nintendo’s new puzzle game give your noggin
(and your stylus) a workout.”
• http://ds.ign.com – “Picross DS is easily one of the
most addictive and engaging pick-up-and-play puzzles
games released on the Nintendo DS.”
• http://games.toptenreviews.com – ranking PICROSS DS as
the fourth most popular game and puzzle for the
Nintendo DS system.
• www.gamestop.com – “Picross DS is a high-quality
collection of logic puzzles at a terrific price.”
• www.1up.com – “Nintendo’s long-running Japanese paint
by numbers puzzles series makes the jump to the DS.”
• www.metacritic.com – Providing a compilation of twenty-
six reviews of PICROSS DS by third-party game
reviewers.

Applicant has shown that the term PICROSS has been
widely-associated with its two game programs. The games
also have been shown to be both relatively popular and
frequently reviewed by video game media sources. Balancing
all of the evidence of record, we find that applicant has
met its burden of showing that PICROSS has acquired
distinctiveness.
Decision: The requirement for a disclaimer of PICROSS
under Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a),
and the refusal of registration in the absence of a
disclaimer, is reversed. The application will be published
for opposition with a notation of applicant’s claim of
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acquired distinctiveness in part as to PICROSS under the
provisions of Section 2(f) of the Trademark Act.