Publications International, Ltd.

Trademark Trial and Appeal Board

Jul 6, 2009

No. 77103024 (T.T.A.B. Jul. 6, 2009)

Mailed:
July 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Publications International, Ltd.
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Serial No. 77103024
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Dorothy M. Weber of Shukat Arrow Hafer Weber & Herbsman,
LLP for Publications International, Ltd.

Michael J. Souders, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Drost, Taylor and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Publications International, Ltd. (applicant) applied
to register BRAIN GAMES, in standard character form, on the
Principal Register as a mark for “printed publications,
namely, books and magazines containing games, puzzles and
other cognitive exercises” in International Class 16.1 The
application is based on Section 1(a) (use in commerce) and

1 Application Serial No. 77103024 was filed on February 8,
2007.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 77103024
2
identifies January 9, 2007 as the date the mark was first
used in commerce.
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), stating that the proposed mark “merely
describes the subject matter of applicant’s publication[s]”
and that “mental and cognitive games are known as ‘brain
games’.” Office action issued May 29, 2007.
In response, applicant pointed to a third-party
application (now registered) for the mark MIND GAMES that,
applicant contends, is “no less descriptive” than
applicant’s mark.2 Applicant requested that “the same
standard” that was applied to that application be applied
to its mark. In the alternative, applicant argued that its
mark was entitled to registration under Section 2(f)
because it has acquired distinctiveness.
The examining attorney ultimately maintained the
descriptiveness refusal and rejected applicant’s claim that
the mark has acquired distinctiveness.3 Applicant

2 Registration No. 3370566 issued on January 15, 2008.
3 In the Office action (dated June 30, 2008) making the refusal
final, the examining attorney stated under the subheading “Mark
is Merely Descriptive” that the proposed mark “is generic and
incapable of serving as a source identifier for the goods” and
later repeated that the mark “is generic for the goods because….”
The issue of genericness was not previously raised; moreover,
neither applicant nor the examining attorney addressed
genericness as an issue on appeal. Accordingly, this appeal is
Serial No. 77103024
3
concurrently filed a request for reconsideration and an
appeal. The examining attorney denied the request for
reconsideration. Both applicant and the examining attorney
filed briefs.
Before discussing the substantive issues on appeal, we
first address an evidentiary issue. Specifically, the
examining attorney has objected to applicant’s submission
of evidence with its appeal brief. As described by
applicant, the additional evidence consists of “two pages
from applicant’s current 2008-2009 sales catalog which
shows the goods bearing the mark, of which catalog
approximately 2,500 copies have been or will soon be
distributed at trade shows, to retailers, distributors and
customers.” Brief, (unnumbered) p. 4.
Because applicant’s submission of these additional
materials with its brief are manifestly untimely, they are
not properly of record and are given no consideration. 37
CFR § 2.142(d); see also, TBMP § 1207 (2d ed. rev. 2004).4

limited solely to the descriptiveness refusal and whether the
mark has acquired distinctiveness.
4 Although we have not considered this evidence in our decision,
we do not hesitate to point out that, by applicant’s own account,
the catalog had not yet necessarily been distributed (“copies
have been or soon will be distributed”). Thus, even if we were
to consider these materials, we cannot conclude that they have
reached consumers and have had any effect on whether the mark has
acquired distinctiveness.
Serial No. 77103024
4
We now turn to the merits of the refusal to register
applicant’s proposed mark. We consider first the
descriptiveness refusal.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) (A “mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
or characteristic of the product or service”); In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). To be merely descriptive, a term need only
describe a single significant quality or property of the
goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987); Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
The examining attorney submitted evidence with his
Office actions and in response to the request for
reconsideration showing descriptive use by third parties of
the term “brain games” in connection with a variety of
cognitive and mental exercise games. For example, at one
Serial No. 77103024
5
website (www.washington.edu), under the subheading “Brain
Games”, there are several games identified, such as
crossword puzzles, word search games, “brain bingo”, etc.5
It is evident from this website that the games are to test
or improve one’s cognitive skills. At another website
(www.resources.kaboose.ccrr), under the heading “Brain
Games”, it says “Who said learning can’t be fun? Enjoy
these games about cool stuff like dinosaurs, space and
more!”6 Another retail website (www.amazon.com) advertises
software and books and employs the term “brain games” to
describe the content of the goods, namely, mental exercises
presented in a game or entertaining manner.7 At the website
www.prevention.com, again under the heading “Brain Games”
visitors are asked to “[s]harpen your memory and your mind
with these games scientifically developed to give your
brain a workout” and listing a string of names for games to
be played.8
The examining attorney also submitted internet
evidence of third parties who offer services or resources
to help improve one’s learning and memory skills through
the use of “brain games.” For example, at one website

5 Submitted with Office action dated May 29, 2007.
6 Id.
7 Id.
8 Submitted with examining attorney’s response (dated January 8,
2009) to applicant’s request for reconsideration.
Serial No. 77103024
6
(www.lumosity.com), “brain games” is not only used as
heading, but a “brain training program” is touted as
“consisting of engaging in brain games and exercises
developed by some of the leading neuroscientists in the
country.”9 The evidence also shows that the term “brain
games” may be used in different fields and for different
purposes. At the National Institute for Drug Abuse (NIDA)
website “NIDA for Teens” (www.teans.drugabuse.gov), a
separate page titled “Brain Games” allows visitors to
“Exercise your brain and test your knowledge of drugs and
the way they affect the brain and body.”10
The examining attorney argues that, based upon the
evidence, the term “brain games” is used to describe “a
genre of games designed to improve one’s cognitive
abilities and exercise the mind.” Brief, (unnumbered) p.
3. He points out that the “brain games” referenced in the
evidence “are of the same type of games identified in
applicant’s identification of goods” inasmuch as they
involve cognitive exercises. Id. at 4. He concludes that
“[c]onsumers viewing the applied-for mark on the books and
magazines of the applicant will immediately and without

9 Submitted with Office action dated June 30, 2008.
10 Submitted with examining attorney’s response (dated January 8,
2009) to applicant’s request for reconsideration.
Serial No. 77103024
7
hesitation understand that the games contained therein are
‘BRAIN GAMES’.” Id. at 3.
Upon review of the evidence and for the reasons aptly
identified by the examining attorney, we find that the term
“brain games” is merely descriptive of applicants’
identified goods. We agree that the evidence shows that
“brain games” is a common term used to describe a certain
type of game, i.e., one that exercises the mind and seeks
to improve cognitive skills. Here, very little exercising
of the brain is needed for consumers to understand the
highly descriptive nature of “brain games” when it is used
on “printed publications, namely, books and magazines
containing games, puzzles and other cognitive exercises.”
Indeed, applicant does not contest any of the evidence
presented by the examining attorney or contradict the
examining attorney’s analysis thereof. Rather, applicant’s
relies merely on the Office’s treatment of one third-party
application for the (now registered) mark MIND GAMES.
However, as the examining attorney pointed out to applicant
on several occasions and is oft-stated, each application is
decided on its own facts and the evidence of record. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001). See also, In re Kent-Gamebore Corp., 59
USPQ2d 1373 (TTAB 2001). And, as the examining attorney
Serial No. 77103024
8
suggested in his brief, one possible consideration
involving the mark MIND GAMES is the alternative meaning(s)
of that term. Here, no such double-entendre for the term
BRAIN GAMES has been argued.
Having found that applicant's mark is merely
descriptive, we now address applicant’s alternative claim
that it has acquired distinctiveness. Applicant has the
burden to establish a prima facie case of acquired
distinctiveness. See Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir.
1988). The greater the degree of descriptiveness, the
greater the evidentiary burden on the user to establish
acquired distinctiveness. See Yamaha Int'l Corp., supra.
The sufficiency of the evidence offered to prove secondary
meaning should be evaluated in light of the nature of the
designation. Highly descriptive terms, for example, are
less likely to be perceived as trademarks and more likely
to be useful to competitors than are less descriptive
terms. More substantial evidence of secondary meaning thus
will ordinarily be required to establish their
distinctiveness.
In support of the claim that its mark has acquired
distinctiveness, applicant submitted photographs showing
applicant’s display of goods bearing the mark at its booth
Serial No. 77103024
9
at the Frankfurt Book Fair; a page from applicant’s 2007-
2008 sales catalog which (according to applicant’s counsel)
“2,000 copies have been distributed at trade shows, to
retailers, distributors and customers; and a copy of a
letter received by applicant “illustrating the association
of the public of the mark to applicant.” Brief,
(unnumbered) p. 3. Further, applicant's attorney made
several representations in applicant’s responses to the
Office actions, the request for reconsideration and
applicant’s brief, including: that applicant has “sold its
series of books and magazines bearing the mark, ‘BRAIN
GAMES’, currently consisting of as many as thirty-five (35)
different titles, since November 2006”; that these goods
have “been distributed by applicant through Wal-Mart
department stores, Amazon.com, Barnes & Noble, [and
others]”; that applicant has “expended substantial
advertising costs in connection with the Series including
$50,000 at the Frankfurt Book Fair in October 2007”; that
“[t]o date, applicant has sold 1,681,139 copies of the
titles in the series”; and that “[t]hese sales have
resulted in combined revenues for applicant of $5,743,981.”
Applicant's evidence and its attorney's statements
fall far short of establishing that purchasers of
applicant's goods recognize BRAIN GAMES as a distinctive
Serial No. 77103024
10
source indicator for such goods. Because the proposed mark
is so highly descriptive of the identified goods, as shown
by the evidence submitted by the examining attorney,
substantially more evidence than what applicant has
submitted would be needed for us to find that the term has
become distinctive of the goods. First, we note that only
a little more than two years have passed since applicant’s
alleged date of first use in commerce. Furthermore,
applicant’s only direct evidence of acquired
distinctiveness consists of one letter received from a
third party. And, except for the advertising expenditure
for the Frankfurt Book Fair, we have no statements or
evidence showing annual advertising expenditures for goods
bearing applicant’s proposed mark. Finally, even accepting
counsel for applicant’s unsupported representations
regarding the number of copies sold and combined revenues
which, on their face, appear to be substantial, we have no
further information to put these numbers into context,
i.e., whether applicant’s share of the market is
significant. In any event, it has often been held that
gross sales and advertising expenditures may be indicative
of applicant’s success, they are necessarily enough to
prove secondary meaning. This is particularly so when the
mark at hand is highly descriptive. See In re Boston Beer
Serial No. 77103024
11
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
(claim based on annual sales under the mark of
approximately eighty-five million dollars, and annual
advertising expenditures in excess of ten million dollars -
two million of which were spent on promotions and
promotional items which included the phrase THE BEST BEER
IN AMERICA - found insufficient to establish
distinctiveness, in view of the highly descriptive nature
of the proposed mark); In re E.I. Kane, Inc., 221 USPQ
1203, 1206 (TTAB 1984) (refusal to register OFFICE MOVERS,
INC., for moving services, affirmed notwithstanding §2(f)
claim based on, inter alia, evidence of substantial
advertising expenditures. “There is no evidence that any
of the advertising activity was directed to creating
secondary meaning in applicant's highly descriptive trade
name”); In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983)
(evidence held insufficient to establish acquired
distinctiveness for configuration of bag closures made of
plastic, notwithstanding applicant's statement that
advertising of the closures involved several hundred
thousands of dollars, where there was no evidence that the
advertising had any impact on purchasers in perceiving the
configuration as a mark).
In conclusion, we find that prospective purchasers or
Serial No. 77103024
12
users of printed publications, namely, books and magazines
containing games, puzzles and other cognitive exercises
will have no need to pause or cogitate on the possible
meaning of applicant’s applied-for mark BRAIN GAMES, when
considered on said goods. The evidence is clear that the
consuming public will immediately understand the term as
identifying a type of game, namely, one that exercises the
mind and improves the cognitive skills. Moreover,
applicant has not demonstrated that this highly descriptive
term has acquired distinctiveness in connection with the
identified goods.
Decision: The refusal to register on the ground of
mere descriptiveness is affirmed, and we find that
applicant has failed to establish acquired distinctiveness
of BRAIN GAMES as used on the identified goods.